Category Archives: Trademark

The Case of the ‘Missing S’

At What Point Can Trademark Owners Claim Damages When a Registered Mark Infringes?

Under section 19 of the Canadian Trademarks Act, “… the registration of a trademark in respect of any goods or services, unless shown to be invalid, gives to the owner of the trademark the exclusive right to the use throughout Canada of the trademark in respect of those goods or services.” (our emphasis) That exclusive right is said to be infringed if another person, among other things, sells goods in association with a confusingly similar trademark or trade name. (s. 20(1)(a)) The owner can then institute legal proceedings against the allegedly infringing party (s. 52 ff) and, if they are successful, obtain monetary compensation or other remedies.

But what happens if a registered trademark is later expunged and the use of that mark is held to be infringing another trademark owner’s trademark rights? When does the protection of section 19 cease? In other words,  when can another registered trademark owner obtain damages for that infringing use?

In its recent decision in Group III International Ltd. v. Travelway Group International Ltd., the Canadian Federal Court of Appeal has provided some guidance. According to this decision, in the absence of misrepresentation or bad faith, there can be no damages for the period prior to expungement.

The first decision in the case was issued in 2013, and involved the registered trademarks of GROUP III INTERNATIONAL LTD., HOLIDAY GROUP INC. and WENGER S.A. (collectively “GROUP III”), namely the “Wenger Cross Logo” as well as related marks with the words “WENGER” or “SWISSGEAR”  registered in association with luggage and bags.

GROUP III alleged trademark infringement and passing off by TRAVELWAY GROUP INTERNATIONAL LTD. (“Travelway”) with respect to the use of Travelway’s registered trademarks  on its luggage related products:

In this first judgement, the Federal Court ruled that Travelway’s registered marks were not confusingly similar to GROUP III’s, and therefore, that there was no infringement. Similarly, GROUP III’s claim that  Travelway had attempted to pass of their goods as those of the GROUP IIIs failed.

On appeal, however, the Federal Court of Appeal ruled that the trial judge had misapplied the test for confusion, overemphasizing the resemblance of the logos, and ruled that there was indeed confusion and passing off. The issues of whether  Travelway’s registered marks ought to be expunged, and the applicable quantum of damages were referred back to the Federal Court.

In 2019, the Federal Court ordered Travelway’s trademarks expunged, but refused to grant  GROUP III compensation as there could only be damages after the expungement of Travelway’s marks. At this stage GROUP III attempted to rely on the judge’s discretionary power with respect to remedies, alleging that  Travelways had blatantly infringed  GROUP III’s marks. Under the circumstances, they claimed, there was “no basis to deny compensation altogether.” According to GROUP III, the expungement should have rendered Travelway’s marks invalid from the beginning (e.g. void ab initio) and as such, the shield of Section 19 should never had existed.  However, the judge agreed with Travelway, and followed the precedent established in Remo Imports Ltd v Jaguar Cars Limited, which held that absent a finding of bad faith, a registration would not be deemed void ab initio. The judge noted that in the present case, the Travelway had “ceased all sales on the date of the Judgement of the Federal Court of Appeal,” and that there had in fact been no finding of bad faith.  Damages were only available after the expungement of the mark, not prior thereto.

GROUP III appealed on the basis that the Federal Court erred and should have found that the infringing marks have always been invalid and never registrable, therefore disentitling Travelway from relying on section 19 and entitling GROUP III to financial compensation from the moment Travelway started using its infringing trademarks. The Federal Court of Appeal ruled that Travelway “could rely on its registrations as protection until such time as the Federal Court expunged its trademarks from the Register.” In reaching this conclusion, it noted that trademark registration is subject to a complex, specialized administrative scheme, which militates against trademarks being deemed invalid from the outset. Furthermore, it distinguished between the time at which a trademark becomes invalid and the time at which it is expunged from the register. The latter, it concluded, must be the starting point for any liability arising from the use of a registered trademark that has been invalidated.

