Archived — Trademark Agent Exam 2010 - Part B

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Total marks for paper: 150

Question 1

Your client, Acme Inc., is the owner of a Canadian trademark registration for the mark THE BOZOS in association with:

  • Wares:
    1. shirts;
    2. hair dryers;
    3. pens;
    4. bicycles, tricycles, all-terrain quad vehicles;
    5. egg timers;
    6. telephones;
    7. nuclear reactors;
    8. wines;
    9. sparkling wines;
    10. television sets;
    11. toasters.
  • Services:
    1. installation of nuclear reactors.

A Section 45 Notice issued on June 1, 2010.

You filed the following affidavit on behalf of your client. Provide an opinion to your client as to the likely outcome of the Section 45 proceedings, basing your opinion on relevant principles and case law. (38 marks)

Affidavit of John Smith

I, John Smith, of the city of Winnipeg, Manitoba, hereby make oath and say:

I am the president of Acme Inc. (hereinafter "Acme" or "My company").

From 1970 to 2005, Acme sold hundreds of shirts featuring the trademark THE BOZOS every year to a buyer in New Forks, Manitoba. Now shown to me and marked as Exhibit 1 is a photograph of one such shirt. [The exhibit is not included in this examination. However, assume that it clearly shows a shirt with the mark THE BOZOS in large letters across the front.] In spite of My Company's best efforts, due to the recession in New Forks since that time, I have not been able find a new buyer. However, as soon as I find a new buyer, I have every intention of immediately resuming the sale of these shirts.

In April of 2010, My Company gave away 10 free samples of hair dryers to potential Canadian distributors. On the same day, My Company gave away 10 free samples of pens to potential Canadian distributors of hair dryers. My Company never sells pens. The pens are used solely to promote the hair dryers. Each hair dryer and pen featured the mark THE BOZOS. Now shown to me and marked as Exhibit 2 is a photograph of one such hair dryer and pen. In the past, when I have given away free samples of hair dryers and pens, the distributors would then often order hair dryers from My Company. [The Exhibit is not included in this examination. However, assume that it clearly shows a hair dryer and a pen with the mark.]

Every year since 2005 to the present, My Company has sold hundreds of bicycles, tricycles and all-terrain quad vehicles bearing the mark THE BOZOS to companies in Canada. Now shown to me and marked as Exhibit 3 is a photograph of a representative bicycle and the invoice for that bicycle. [The Exhibit is not included in this examination. However, assume that it shows an invoice and a photograph of a bicycle with THE BOZOS clearly printed along the side.] The mark is shown in a similar manner on all of our tricycles and all-terrain quad vehicles sold in Canada.

Each year since 2007, My Company has sold 100 egg timers bearing the trademark THE BOZOS in Canada and/or the United States. Now shown to me and marked as Exhibit 4 is a photograph of a representative egg timer. [The exhibit is not included in this examination. However, assume that it shows a photograph of an egg timer with the mark clearly shown.]

In 2009, My Company sold 83 telephones to a distributor in Ontario. The trademark THE BOZOS is clearly shown on the telephones. The distributor had a fire one week after the telephones were received in its warehouse, destroying all the telephones. Now shown to me and marked as Exhibit 5 is a photograph of a representative telephone and associated invoice. [The exhibit is not included in this examination. However, assume that it shows a photograph of a telephone with the mark clearly shown and an associated invoice.]

Since 2007, My Company has been posting flyers in shopping centres across British Columbia advertising my company's nuclear reactors. Each flyer shows one of My Company's nuclear reactors in Spain, with the words THE BOZOS across the nuclear reactor. These flyers also advertise My Company's nuclear reactor installation services. We have not yet sold any nuclear reactors in Canada. However, as soon as someone calls to order a nuclear reactor, we will install one immediately. Now shown to me and marked as Exhibit 6 is a photograph of one of My Company's flyers. [The exhibit is not included in this examination. However, assume that it shows a photograph of a flyer as described in this paragraph.]

Each year since 2005, My Company has sold 50 cases of sparkling wine to a liquor store in Manitoba. Each bottle and each case clearly features the mark THE BOZOS. Now shown to me and marked as Exhibit 7 is a photograph of a representative case and invoice. [The exhibit is not included in this examination. However, assume that it shows a photograph of a case of sparkling wine clearly showing the mark as well as an invoice.]

