Trademark Decisions (Intellectual Property Weekly Abstracts Bulletin: Week of May 4, 2015)

Trademark Decisions

Double-edged sword for adidas' famous 3-stripe mark as Court finds consumers not likely to be confused by competitor's mark

Adidas AG v. Globe International Nominees Pty Ltd., 2015 FC 443

Adidas appealed from a decision of the Registrar rejecting their opposition of the LEFT STRIPE DESIGN and RIGHT STRIPE DESIGN applications from Globe. These designs are generally intended for footwear, bags clothing and sporting goods. The application was restricted to the likelihood of confusion on footwear only.

It was found that adidas established a well-known, if not famous, reputation in its 3-Stripes Design as applied to footwear in Canada. However, this notoriety worked against adidas, as the Court found that "when a trademark becomes so well known or famous that the public is so familiar with it and readily identifies that trademark as used in the marketplace on goods and/or services, it may be that even as a matter of first impression, any differences between the well-known mark and another party's trademark, as used on the same or similar goods and/or services, may serve to more easily distinguish the other party's trademark and reduce any likelihood of confusion".

On this basis, the Court found the Registrar did not err in finding sufficient dissimilarity between the contested marks, and a finding that there was no reasonable likelihood of confusion.

Certification marks including R.H.N. are all expunged

College of Dietitians of Alberta v. 3393291 Canada Inc. (Canadian School of Natural Nutrition), 2015 FC 449

The Applicant College sought to expunge five certification marks and two commercial marks held by the Respondent. The five certification marks include R.H.N. REGISTERED HOLISTIC NUTRITIONIST and variations all including R.H.N. The commercial marks are R.H.N. and R.H.N. AND DESIGN. The Respondent agreed to expunge the two commercial marks.

The Court found three of the certification marks to be clearly descriptive, but not the mark R.H.N. on its own. Without the descriptive text to accompany the mark, it was held that a consumer would not likely know what the letters meant.

All of the certification marks were found to be deceptively misdescriptive, by misleading consumers to believe that the associated services are subject to governmental authority or approval through the inclusion of the word "registered". The marks were not saved by any finding that the marks had acquired distinctiveness. Additional arguments were also...