Cases

Question 1

Jonh Labatt Ltd. v. Carling Breweries Ltd. (1974) FC

Answer 1

It is not a proper approach to the determination of whether a mark is descriptive to carefully and critically analyse the words to ascertain if they have alternate implications when used in association with certain goods but rather to look at the words as they are used in association with certain goods and to ascertain what those words in the context in which they are used would represent to the public at large who will see those words and who will form an opinion as to what those words connote.

Question 2

Miss Universe, Inc. v. Bohna (1994) FCA

Answer 2

To decide whether the use of a mark or of a trade name causes confusion with another mark or another trade name, one must ask whether, as a matter of first impression on the minds of an ordinary person having a vague recollection of that other mark or name, the use of both marks or names in the same area in the same manner is likely to lead to the inference that the services associated with those marks or names are performed by the same person, whether or not the services are of the same general class.

Question 3

Molnlycke Aktiebolag v. Kimberly-Clark of Canada Ltd. (1982) FC

Answer 3

The onus is always upon an applicant for the registration of a mark to establish that , on the balance of probabilities, there is no likelihood of confusion with a previously used and registered trademark.

Question 4

United Artists Pictures Inc. v. Pink Panther

Beauty Corp. (1998) FCA

Answer 4

In determining whether there is a likelihood of
confusion between similar trademarks, the
Registrar or the Court must assess the likely
impression made by the marks on the public.

Question 5

Mihaljevic v. British Columbia (1991) BCCA

Answer 5

A trademark registered to Her Majesty, her
agent or the government is not one whose adoption
is prohibited by Section 9, under which it might be
an identical official mark

Question 6

Home Juice Company, Home Juice
Company Limited and Jay-Zee Food Products
Limited v. Orange Maison Limitée (1970) SCC

Answer 6

Under s. 12(1)(b), the meaning of words
in the French or English language, within a
trademark, is not limited to how the words are
currently used in Canada.

Question 7

Dubiner and National Yo-Yo and Bo-Lo

Ltd. v. Heede Int’l Ltd. (1975) TMOB

Answer 7

An applicant in its trademark application must
clearly set forth goods or services as they are
customarily referred to in the trade.

Question 8

Standard Oil Co. v.. Registrar of Trade

Marks (1968) (Ex Ct)

Answer 8

(1) For trademark purposes, there are at least
three classes of “words”, viz., dictionary words,
names, and invented words. They are all words, at
least for the purposes of the Act.
(2) The response of the general public to a surname needs to be considered.

Question 9

Maple Leaf Foods Inc v. Consorzio del

Prosciutto di Parma (2012) TMOB

Answer 9

The test of confusion set out in Section 6 of the

Trade-marks Act applies to certification marks.

Question 10

Metro Goldwyn Mayer Inc. v. Stargate

Connections Inc., (2004) FC

Answer 10

The date of filing of a statement of opposition

is the material date to assess an allegation on nondistinctiveness.

Question 11

Canadian Jewish Congress v. Chosen

People Ministries, Inc. (2003) FCA

Answer 11

The fact that a body was incorporated as a
non-profit corporation with charitable
objects, has obtained tax exempt status,
has the ability to issue charitable receipts
to donors, and could be asked to provide
its accounts, financial and corporate
information to the Public Guardian and
Trustee of Ontario is not sufficient to
determine whether it is a public authority

Question 12

Veuve Clicquot Ponsardin v. Boutiques

Cliquot Ltée, [2006] SCC

Answer 12

Goodwill is not defined in the Act. In ordinary commercial use, goodwill connotes the positive association that attracts customers towards the goods
or services of a trademark owner, rather than the G/S of its competitors.

The test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry who sees the applicant’s mark at a time when he or she has no more than an imperfect recollection of the opponent’s trade-mark, and does not pause to give the matter any detailed consideration or scrutiny, nor to examine closely the similarities and differences between the marks.

Question 13

Canada Post Corp. v. United States

Postal Service, [2006] FC

Answer 13

S. 9(1)(n)(iii) of the Act requires that, in order to
be entitled to an official mark, the
institution claiming the mark must be a
public authority in Canada.

