These Are The Canadian Trademark Decisions From 2018 That You Need To Know

Introduction

2018 saw a number of interesting decisions of the Federal Court, Ontario Superior Court of Justice, and British Columbia Supreme Court, including cases dealing with confusion between trademarks, s. 45 of the Trademarks Act, the meaning of use, official marks, depreciation of goodwill under s. 22 of the Trademarks Act and the constitutional principal of paramountcy. Below is a discussion of these cases based on subject matter.

1. Geographic Location

   The significance of a geographic location as part of a trademark was reviewed in the Federal Court decision in Advance Magazine Publishers, Inc. v. Banff Lake Louise Tourism Bureau, 2018 FC 108.

   In this case the Banff Lake Louise Tourism Bureau (the "Bureau") applied to register the trademark BON APPÉTIT BANFF for use in association with the Bureau's ten-day event during which restaurants serve a series of special fixed-price meals. Advance Magazine Publishers, Inc. ("Advance") opposed the Bureau's application on the basis of confusion with a number of its registered trademarks for BON APPÉTIT in association with, among other things, on-line magazines and publications and a website allowing customers to subscribe to magazines.

   The Registrar in the opposition proceedings found that while the two word marks in issue resembled each other, there was nothing striking or unique in the phrase "bon appétit". In this regard, the Registrar noted that there can be no monopoly in the idea of enjoying a meal.

   The Federal Court took a different view of the matter and conducted the appeal de novo as the new evidence provided by Advance on the appeal was sufficient to materially affect the decision of the Registrar.

   A key finding of the Federal Court was that in analyzing the resemblance of the marks in issue the Bureau adopted the entirety of Advance's trademark and simply added the word "Banff" at the end. In this regard, the Federal Court noted that the first part of a word mark is often the most important aspect for comparison, particularly if it is what is most distinctive about the mark. Further, the Federal Court took the opposite view of the Registrar and found that the words "bon appétit" were striking with respect to the resemblance of both of the marks in issue.

   With respect to the word "Banff", the Federal Court stated that it was generally accepted that geographic locations are generally weak marks and that the word did little to distinguish the Bureau's mark from that of Advance's mark. Further, the Federal Court noted that the font and manner in which the marks were displayed by the parties, including the fact that the word "Banff" was not given the same prominence in the Bureau's mark.

   With respect to the distinctiveness of the marks, the Federal Court reviewed the evidence and found that while the words BON APPÉTIT are ordinary words, commonly used with food or dining, there was no evidence before the Federal Court that the term is commonly used in the market. Further, the Federal Court determined that while print sales of Advance's magazine had declined there was steady and continuous online presence for Advance. For example, there were since 1997 over 60 million unique visits to Advance's website displaying the BON APPÉTIT mark. Accordingly, the Federal Court found that Advance's mark had acquired distinctiveness through its various activities in print and on-line in the Canadian market.

   Accordingly, the Federal Court reversed the decision of the Registrar and found there was a likelihood of confusion between the Bureau's mark and Advance's mark. As a result, the application for registration of the Bureau's mark was refused.

2. Distinctiveness

   Credit cards and the colour black were the subject of a battle between American Express Marketing & Development Corp. ("Amex") and Black Card LLC ("BCL").

   In American Express Marketing & Development Corp. v. Black Card, LLC, 2018 FC 362, the Federal Court heard an appeal of the Registrar's decision to refuse the opposition to registration by Amex. Amex challenged applications by BCL for registration of the trademarks of BLACK Design, MY BLACKCARD and MY BLACKCARD REWARDS based on proposed use in association with credit card services and related benefits.

   At the heart of the dispute was the claim by Amex that despite the fact that it did not have a trademark registration for the word BLACK or colour black, BCL's applied for marks were confusingly similar with Amex's unregistered BLACK CARD trademark and to Amex's Centurion Card, which is black in colour. Further, Amex alleged that BCL's credit cards were black in colour and that both Amex and third parties had issued credit cards in Canada that are black in colour. As well, Amex alleged that the BCL marks were descriptive as "black card" connotes a high end credit card.

   Amex submitted new evidence on the appeal and the Federal Court determined that the standard of review should be whether the Registrar was correct in its decision.

   However, this evidence was insufficient to overturn the decision of the Registrar. The Federal Court held that there was no evidence that Amex had made known in Canada the BLACK CARD trademark prior to the material date of the filing date for the BCL marks as there was no evidence Amex had used this trademark in advertising. The evidence of Internet search results provided by Amex was given no weight as it amounted to inadmissible hearsay. Any reference to "black card" in articles published by third parties did not constitute trademark advertising or use by Amex. Accordingly, the Federal Court found no basis for confusion with BCL's applied for marks. With respect to allegations of non-distinctiveness and descriptiveness of the BCL's applied for marks, the Federal Court again agreed with the Registrar. While there was some evidence of the possibility of an association by the public between black credit cards and premium or prestigious services, Amex failed to provide evidence of the prevalence of black card use in Canada, or whether such evidence was sufficient to negate the distinctiveness of the disputed trademarks as of the material dates. Further, the allegations of descriptiveness failed as the Federal Court noted that to succeed on this ground it was necessary to show under the relevant provisions of the Trademarks Act, that BCL's marks were "clearly" descriptive which implied "self-evident or plain". Again, on the evidence provided by Amex, it was not established that a credit card that is black in colour clearly describes the character or quality of the services provided.

   Accordingly, BCL's marks were allowed to proceed to registration.

3. Confusion

   In Assurant, Inc. v. Assurancia, Inc., 2018 FC 121, the Registrar rejected the opposition by Assurant, Inc. ("Assurant") to the application by Assurancia, Inc. ("Assurancia") of its mark ASSURANCIA in association with insurance broker and financial services. Assurant opposed the application based on its registered trademarks incorporating the mark ASSURANT in association with insurance and financial services.

   The Registrar was not convinced that there was any likelihood of confusion between ASSURANCIA and ASSURANT despite both marks sharing the first part or prefix ASSURAN and both being used in the same channel of trade.

   On the appeal by Assurant, the Federal Court held that the resemblance of the marks in issue, in both the appearance and ideas suggested, was due to the presence of the highly suggestive non-distinctive and evocative common component ASSURAN. The slight differences between the marks in the latter part or suffixes of the marks was held to be enough to distinguish them and reduce the risk of confusion. The Federal Court cited the principle that when a party uses words or terms commonly used in their trade, some degree of confusion is to be expected, but that the average consumer in such a context will tend to distinguish between the non-common features of the respective marks. In this regard, the Federal Court was of the view that the marks in issue clearly suggest insurance by the common element used, so that while they share some resemblance they were ultimately distinguishable to the average consumer.

   Accordingly, the Federal Court refused the appeal and allowed Assurancia to proceed to registration of its trademark ASSURANCIA.

   In Clorox Company of Canada, Ltd. v. Chloretec S.E.C., 2018 FC 408, Chloretec S.E.C. ("Chloretec") sought to register the mark JAVELO for made-to-order bleach which was opposed by Clorox Company of Canada, Ltd. ("Clorox") on the basis that JAVELO was confusing the Clorox's registered...