My company does not sell television sets. However, my company licenses the company The Television Company Inc. to use the trademark in Canada in association with televisions. Under the license, Acme controls the appearance of the mark on the televisions sets. The license specifies the exact size, font and colour of the trademark. Now shown to me and marked as Exhibit 8 is a photograph of one such television and associated invoice. [The exhibit is not included in this examination. However, assume that it clearly shows a television set with the mark THE BOZOS on the set and an invoice.] The Television Company Inc. has sold hundreds of such television sets to customers across Canada every year from 2001 to the present day.

My Company does not sell toasters. However, My Company licenses the Quebec company The Heating Company Inc. to use the trademark in Canada. The Heating Company Inc. is a wholly owned subsidiary of Acme. Now shown to me and marked as Exhibit 9 is a photograph of one such toaster and 10 representative invoices from the past two years showing sales of toasters in Canada from The Heating Company Inc. to the client in Montreal. The invoice always accompanies the toaster. [The exhibit is not included in this examination. However, assume that it clearly shows a toaster with the mark THE BOZOS on the toaster and 10 invoices.]

Answers to Question 1
  • (1) "Shirts" will be removed from reg'n. (1 mark.) A recession (or poor economic circumstances) does not constitute special circumstances. (2 marks).
  • (2 & 3) - "Hair dryers" will be maintained in reg'n. (1 mark). "Pens" will be removed from reg'n. (1 mark.) The transfer of free samples = use, if it's part of the normal course of trade – to solicit future orders of the same product: 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). These facts = use in association with hair dryers. (2 marks) for principle if properly stated. No need to cite case. The transfer of free samples of one product to promote a different type of product is not use. These facts do not constitute use in association with pens. (2 marks) for principle properly stated.
  • (4) - Registration to be maintained for "bicycles, tricycles and all-terrain quad vehicles." (1 mark). Need not show use of tm on each of the wares – Etigson v. KPM Industries Ltd (2001), 15 C.P.R (4th) 411 (TMSHO). If the trademark is shown on one of the wares, and affidavit states that this is representative for other wares, that is sufficient. (2 marks) for the principle.
  • (5) - "Egg timers" to be removed from reg'n. (1 mark) An affidavit in s. 45 proceedings should not be susceptible of more than one interpretation. If susceptible of more than one interpretation, the interpretation adverse to the interest of the party in whose favour the affidavit was made should be adopted: 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). (2 marks) for the principle; (1 mark) for the case. As well, an affidavit which fails to attach an invoice is not presumptively useless: Lewis Thomson & Sons Ltd v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (FC). However, an invoice would be needed in this case to prove a sale in Canada. (2 marks) for the principle relating to the invoice (which may have been made elsewhere in the exam).
  • (6) - "Telephones" to be maintained in reg'n. (1 mark) Sale to anyone in Canada along the chain of distribution = "use": Manhattan Industries v. Princeton Manufacturing Ltd (1971), 4 C.P.R. (2d) 16 (FC) or Philip Morris Inc. v. Imperial tobacco Ltd (No 2) (1987), 17 C.P.R. (3d) 237 (FCA). (2 marks) for the principle. (1 mark) for relevant case. Special circumstances not relevant.
  • (7 & Services) - "Nuclear reactors" will be removed. (1 mark) But the services "installation of nuclear reactors" will be maintained. (1 mark) Advertising does not constitute use in association with wares. (1 mark)
    These facts do not constitute special circumstances. (1 mark)
    Advertising a service and being ready, willing and able to provide the service = use: Wenward (Canada) Ltd v. Dynaturf Co (1976), 28 C.P.R. (2d) 20 (TMOB); Brouillette Kosie Prince v. Great Harvest Franchising Inc (2009), 77 C.P.R. (4th) 247 (FC). (2 marks) for the principle. (1 mark) for citing relevant case.
  • (8 & 9) - "Sparkling wine" will be maintained in the registration but not "wines" (or possibly vice versa). The sale of one product cannot support maintaining more than one of the wares in a registration: Talaini S.R.L. v. Segura Viudas, S.A. (2005), 50 C.P.R (4th) 158 (TMSHO). (1 mark) for saying only one of "sparkling wine" or "wines" to be maintained. (2 marks) for the principle.
  • (10) - "Television sets" to be removed from registration. (1 mark) Pursuant to s. 50, the owner must control the character or quality of the wares (and not the depiction of the trademark). (2 marks) for principle.
  • (11) - "Toasters" to be removed from registration. (1 mark). A corporate relationship is not sufficient for an inference of control. (2 marks)