Question 14

See You In – Canadian Athletes Fund
Corporation v. Canadian Olympic
Committee, 2007 FC 406

Answer 14

While an official mark is not used for
commercial purpose or in the course of
trade, ss. 3 and 4 assist in the
interpretation of those words. A common
feature of both “use” and “adoption” is
that there is an element of public display
[…] If internal discussion, memoranda,
etc. which preceded a request for
publication constituted adoption and use,
the phrase would be meaningless because,
in that instance, no request could be sent
in without the mark being deemed to be
previously adopted and used; the very act
of requesting or the internal
correspondence on whether to request
publication would, theoretically,
constitute “adoption and use”.

Question 15

Stadium Corporation of Ontario Ltd. v.

Wagon-Wheel Concessions Ltd. (1989) FC

Answer 15

Although Parliament could have included
a definition of “public authority” in the
Act, it chose not to. As a result, when an application under s. 9(1) is brought forward the Registrar has to take responsibility for satisfying himself that
the applicant is indeed a public authority.

Question 16

Canada (Registrar of TMs) v. Harris Knitting Mills (1985) FCA

Answer 16

Evidence filed in response to a s. 45 proceeding does not have to be in the form of an affidavit signed by the RO (but must be filed by the RO)

Question 17

The Bruce Trail Association v Andrew Camp (2001) TMOB

Answer 17

The Registrar will not accept for recordal on the register an assignment o fan Official Mark

Question 18

Euro-Excellence Inc. v. Kraft Canada Inc. 2007 SCC

Answer 18

An exclusive licensee cannot assert a claim of secondary infringement of a work reproduced on product packaging, to prevent the importation of grey goods into Canada featuring the same copyrighted
work, if those goods were manufactured by the copyright owner. To be successful, the copyright work should not be “merely incidental” to the product being sold, and there should be a “legitimate economic interest” in the copyright apart from the product itself.

Question 19

Burke-Robertson and Carhartt Canada Ltd. v. RTM (1994)

Answer 19

Cross-examination is not permitted for s. 45 proceedings

Question 20

Argenti Inc v. Exode Importations Inc (1984), 8 C.P.R (3d) 174 (FC);
Windmere Corp v. Charlescraft Corp Ltd (1988), 23 C.P.R (3d) 60 (FC)

Answer 20

The transfer of free samples may constitute “use” for the purpose of s. 45, if it is part of the normal course of trade and to solicit future orders of the same product.

Question 21

Aerosol Fillers Inc v. Plough (Canada) Ltd (1979), 45 C.P.R. (2d) 194 (FC); aff’d (1980), 53 C.P.R. (2d) 62 (FCA)

Answer 21

If an affidavit in a s. 45 proceeding is susceptible of >1 interpretation, the interpretation adverse to the interest of the party in whose favour the affidavit was made should be adopted.

Question 22

Lewis Thomson & Sons Ltd v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (FC)

Answer 22

In a s. 45 proceeding, an affidavit which fails to attach an invoice is not presumptively useless.

Question 23

Philip Morris Inc. v. Imperial tobacco Ltd (No 2) (1987), 17 C.P.R. (3d) 237 (FCA)

Answer 23

Sale to anyone in Canada along the chain of distribution constitutes “use” for the purpose of s. 45.

The purpose and scope of s. 45 is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register. Evidence of a single sale, whether wholesale or retail, in the normal course of trade may well suffice so long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived
to protect the registration of the trademark. There is no need or justification for evidentiary overkill.

Question 24

Brouillette Kosie Prince v. Great Harvest Franchising Inc (2009), 77 C.P.R. (4th) 247 (FC)

Answer 24

Advertising a service and being ready, willing and able to provide the service constitutes “use” for the purpose of s. 45.

Question 25

Talaini S.R.L. v. Segura Viudas, S.A. (2005), 50 C.P.R (4th) 158 (TMOB)

Answer 25

The sale of one product cannot support maintaining more other goods in a registration.

Question 26

Harris Knitting Mills Ltd. (1985) FCA | Scott Paper Limited v. Smart & Biggar, 2008 FCA 129

Answer 26

3 criteria that the Registrar must consider in assessing whether evidence in s. 45 proceedings demonstrates special circumstances are: 1) the length of time during which the mark has not been used; 2) whether the RO's reason for non-use was due to circumstances beyond its control; and 3) whether there is a serious intention to shortly resume use.

