Region: North America

In two decisions in opposition proceedings issued on the same day, the Federal Court of Canada has ruled for the defendant in <i>Toys "R" Us (Canada) Ltd v Manjel Inc</i>, finding that the registration and use of the trademark NUTS 'R' US does not infringe the TOYS "R" US mark.

19 May 2003

In <i>Labatt Brewing Company Limited v Molson Canada</i>, the Federal Court Trial Division has found the term 'Oland Export', for use in association with beer, to be registrable on the basis of acquired distinctiveness. The case, which lasted for more than a decade, is the latest in a series of disputes between these two parties regarding trademarks for beer.

16 May 2003

Two decisions issued under the Canadian Internet Registration AuthorityDomain Name Dispute Resolution Policy may help to clarify its 'bad-faith' test.The panellist in one case held that trademark infringement alone was sufficientevidence of bad-faith registration, while in the other, a clear lack of a legitimateinterest in a domain name was found to constitute bad faith.

12 May 2003

In <i>Astrazeneca AB v Novopharm Ltd</i>, the Federal Court of Appeal has ruled that "a yellow colour applied to the whole of the visible surface of a round tablet" containing a blood pressure medication is not sufficiently distinctive to be registrable as a trademark because there are numerous other round, yellow tablets sold in Canada for the same ailment.

25 April 2003

The Federal Court of Appeal has overruled a decision to maintain the registration of the trademark BOSTON CHICKEN, finding that it lacks distinctiveness. In reaching this conclusion, the court expressly rejected foreign use of a mark as being the basis to acquire distinctiveness in Canada.

11 April 2003

In <i>ConAgra Foods Inc v Fetherstonaugh & Co</i>, the Federal Court has reversed the trademark registrar's decision to cancel for non-use ConAgra's KID CUISINE mark. The court ruled that ConAgra's transfer of marked sample goods to be used for market testing constituted 'use' for the purposes of the Canadian Trademarks Act.

02 April 2003

The Federal Court of Canada has refused a motion for summary judgment regarding Anne of Green Gables Licensing Authority Inc's adoption, use and assignment of certain official marks. The court was reluctant to issue summary judgment without a detailed examination of whether or not the company is a public authority entitled to use official marks.

19 March 2003

In <i>eGalaxy Multimedia Inc v Bailey</i>, for the first time ever, the Ontario Superior Court of Justice has ordered a defendant in a cybersquatting case to pay punitive damages. Barrie Bailey had registered three domain names incorporating the words 'naked news', which eGalaxy sought to register as a trademark.

14 March 2003

In <i>Kelendji v Diplomat Fullhalter Gesellschaft Kurz & Rauchle GmbH</i>, the Federal Court of Appeal has overruled a decision to maintain the registration of the mark DIPLOMAT because the trial judge did not consider all the grounds for cancellation set out in the Trademarks Act. Accordingly, the case has been remanded to the Trial Division for further consideration.

11 March 2003

A panel appointed by the British Columbia International Commercial Arbitration Centre has issued its decision in <i>Cheap Tickets and Travel Inc v Emall.ca Inc</i>, the first contested arbitration involving a '.ca' domain name. The panel declined to transfer 'cheaptickets.ca' to the complainant.

17 February 2003