Question 2

List all of the stages from start to end, including optional steps, in a Section 45 proceeding up to the decision of the Registrar. Assume that the registration has been on the register for more than 3 years. Do not consider appeals. (4 marks)

Answer to Question 2

Letter to TMO with $400. (½ mark).

  • TMO forwards s. 45 Notice to the registered owner. (½ mark)
  • Registered owner may request extension to file evidence. (½ mark)
  • Registered owner files evidence. (½ mark)
  • TMO invites requesting party to file written representations. (½ mark)
  • After written submissions filed or deadline passes, TMO invites the registered owner to file written representations. (½ mark)
  • Within one month following the final deadline for the submissions of the registered owner's written representation, each party may request an oral hearing (with no invitation from TMO). (½ mark)
  • A hearing is scheduled, if requested. (½ mark)

Question 3

You are the requesting party in a Section 45 proceeding. You negotiate a settlement with the registrant, whereby the registrant agrees to assign its mark to you in exchange for a royalty-free license back to the registrant. Prior to finalizing the agreement, you learn that the registrant's registration for cutlery is associated with a pending application for the identical mark for barbeques. How does this affect the settlement? What options are available to you if you still want to settle on the basis of an assignment with a license back to the registrant? (4 marks)

Answer to Question 3
  • Cannot assign one mark without assigning both associated marks (1 mark)
  • Could try to argue with the TMO that the association should be withdrawn because the marks are not confusing (2 mark)
  • Could withdraw the pending application (1 mark)

Question 4

Zondor Inc owns an application based on use in Canada since at least as early as 2001. It turns out that the mark was used from 2001 – 2005 only by Zondor Inc's predecessor. The predecessor assigned all rights in the mark to Zondor Inc in 2005. You want to oppose the application.

Your responses to the following must be justified and must identify relevant provisions of the Trademarks Act and/or Trademarks Regulations (Total of 4 marks)

  1. Can you base the opposition on the fact that the application did not name the predecessor-in-title?
  2. Can Zondor Inc amend the application during the opposition to name a predecessor-in-title?
Answers to Question 4
  1. Yes. (1 mark) s. 38(2)(a) (½ mark) and s. 30(b) (½ mark)
  2. Yes. (1 mark) Rule 30. (1 mark)

Question 5

Your client has filed a statement of opposition to a trademark application filed on December 5, 2006. The application, based on proposed use of the trademark, was advertised in the Trademarks Journal of September 5, 2007. The primary ground of opposition in this case is non-entitlement based upon s. 16(3)(b) of the Trademarks Act in view of your client's previously filed application based upon use and registration of the trademark in the United States. The Rule 41 evidence consists of a certified copy of the opponent's alleged application and of an affidavit from the opponent's President. Since the opponent had not commenced use of its trademark in Canada at the time of filing its Rule 41 evidence, the affidavit was mainly directed to the use of the trademark in the United States. The opposition proceeding is still at the evidentiary stage with the applicant having filed and served its Rule 42 evidence on October 10, 2010. The applicant's evidence consists of an affidavit from a searcher with respect to the state of the register evidence. Further, your client's alleged trademark application proceeded to registration on October 8, 2010.

