Canadian Trademark Law 2021: A Year In Review

• Published date: 27 January 2022
• Subject Matter: Intellectual Property, Cannabis & Hemp, Trademark
• Law Firm: Smart & Biggar
• Author: Mr Philip Lapin, Tierney Deluzio and Laura Easton

2021 offered many lessons to Canadian trademark owners including: reminders of the challenges of enforcing inherently weak trademarks and the importance and benefits of registering IP rights at the Canadian border. As well, amid ongoing delays at CIPO, brand owners now have options for expediting examination of Canadian trademark applications.

In this article, we look back at key developments in Canadian Trademark practice during 2021 and highlight a number of notable Canadian trademark cases and decisions.

Notable Canadian Trademark Cases

1.Loblaws Inc v Columbia Insurance Company,2021 FCA 29

In one of the more notable trademark decisions of 2021, the Federal Court of Appeal affirmed the Federal Court's trial decision holding that kitchenware brand Pampered Chef had not infringed Loblaws' PC marks.

Loblaws, Canada's largest retailer, uses the well-known word mark PC and the PC script mark below (collectively, the "PC Marks") for a wide range of goods and services, including grocery, kitchenware, and household products:

In 2015, the defendant, Pampered Chef, adopted a family of marks that included the logos below:

Pampered Chef uses these marks in association with its direct marketing business, making and selling high-quality kitchen tools.

At trial, Loblaws alleged that Pampered Chef's use of its short-form logos infringed Loblaws' registered rights in its PC Marks. As previously reported, the trial judge concluded that confusion was unlikely.

The Court of Appeal agreed with the trial judge that there was no likelihood of confusion, observing that:

• Although the Trademarks Act states that resemblance is to be assessed in "appearance or sound or in the ideas suggested," the word "or" is intended to be inclusive and the trial judge was correct to consider both the appearance and sound of the marks.

• There was no evidence of actual confusion, noting that there is no set period during which competing marks must co-exist before an adverse inference may be drawn from the absence of evidence of actual marketplace confusion. While the parties' marks only co-existed for 2-3 years, it was open to the trial judge to infer that, if the marks were confusing, there would have been some evidence of actual confusion given Pampered Chef's high volume of sales, the intense exposure of the marks on social media, and Loblaws' robust trademark enforcement and monitoring programs.

• There was no error in the trial judge's consideration of the evidence that Pampered Chef's short-form logos were deployed together with its corporate name or long-form logo as a surrounding circumstance.

Pampered Chef was successfully represented before the Federal Court of Appeal by Smart & Biggar LLP. See our full article discussing this decision.

2. Hidden Bench Vineyards & Winery Inc v Locust Lane Estate Winery Corp, 2021 FC 156

In one of the first trademark decisions of 2021, the Federal Court of Canada confirmed that road names can be clearly descriptive of a place of origin.

The case involved two wineries operating on Locust Lane, a road in the Canadian province of Ontario. Both parties used the term LOCUST LANE in association with their wine.

The applicant, Hidden Bench, had been using LOCUST LANE in association with wine or vineyard services for almost two decades. LOCUST LANE was used in combination with other words, such as "Locust Lane Vineyard" and "2013 Locust Lane Pinot Noir".

The respondent, Locust Lane Estate Winery Corp. ("LLEW"), was founded in 2019 and began using its name to market its wines and related services.

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