Question 27

Remington Rand Corp. v. Philip Electronics N.V. (1995) FCA

Answer 27

If a distinguishing guise is wholly or primarily functional then it is not registrable and the public is not constrained from using the distinguishing guise in it entirety

Question 28

Mattel Inc. v. 3894207 Canada, Inc. (2006) SCC

Answer 28

A mark that is famous can transcend differences between wares and services in an analysis of the likelihood of confusion. However, fame will not trump all other factors in an analysis as to whether two marks are confusing. ``` Trademarks are something of an anomaly in IP law because the owner of a trademark is not required to provide the public with some novel benefit in exchange for a monopoly. However, trademarks serve an important public interest in assuring consumers that they are buying from the source from whom they think they are buying and receiving the quality which they associate with that particular trademark. Trademarks thus operate as a kind of shortcut to get consumers to where they want to go and in that way perform a key function in a market economy. ```

Question 29

Roadrunner Trailer Manufacturing Limited v. Roadrunner Trailer Co. (1984) FC

Answer 29

A trademark may appear within a corporate name provided that in use, the trademark is visually distinguishable from the balance of the wording constituting the corporate name.

Question 30

Fiesta Barbeques Limited v. General Housewares Corp. (2003) FC

Answer 30

The material date for deciding a ground of opposition based on S. 12(1)(b) is the date of the trademark application.

Question 31

Ontario Association of Architects v. Association of Architectural Technologist of Ontario (2002) FCA

Answer 31

In order to determine that an applicant is a public authority within the meaning of S. 9 one must establish that a significant degree of control is to be exercised by the appropriate government over the activities of the body and the activities of the body must benefit the public.

Question 32

Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980) FCA

Answer 32

In s. 45 proceedings, the affidavit or statutory declaration filed in support of the registration, must not merely state, but show use of the trademark within the meaning of the definition of the trademark in S. 2 and of use in S. 4.

Question 33

Novopharm Limited v. AstraZeneca AB (2002) FCA

Answer 33

In determining the sufficiency of a SoO after evidence is filed, regard must be had to both the evidence and the pleadings in the SoO in order to make a proper determination as to whether the applicant knows the case it has to meet. A deficiency in a pleading can sometimes be cured by the evidence.

Question 34

GWG Ltd. v. Registrar of Trademarks (1981) FC

Answer 34

In order to be clearly descriptive, a mark must be more than merely suggestive of the character or quality of the G/S in association with which it is used. The descriptive character must go a material composition or intrinsic quality of the G/S and a test is one of immediate impression.

Question 35

Clairol International Corp. v. Thomas Supply Equipment Co. (1968) FC

Answer 35

The appearance of a mark on a chart which is not affixed to the wares and which simply compares the wares of various competitors does not constitute use of the trademark in association with wares.

Question 36

Promafil Canada Limitée v. Munsingwear Inc. (1992) FCA

Answer 36

Cautious variations may be made to a trademark as it is used over the years, as long as the same dominant features are maintained.

Question 37

Canadian Jewish Review Ltd. V. The Registrar of Trademarks (1961) (Ex Ct); Ingle v. Registrar of Trade Marks (1973) FC; John Labatt Ltd. v. Registrar of Trademarks (1984) FC.

Answer 37

Mere embellishment of letters comprising a clearly descriptive mark does not render it registrable. A word mark that is clearly descriptive in block letter form cannot become registrable simply because the letters are written in a fanciful script. This is because a mere embellishment of the letters comprising the words cannot be dissociated from the words themselves.

Question 38

Mitel Corporation v. Registrar of Trademarks (1984) FC

Answer 38

A mark is not to be considered in isolation but rather in relation to the wares or services to which it is associated.

Question 39

Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004) FC

Answer 39

A composite mark, when sounded, is not registrable pursuant to S. 12(1)(b) if it contains word elements that are clearly descriptive or deceptively misdescriptive and that are dominant.

Question 40

General Motors Corp. v. Bellows (1949) SCC

Answer 40

The purpose of a S. 12(1)(b) objection to registrability of a clearly descriptive word is that no one person should be able to appropriate such a word and place legitimate competitors at an undue disadvantage in relation to language that is common to all

Question 41

Porter v. Don the Beachcomber (1966) Ex Ct

Answer 41

Advertising a trademark in Canada in association with a service only available outside of Canada does not constitute use.