You responses to the following must be justified and must identify relevant section(s) of the Trademarks Act or Trade-marks Regulations, if any. (Total of 9 marks)

  1. What is the material date for assessing the non-entitlement ground of opposition?
  2. What needs to be established by the opponent in support of the non-entitlement ground of opposition?
  3. In view of the recent registration of the opponent's trademark, should any steps be taken with respect to the statement of opposition? Why?
  4. What is the deadline for filing reply evidence?
  5. You decide to file a certified copy of the opponent's registration as evidence. Assuming that the deadline to file reply evidence has not yet expired, should it be filed as reply evidence? If so, why? If not, will it be possible to file the certified copy of the registration as evidence?
Answer to Question 5
  1. December 5, 2006 (filing date of the application) (1 mark)
  2. Its trademark application had been previously filed (s. 16(3)(b)) (1 mark) and was pending at the date of advertisement of the applicant's application (s. 16(4)) (1 mark).
  3. The following elements must be in the answer:
    • Pursuant to Rule 40 of the Regulations (1 mark),
    • request leave to amend the statement of opposition to rely upon confusion with the registered trademark of the opponent (1 mark).
    • Unless the s. 12(1)(d) ground of opposition is raised, the Registrar is precluded from considering it (1 mark).
  4. November 10, 2010 (1 mark).
  5. Cannot be filed as evidence under Rule 43 because not confined to matter in reply to the applicant's evidence (1 mark). Can be filed as additional evidence under Rule 44(1) with leave from the Registrar (1 mark).

Question 6

You are representing the applicant in an opposition proceeding. Your client has filed an affidavit as evidence pursuant to Rule 42. The opponent obtained an order for the cross-examination of the affiant with the order providing for a four-month deadline from the completion of the cross-examination to file and serve evidence pursuant to Rule 43. The cross-examination was conducted at the end of June. The transcript of the cross-examination was filed by the opponent's agent on July 12, 2010. Since you had yet to provide answers to 10 undertakings given during the cross-examination, the opponent's agent obtained, with your consent, a first extension of time, that is until November 10, 2010, to comply with the cross-examination order. You have just received from your client responses to 8 undertakings. Your client informs you that he does not intend to reply to the 2 remaining undertakings as he considers these to be confidential information.

Your responses to the following must be justified taking into account the Trade-marks Act, Trade-marks Regulations and/or the current practice notice entitled Practice in Trademark Opposition Proceedings, as the case may be. (Total of 9 marks)

  1. Is it you or the opponent's agent who has the responsibility to file the responses to undertakings with the Registrar?
  2. Assume that the opponent asked the Registrar to order the affiant to answer the remaining undertakings. What is the likelihood of such a request being granted?
  3. Further to the cross-examination of the applicant's affiant, the opponent wishes to discuss a possible settlement of the opposition for the first time. With your consent, the opponent's agent intends to request a further extension of time to comply with the cross-examination order in view of the settlement negotiations. Is the Registrar likely to consider such a request favourably?
  4. Assume that the opponent timely filed the answers to undertakings while pursuing the settlement negotiations. With your consent, will it be possible for the opponent to obtain an extension of time of nine months, amounting to a cooling-off period, to file its Rule 43 evidence?
Answer to Question 6
  1. The opponent (party conducting the cross-examination)(1 mark). Rule 44(4) (1 mark).
  2. The Registrar does not make rulings during the course of an opposition as to whether certain questions asked in cross-examination should be answered (1 mark). Practice notice (1 mark).
  3. The following elements must be in the answer:
    • No (1 mark).
    • Under the practice notice, the extension of time should be requested on the basis of exceptional circumstances (1 mark).
    • Settlement negotiations are not identified in the practice notice as a special circumstance justifying an extension of time to comply with a cross-examination order (1 mark).
  4. No (1 mark). The cooling-off period provided for under the practice notice does not apply to evidence under Rule 43 (1 mark).

Question 7

Given the practice notice entitled Practice in Trademark Opposition Proceedings, you have obtained on behalf of your client an extension of time of five months, amounting to a cooling off period, to file and serve its counter statement. (Total of 4 marks)

  1. Since the total maximum benchmark provided for in the practice notice is nine months, can you request with the consent of the opponent, a further four-month extension of time, amounting to a cooling-off period, to file and serve the counter statement?
  2. Will it be possible to request an extension of time of nine months, amounting to a cooling off period, to file your client's Rule 42 evidence if the parties are still negotiating settlement at that time? Assume that the opponent will consent.
Answer to Question 7
  1. No (1 mark). The Registrar will only consider one request for an extension of time up to the maximum benchmark (1 mark).
  2. No (1 mark). An extension of time amounting to a cooling-off period was already obtained at the stage of the counter statement (1 mark).

Question 8

Referring to one court case, identify the three criteria that the Registrar must consider in assessing whether or not evidence in section 45 proceedings demonstrates special circumstances excusing the absence of use of a trademark? (4 marks)

Answer to Question 8

(1 mark for each criterion, 1 marks for a relevant case law)

  • First: the length of time during which the trademark has not been used.
  • Second: whether the registered owner's reasons for not using the trademark was due to circumstances beyond its control.
  • Third: whether there exists a serious intention to shortly resume use. Potential cases: Registrar of Trademarks v. Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d) 488; Scott Paper Limited v. Smart & Biggar (2008), 65 C.P.R. (4th) 303.

Question 9

Set out three differences between summary expungement proceedings under s. 45 and expungement proceedings under s. 57 of the Trade-marks Act. (6 marks)

Answer to Question 9

(2 marks) for each relevant difference, including but not restricted to:

  • Issues such as ownership, distinctiveness or abandonment of a registered trademark which may be raised under s. 57 are not relevant in s. 45 proceedings.
  • Section 57 Exclusive jurisdiction of the Federal Court.
  • Onus of proof under s. 45 is on the registered owner whereas it is on the plaintiff under s. 57.
  • No evidence from the requesting party in s. 45 proceedings
  • Cross-examination in s. 45 proceedings is limited to appeal

Question 10

In general, what are the three essential elements to a passing-off action? (3 marks)

Answer to Question 10

(1 mark for each element)

  1. Existence of goodwill or reputation.
  2. Deception of the public due to misrepresentation.
  3. Potential or actual damage to the plaintiff.

Question 11

Indicate whether you are in agreement with the following statements. Your response must be briefly justified (Total of 8 marks).

  1. A foreign decision involving the same trademarks is never relevant in a Canadian opposition proceeding.
  2. The only rights that can be exercised by a licensee who is the plaintiff in an infringement action are those of the owner of the trademark.
  3. It is possible in opposition proceedings to ask the Registrar to maintain the confidentiality of evidential documents.
  4. Section 19 prohibits the use of a trade-name that is identical to a registered trademark and for the same wares.
Answer to Question 11
  1. No (1 mark). It may be relevant if there is evidence concerning how closely the foreign law resembles Canadian law (1 mark).
  2. Yes. (1 mark). Section 50(3) of the Act (1 mark).
  3. No (1 mark). Rule 45 (1 mark).
  4. No. (1 mark). Section 19 only prohibits the use of an identical trademark (for the same wares) (1 mark).

Question 12

A foreign associate sends you a new client Merlin S.A. (hereinafter Merlin), a French company which manufactures perfume and fashion clothing. Merlin owns the following trademarks:

  • Merlin is the owner of a registration in France and in the European Union for the trademark MAGIE DE MERLIN in association with a broad range of fashion clothing and footwear. This trademark has been extensively used in several European countries including France on footwear, namely men's and women's shoes, boots and sandals and a wide range of women's clothing including jeans and slacks, dresses, skirts, blouses, shirts and sweaters. MAGIE DE MERLIN was the subject of an application in Canada filed on December 15, 2007 which has now gone to registration on the basis of use and registration abroad.
  • Merlin is also the owner of registrations in France for series of trademarks namely MAGIE, MAGIE NOIRE, MAGIE BLANCHE and MAGICA for use in association with perfumes, eau de cologne and a range of cosmetics.
  • There has been use of the trademarks MAGIE and MAGIE NOIRE in Canada since 2005, in association with perfumes and colognes and a range of women's clothing. Both of these trademarks are registered in Canada.
  • The two other marks MAGIE BLANCHE and MAGICA have been the subject of extensive advertising and media comment in fashion magazines having circulation in Canada since 2007, but have not as yet been used in association with products in the Canadian marketplace. Both marks are the subject of trademark applications in Canada filed in February 2008 on the basis of proposed use in association with perfume, cologne, body scent and cosmetics namely face powder, make-up and lipstick and women's clothing namely shirts, jeans, slacks and sweaters. In addition, the scope of advertising has been such that the trademarks MAGIE BLANCHE and MAGICA are now very well known across Canada in association with perfumery products, based on a survey performed in March 2009.

Merlin has been pursuing licensing negotiations with a Canadian company for use of its trademarks. The negotiations also included English versions of the marks and Merlin filed applications for the trademarks WHITE MAGIC, BLACK MAGIC and MERLIN'S MAGIC in May, 2009 on the basis of proposed use.

Merlin has just discovered that the company with whom it had been negotiating the licensing agreement since February 2009, had, without its knowledge, filed applications for the trademarks BLACK MAGIC and WHITE MAGIC in April 2009 on the basis of proposed use in association with "perfumery products namely perfume and cologne" and "women's clothing namely dresses, shirts, jeans slacks and sweaters".

It is October 15, 2010, and you discover that these two trademark applications were advertised on August 18, 2010. (Total of 36 marks).

  1. You need some further information from Merlin in order to proceed with a Statement of opposition. What is the first step, which should be taken in the Trademarks Office, in order to protect Merlin's rights and by when? (2 marks)
  2. Merlin instructs you to file Statements of Opposition. Set out in point form the grounds of opposition which could be raised and also refer to the pertinent sections of the Act. (16 marks)
  3. Your foreign associate asks you to outline the evidentiary burdens in the opposition. In point form, outline in general terms these burdens or onuses for both parties, then provide general advice in point form, as to the facts, which would need to be established by the Opponent for each of the grounds of opposition that you have identified. Cite any pertinent sections of the Act. (18 marks)
Answer to Question 12
  1. Requesting an extension of time on or before October 18, 2010 to file a Statement of Opposition against each of the applications. A three-month extension should be granted. (1 for deadline, 1 for extension request)
  2. The following grounds of opposition could be raised:

    Pursuant to Section 38(2)(a) of the Act (0.5 mark)

    1. The application does not comply with section 30(e) of the Act. The applicant did not intend to use the trademark in Canada, since it was negotiating with the opponent for a license in association with the trademarks in question. (0.5 mark for section, 1.5 marks for complete ground of opp.)
    2. The application does not comply with section 30(i) if the Act. The applicant could not make the statement that it was satisfied that it was entitled to use the trademark, since it had been negotiating with the Opponent company for a license. It was thus well aware of the opponent's prior rights. (0.5 mark for section, 1.5 marks for complete ground of opp.).

    Pursuant to section 38(2)(b) (0.5 mark)

    1. The applied for trademark is not registrable since it is confusing with the opponent's registered trademarks MAGIE DE MERLIN, MAGIE and MAGIENOIREall of which are registered in association with the same or similar wares as those covered in the application. The application thus contravenes the provisions of section 12(1)(d) of the Act. (0.5 mark for section, 2 marks for complete ground of opp)

    Pursuant to section 38(2)(c) (0.5 mark)

    1. The Applicant is not the person entitled to registration since the applied-for trademark is confusing with the Opponent's trademarks MAGIE NOIRE and MAGIE which had been used in Canada prior to the date of application, in association with perfumery products and women's clothing and the Opponent's trademarks MAGIE BLANCHE and MAGICA which had been made known in Canada prior to the date of application, in association with perfumery product. The application thus contravenes the provisions of section 16(3)(a) of the Act. (0.5 mark for section, 2 marks for complete ground of opp)
    2. The Applicant is not the person entitled to registration since the applied-for trademark is confusing with the Opponent's trademarks MAGIE BLANCHE and MAGICA, which are the subject of prior applications in Canada under serial nos. ___ , in association with perfume, cologne, and body scent, and clothing namely shirts, jeans, slacks and sweaters. The application thus contravenes the provisions of section 16(3)(b) of the Act. (0.5 mark for section, 2 marks for complete ground of opp)

    Pursuant to section 38(2)(d) of the Act. (0.5 mark)

    1. The applied-for trademark is not distinctive within the meaning of section 2 of the Act since it does not distinguish and is not adapted to distinguish the Applicant's wares from the wares of the Opponent in association with which the Opponent has used or made known all of the trademarks referred to previously in this Statement of Opposition. (0.5 mark for section, 2 marks for complete ground of opp)
    1. The Opponent has a preliminary evidentiary burden or onus of establishing the facts on which it relies on each of the grounds of opposition. Once that preliminary burden has been met, the burden shifts to the Applicant which has the primary onus of establishing that its mark is registrable, and distinctive, that it is a person entitled to registration and that it has complied with the formal requirements set out in section 30 of the Act. (2 marks)
    2. On the grounds of opposition under section 38(2)(a), the Opponent will need to provide evidence of the licensing negotiations to establish that the Applicant did not intend to use the mark as a trademark owner, and could not honestly make the statement required in section 30(i). (3 marks)
    3. On the grounds of opposition under section 38(2)(b), the Opponent will need to provide evidence of its registered trademarks, preferably certified copies of the registrations. The Opponent will also want to establish the extent of the use and reputation of the registered marks in Canada and the nature of the wares and channels of trade through which the wares travel. (3 marks)
    4. On the grounds of opposition under section 38(2)(c), the Opponent will need to establish the following:
      1. That the trademarks relied upon on the basis of prior use, were in use in Canada by the trademark owner prior to the pertinent date, i.e. date of application. The Opponent will also need to establish that the relied-upon trademarks were in use and had not been abandoned as of the date of advertisement. (3 marks)
      2. In relation to the two previously filed applications for the trademarks MAGICA and MAGIE BLANCHE, the Opponent should produce copies of the two application pages and establish that the applications remained on the Register as of the date of advertisement. (2 marks).
      3. That the marks, which had previously been made known, were in use in a country of the Union and that there has been publication of advertisements in journals or newspapers having circulation in Canada. (see section 5) Evidence of the survey establishing that the marks are well-known in Canada should also be produced. (3 marks).
    5. On the grounds of opposition under section 38(2)(d) , the issue of distinctiveness is likely to turn on the issue of the likelihood of confusion. (1 mark)
    6. On all of the grounds related to confusion namely registrability, entitlement and distinctiveness, any evidence of actual confusion should be introduced, if available. (1 mark)

Question 13

You filed your local client's Canadian trademark application on August 3, 2010. Your client would now like to file a corresponding application in the United States, claiming priority from the Canadian application. (Total of 5 marks).

  1. What is the name of the international agreement that provides for claiming priority?
  2. What is the deadline to claim priority?
  3. What is the benefit of claiming priority?
  4. Can you still file a corresponding application in the United States after the deadline for claiming priority (without claiming priority)?
Answer to Question 13
  1. Paris Convention for the Protection of Industrial Property (or Paris Convention). (1 mark.
  2. The deadline to claim priority is February 3, 2011. (Will also accept "6 months from the filing of the priority application.") (1 mark).
  3. Benefit of claiming priority – the filing date of the priority application becomes the deemed filing date of the corresponding application (or something to that effect). (2 marks).
  4. Yes. (1 mark).

Question 14

You have been asked to perform an availability and registrability search in relation to a mark which one of your firm's longstanding clients has already adopted. Your client has provided you with a substantial amount of information concerning their marketing plans. Your search discloses a registered mark which you feel could potentially be viewed as confusing. On obtaining a copy of the registration page, you realize that your firm is the agent of record for that mark. (Total of 6 marks)

  1. Can you provide an opinion? (3 marks)
  2. Can you provide information to the owner of the registered trademark concerning the adoption of what you view as a confusing trademark, if they seek your advice? (3 marks)
Answer to Question 14
  1. No (1 mark). The candidate must indicate to the client that he or she is in conflict of interest and cannot provide an opinion (1.5 marks for the principle). If the client so wishes, one can provide the name of an agent in another firm to formulate the opinion (0.5 mark).
  2. No (1 mark). The information concerning the adoption of the confusing trademark was provided under circumstances, which would raise a duty of confidentiality. If the agent is a lawyer, issues of solicitor-client privilege also arise. No information or advice can be provided (1.5 marks for the principle). One can again, provide the name of an agent or lawyer in another firm to provide advice (0.5 mark).

Question 15

Match the following cases with the legal principle addressed therein. (Total of 10 marks)

Case

  1. Remington Rand Corp. v. