Key Trademark Decisions In 2021

• Published date: 19 January 2022
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Advertising, Marketing & Branding
• Law Firm: Goldman Sloan Nash & Haber LLP
• Author: Mr John McKeown

2021 has again been a difficult year for trademark owners and their advisors. The pandemic has tested us all in profound and unexpected ways particularly with the arrival of the omicron variant for the holidays. We also continue to face unacceptably long processing delays and waits for hearing dates in the Trademarks Office.

Despite these impediments, there have been several important decisions in the last year. The decisions have considered the standard of review from decisions of the Trademark Opposition Board, the scope of protection for descriptive marks, distinctiveness, the statutory claims for passing off, appeals in 45 proceedings, confusion and expensive goods or services, survey evidence, delay in expungement proceedings, bad faith, evidence of meaning, the effect of expungement and trademark use. If I previously commented on a decision, a link has been added.

An Appeal de Novo

In Brandstorm, Inc. v. Naturally Splendid Enterprises Ltd. 2021 FC 73, Brandstorm failed in its opposition because it provided insufficient evidence of prior use of its mark to establish non-entitlement. Brandstorm appealed to the Federal Court and filed new evidence to show how its mark had been used in Canada. Subsection 56(5) of the Trademarks Act permits the parties to appeal to file new evidence. Where a party does so, and the new evidence is "sufficiently substantial and significant," the Court may exercise any discretion vested in the Registrar and the appeal becomes an appeal de novo to which the correctness standard of review applies. Here the Judge proceeded on a de novo basis to determine whether the Hearing Officer was correct without deference to the Hearing Officer's findings. The Judge accepted the new evidence, the appeal was allowed, and the opponent succeeded with its opposition.

An amendment has been made to subsection 56(5) to require an appellant to seek leave from the court to adduce evidence in addition to that adduced before the Board. However, the amendment has not been brought into force. It also remains to be seen what grounds will justify granting leave. Parties involved in opposition proceedings should carefully monitor this issue. https://www.gsnh.com/an-opponent-needs-to-carefully-consider-the-evidence-to-be-filed-with-the-trademark-opposition-board/

Scope of Protection for Descriptive Marks

In Hidden Bench Vineyards & Winery Inc. v Locust Lane Estate Winery Corp. 2021 FC 156, 181 C.P.R (4th) 171, the parties operated wineries on adjacent properties located on Locust Lane, in Beamsville, Ontario. The applicant claimed rights in the unregistered mark LOCUST LANE and brought an application for statutory passing off.

For marks that are descriptive in nature, it must be shown that the descriptive word has acquired distinctiveness or a secondary meaning to make it distinctive of its owner's goods or services. This is described as a heavy...