Question 42

Scott Paper Ltd v Smart & Biggar, 2008 FCA 129

Answer 42

Special circumstances wrt non-use need to be "unusual, uncommon or exceptional" circumstances. The reasons must directly account for the absence of use. A serious intention to soon resume use is not sufficient to constitute "special circumstances".

Question 43

Dion Neckwear Ltd. v. Christian Dior, S.A. (2002) FCA

Answer 43

In an opposition, where an applicant has filed some evidence which may point to an unlikelihood of confusion (e.g. long-time concurrent use), an opponent is at great risk if it does not file evidence of actual confusion.

Question 44

Veuve Clicquot Ponsardin Maison Fondee en 1772 v. Boutiques Cliquot Ltee (2006) SCC

Answer 44

To succeed under s. 22, the marks need not be identical. If a casual observer could recognize the defendant's mark as that of the plaintiff, a misspelling will not avoid s. 22.

Question 45

Masterpiece Inc. v. Alavida Lifestyles Inc. (2011) SCC

Answer 45

Common law use of a confusing trademark anywhere in Canada prior to the relevant date is sufficient to invalidate a registration. The most important factor in assessing confusion is often the degree of resemblance between the marks.

Question 46

Manhattan Industries Inc. v. Princeton Manufacturing Ltd. (1971) FC

Answer 46

Sale by a distributor constitutes use of the trademark that accrues to the trademark owner.

Question 47

Orkin Exterminating Co v Pestco Co of Canada, (1984) ONCA

Answer 47

If a foreign entity's trademark has a reputation in Canada, it is possible to enforce that entity's trademark rights in Canada, even if the entity does not carry on business in Canada.

Question 48

Effigi Inc. v. Canada (Attorney General) (2004) FCA

Answer 48

The claimed date of first use in an application is irrelevant to the issue of entitlement during the examination process.

Question 49

Remington Rand Corp v Philips Electronics NV, (1995) FCA

Answer 49

The functionality of the shape to be protected is relevant in assessing whether it can qualify as a distinguishing guise.

Question 50

John Labatt Ltd. v. Ranier Brewing Co. (1984) FCA

Answer 50

In a S. 45 proceeding, to maintain all of the wares listed in the registration, it is necessary for the registrant to show use in association with all of the wares in the registration.

Question 51

Canadian Rehabilitation Council for the Disabled dba Easter Seals/March of Dimes National Council v. Rehabilitation Foundation for the Disabled dba Ontario March of Dimes (2004) FC; Canada Post Corp. v. Post Office (2000) FC

Answer 51

Evidence of adoption and use of an official mark by a licensee will not be considered adoption and use by the public authority.

Question 52

W.R. Grace & Co. v. Union Carbide Corp. (1987) FCA

Answer 52

To rely upon s. 14, a foreign registration of the trademark must exist at least until the date upon which registration is granted in Canada.

Question 53

Ralston Purina Co. v. Effem Foods Ltd. (1997) TMOB

Answer 53

Advertising and marketing relating to products of the Applicant does not constitute a service pursuant to s.4

Question 54

Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada (2008) FCA

Answer 54

An affidavit may be found inadmissible or carry little weight if the affiant is not an objective witness giving unbiased evidence about a contentious issue. Contentious evidence should not be introduced by an employee of a party's agent.

Question 55

Clairol International Corp v Thomas Supply & Equipment Co, [1968] Ex Ct

Answer 55

In order to constitute infringement, the defendant's impugned use must be "use" as a trademark.

Question 56

Registrar of Trademarks v Compagnie Internationale Pour L'Infomratique CII Honeywell Bull SA, (1985) FCA

Answer 56

The practical test to be applied in order to resolve a case of difference between the depiction of the trademark as registered and the depiction of the mark as used, is to compare the trademark as registered with the trademark as used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin.

Question 57

Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978) FC

Answer 57

The Registrar should not perpetuate past errors. In deciding whether a mark offends s. 12(1)(b), it must be determined what first impression the mark would create upon the everyday use of the G/S.