The case underlines the importance of obtaining registered trademarks. They continue to serve the dual purposes of protecting members of the public by allowing them to identify the source of goods and protecting owners’ business interests by preventing others from using their marks. However, they may also serve a defensive purpose: they can protect the owner, in certain circumstances, in infringement claims by third parties. That being said, this protection could, however, be lost where the trademark is obtained fraudulently or in bad faith.

IAM Global Leaders

Jean-Nicolas Delage Recognized as IAM Global Leader for 2021
Fasken partner, Jean-Nicolas Delage, has been recognized in the 2021 edition of IAM Global Leaders Guide.

Now into its second year, the IAM Global Leaders Guide brings together the world’s foremost private practice patent experts. Congratulations Jean-Nicolas! Read the full guide here.

Jean-Nicolas is the co-leader of the Technology, Media and Telecommunications group and specializes in intellectual property strategy for rapidly growing technological clients.

CIPO Fees to Increase After January 1, 2021

The Canadian Intellectual Property Office (“CIPO”) has announced that many of its fees for Canadian trademarks, patents, industrial designs, and integrated circuit topographies will increase on January 1, 2021. Among the fees being increased by 2% are those for an application to register a trademark as well as examination of patent and industrial design applications. A full list of the adjusted fees can be found in the links above or on the CIPO website.

The CIPO website should be consulted for an up-to-date listing of the adjusted fees because the applicable Tariff of Fees in the Patent Rules may not yet be updated. Whether the current fee or the adjusted fee must be paid for a given service will depend on the date on which the fee is received by CIPO, not the date on which the service is requested.

Fasken’s team of experienced intellectual property lawyers, patent agents, and trademark agents would be pleased to assist you with any and all CIPO matters.

Rapid Patenting of Solutions to Covid-19

Are you a small business or independent inventor with an invention which may help in the fight against COVID-19?

On 8 May 2020, the United States Patent and Trademark Office (USPTO) announced a new program for accelerating the review of patent applications related to COVID-19. This could be your lucky day (if you’re one of the 500 selected…)!

The purpose of this program is to facilitate the patenting process by reducing cost and allowing rapid review of eligible filed patent applications.

What do you need to know about the new program (“COVID-19 Prioritized Examination Pilot Program”)? Here’s a snapshot:

  • The patent application must cover a product or process that is subject to U.S. Food and Drug Administration (FDA) approval for use in the prevention and/or treatment of COVID-19.
  • Only small and micro entities are eligible (companies with <500 employees or independent inventors).
  • Prioritized examination fees are not required under this program (regular fees apply).
  • Total of 500 applications will be reviewed under the program.

Full details may be found by clicking here (link to USPTO).

Canada’s Intellectual Property Office (CIPO) does not have a specific program for inventors in response to COVID-19 but it has multiple programs for expediting review of new patent applications, and at a low cost relative to the U.S., which may be used as before. Canadian patent applications may be expedited under one of the following scenarios:

  1. By payment of a fee of $500CAD (useable on virtually all applications).
  2. By having a corresponding patent issued in a foreign patent office. For example, if you have filed the same patent application in the U.S. and Canada and a U.S. patent has issued, CIPO will expedite review of the corresponding Canadian application.

For any questions or further information, please contact a member of our patent group.

SUSSEX ROYAL Trademark in Canada: Safe Heaven, But Maybe Not for Royal Trademarks

The past two months have been marked by unprecedented turmoil for the British royal family, after the announcement by the Duke and Duchess of Sussex, Prince Harry and Meghan Markle, that they would step down as senior members of the royal family and entertain their own financial independence. Under a new working arrangement, they will be free to earn professional income and will have more liberty to pursue their charitable endeavours. Further details on the specific arrangements can be found here.

In anticipation of their new projects, a trademark application and a domain name registration for SUSSEX ROYAL had been sought in the UK. Following a recent intervention by Her Majesty the Queen herself, however, the use of the term “royal” has now been disallowed. Since the Duke and Duchess of Sussex would no longer be serving as “royal” members and representatives, as they gave up their royal duties, then there was no justification for them to further use this term. The UK trademark application for SUSSEX ROYAL was thereby withdrawn.

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