Question 58

Masterpiece Inc. v. Alavida Lifestyles Inc (2011) SCC

Answer 58

Expert testimony which simply assesses the resemblance between the marks is not necessary.

Question 59

Mattel Inc v. 3894208 Canada Inc (2006) SCC

Answer 59

Assess confusion not from the perspective of the careful and diligent purchaser or the "moron in a hurry." Rather, consider the "ordinary hurried purchaser."

Question 60

Mister Transmission (International) Ltd. v. Canada (Registrar of Trade-marks) (1978) FC

Answer 60

The owner of a certification mark will be said to have used the mark if it licenses the mark to other parties who then affix the mark to its wares or advertisement for services that meet the designated standard of the certification mark. Use by a licensee (registered user) has the same effect as use by the owner of a C.M.

Question 61

Molson Breweries v. Labatt Brewing (1996) TMOB

Answer 61

The Office will not accept an application for the registration of a certification mark unless the applicant sets out in a meaningful way the particulars of a defined standard

Question 62

Parke Davis and Co. v. Empire Laboratories Ltd. (1964) SCC

Answer 62

If a mark is considered functional, it cannot be distinguishing and, therefore, it cannot be considered registrable.

Question 63

Dracket Co. of Canada Ltd. v. American Home Products Corp. (1968) Ex Ct

Answer 63

The definition of “clearly” is “easy to understand, self-evident or plain”.

Question 64

Elder's Beverages (1975) Ltd. v. Canada (Registrar of Trade-marks) (1979) FC

Answer 64

A common dictionary meaning of a word could result in a surname no longer being considered to be “primarily merely” a surname.

Question 65

Lake Ontario Cement Ltd. v. Registrar of Trade Marks (1976) FC

Answer 65

If a mark is deceptively misdescriptive and forms a significant part of the mark, the mark in its totality is not registrable as per s. 12(1)(b).

Question 66

Gerhard Horn Investments Ltd. v. Registrar of Trade Marks (1983) FC

Answer 66

When confronted with a mark composed of a word(s) that have name or surname connotations, research must be conducted to determine whether it is in fact the name/surname of a living individual. There must be evidence that a name is a real name for s. 12(1)(a) to apply.

Question 67

Smith, Kline & French v. Registrar (1987) FC

Answer 67

A mark consisting only of colour(s) applied to the whole of the visible surface of a 3D objection is considered an ordinary trademark (not a distinguishing guise)

Question 68

Calumet Manufacturing v. Mennen (1991) FC; | Parke Davis v. Empire Laboratories (1963) SCC

Answer 68

To satisfy the test of distinctiveness it is not sufficient that a mark be merely distinctive in channels of trade, but must be distinctive to all who are probable purchasers including the ultimate consumer.

Question 69

FileNET Corporation v. Canada (Registrar of Trademarks) (2002) FCA

Answer 69

A common feature of both "adoption" and "use" is that there is an element of public display. Ss. 3 & 4 are not applicable to official marks, however, they may nonetheless assist in the interpretation of the meaning of "adoption" and "use" of official marks.

Question 70

Crush International Limited v. Canada Dry Ltd. (1981) FC

Answer 70

The requirements under ss. 56(1) - (3) are obligatory in nature and failure to comply may render the appeal to FC a nullity. (e.g. s. 56(2) provides that all NoA filed in the FC appealing Registrar's decision must also be filed with the Registrar).

Question 71

Joseph E. Seagram & Sons Ltd. et al. v. Seagram Real Estate Ltd. (1984) TMOB

Answer 71

In an opposition proceeding, failure to answer proper questions or fulfill undertakings may result in negative inferences being drawn or in the affidavit or statutory declaration being ignored at the decision stage.

Question 72

Molson Companies Ltd. v. John Labatt Ltd. et al. (1984) FC

Answer 72

The Registrar may refuse to issue a S. 45 notice if there is good reason to do so: 1) the registration is already the subject of a s. 45 proceeding pending before the Registrar or on appeal before the FC; 2) the request is within 3 yr of the date of issuance of a previous s.4 5 notice in cases in which the proceeding led to a final decision under s. 45; or 3) the Registrar considers that the request is frivolous or vexatious.

Question 73

Star-Kist Foods Inc. v. Canada (Registrar of Trademarks) 1988 FCA

Answer 73

In a s. 45 proceeding, the registrant's evidence must show use of the mark by the RO or an assignee entitled to be recorded as the RO.

Question 74

Anheuser-Busch Inc. v. Carling O'Keefe Breweries of Canada Ltd. (1982) FCA

Answer 74

In determining whether to grant further ex of t beyond the max. benchmark of 4m, the Registrar will have regard to the fact that it has no authority to stay s. 45 proceedings.

Question 75

Kitchen Craft Connection Ltd. v. Canada (Registrar of Trademarks) 1991 FC

Answer 75

In a request for retroactive extension of time pursuant to s. 47(2) to file additional evidence, the request must provide sufficient facts for the Registrar to determine that the failure to file evidence within the time limit was not reasonably avoidable.

Question 76

Re Wofville Holand Bakery Ltd. (1964) Ex Ct; | Ford Motor Co. of Canada Ltd. v. Registrar of Trade Marks (1977) FC

Answer 76

The Registrar considers that there is no authority to grant a retroactive ex. of t. under s. 47(2) after the Registrar has reached the financial decision under s. 45(3).

Question 77

Traditional Chinese Medicine Practitioners and Acupuncturists of BC v. Council of Natural Medicine College of Canada (2009) FC

Answer 77

The mere addition of an abbreviation, acronym or initials of the professional designation contained in the mark will not render the mark registrable.

Question 78

A W Allen Ltd v Warner-Lambert Canada Inc (1985) FC

Answer 78

There is nothing to prevent two registered trademarks from being used at the same time.

Question 79

Benson & Hedges (Canada) Ltd v Labatt Brewing Co (1996) FC

Answer 79

S.30(b) requires that there be continuous use of the applied for mark in the normal course of trade from the date claimed to the filing date of the application.

Question 80

John Labatt v Molson Companies (1990) FC

Answer 80

The presence of an onus on the applicant in an opposition proceeding means that if a determinate conclusion can't be reached once all the evidence is in, then the issue must be decided against the applicant.

Question 81

Kellogg Salada v Maximum Nutrition (1992) FCA

Answer 81

Inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.

Question 82

MCI Communications Corp v MCI Multinet Communications Inc (1995) TMOB

Answer 82

Corporate structure alone is insufficient to establish the existence of a license within the meaning of s. 50.

Question 83

Pernod Ricard v Molson Breweries (1992) FC

Answer 83

The first portion of a mark is the most relevant for purposes of distinction.

Question 84

Park Avenue Furniture Corp v Wickes/Simmons Bedding Ltd (1991) FCA

Answer 84

The material date for registrability under s. 12(1)(d) is the date of decision.

Question 85

Champagne Moet & Chandon v. Ridout Wines Ltd./Les Vins Ridout Ltee (1983) TMOB

Answer 85

An application based originally on proposed use may not be amended to claim a date of first use in Canada as such an amendment would be contrary to R31(d).

Question 86

Benson & Hedges (Canada) Ltd. v. Empresa Cubana Del Tabaco (1975) TMOB

Answer 86

S. 10 prevents a single trader from having a monopoly over a mark that is common to the trade and well understood as designating a particular quality of G/S.

Question 87

TCC Holdings Inc. v. Families as Support Teams Society, 2014 FC

Answer 87

A party claiming status as a public authority | for purposes of holding a mark under S. 9(1)(n)(iii) must be under significant government control at all times.

Question 88

HomeAway.com, Inc. v. Hrdlicka 2012 FC

Answer 88

Display of a trademark for services, on a website not originating in Canada, may be use and advertising of the trademark in association with services offered in Canada.

Question 89

W.J. Hughes & Sons “Corn Flower” Ltd. v. Morawiec, (1970) Ex Ct

Answer 89

A mark which is applied to wares for the purpose of ornament or decoration only is not registrable as a mark.

Question 90

Mead Johnson & Co. v. G.D. Searle & Co. (1967) [OVIN case]

Answer 90

Special care must be taken when reviewing confusing trademarks which cover pharmaceuticals.

Question 91

Coronet-Werke Heinrich Schlerf GmbH v. Produits Ménagers Coronet Inc. (1984) TMOB; Groupe Lavo Inc. v. Procter & Gamble Inc. (1990) TMOB

Answer 91

S. 19 does not give the owner of a registration the automatic right to obtain any further registrations no matter how closely they may be related to the original registration. [identical marks]

Question 92

McDonald's Corp. v. Yogi Yogurt Ltd. (1982) FC

Answer 92

An opponent cannot merely rely on a series of registered marks in order to claim the advantage of a family of trademarks. The opponent must prove use of each mark in the family.

Question 93

S.C. Johnson & Son, Ltd. et al. v. Marketing | International Ltd. (1979) SCC

Answer 93

In deciding whether a word mark is clearly descriptive, the Court needs to consider whether the mark is, in association with the goods, an elliptical reference to the goods or of their effect.

Question 94

Monsport Inc. v. Vetements de Sport Bonnie (1978) Ltée (1988) FC

Answer 94

An opponent is not required to prove that confusion has actually occurred. It is important to note, however, that the Court is entitled to draw negative conclusions about the opponent’s case if, despite a substantial period of co-existence in the market-place, no instances of actual confusion are established.

Question 95

Bacardi & Co. v. Corporativo de Marcas GJB, S.A. de C.V. (2014) FC

Answer 95

The notion that there is a “light evidential burden” on the opponent to put s. 30 into issue conflicts with the notion that the opponent must show that the applicant’s evidence is "clearly inconsistent" with the applicant's claims set forth in its application. Multiple diverse considerations inform the assessment of evidence including its provenance (i.e., its quality and reliability), the absence of evidence that might reasonably be expected to exist, whether the evidence has been tested on X-ex and if so, how it fared.

Question 96

Dominion Lock Co. Ltd. and Independent Lock Co. v. Schlage Lock Co. (1961) TMOB

Answer 96

If exclusive use by the applicant would result in a monopoly and limit the industry, the mark is not registrable.

Question 97

Brûlerie des Monts Inc. v. 3002462 Canada Inc. (1997) FC

Answer 97

Dictionary evidence can be used to prove that a mark is the name of the G/S.

Question 98

Atlantic Promotions Inc. v. Canada (Registrar of Trade-marks) (1984) FC

Answer 98

The test for a deceptively misdescriptive mark is whether the general public would be misled into associating the products’ origin.

Question 99

Canadian Olympic Assn. v. Health Care Employees Union of Alberta (1992) FC

Answer 99

The test of resemblance with respect to a s. 9 prohibited mark must also have regard to imperfect recollection.

Question 100

ITV Technologies, Inc v WIC Television Ltd (2003) FC

Answer 100

With regard to the reliability of the Internet, I accept that in general, official web sites, which are developed and maintained by the organization itself, will provide more reliable information than unofficial web sites, which contain information about the organization but which are maintained by private persons or businesses

Question 101

GSW Ltd v Great West Steel Industries Ltd (1975) FC

Answer 101

Trademarks comprised only of initials are traditionally considered to be weak and to lack inherent distinctiveness.

Question 102

Quaker Oats of Canada Ltd./ La Compagnie Quaker Oats du Canada Ltee v Menu Foods Ltd (1986) TMOB

Answer 102

The Registrar does not have discretion to check the register to confirm the existence of a registration relied upon by an opponent.

Question 103

Bojangles' International, LLC v Bojangles Cafe Ltd (2006) FC

Answer 103

The initial onus on the opponent with respect to a distinctiveness ground of opposition requires it to show that its mark had a reputation in Canada that was either substantial, significant or sufficient as of the filing date of the statement of opposition.

Question 104

House of Kwong Sang Hung International v. BLG (2001) FCA; Cushman & Wakefield v. Wakefield Realty Corp (2004) FC

Answer 104

Parties can enter into an oral license agreement.

Question 105

Sandy Singh Hansard Trust v. Canada (Registry of Trademark) 2007 FCA

Answer 105

An extension of time to file evidence in response to a s. 45 notice may be granted if the registrant files sufficient reason to satisfy the registrar that the circumstances warrant an extension and pay the prescribed fee.

Question 106

Joseph E Seagrams &Son Ltd et al v. Seagrams Real Estate Ltd. 1984 TMOB

Answer 106

If an affair refuses to respond to certain question asked during a X-ex, negative inferences may be drawn or the affidavit may be ignored at the decision stage.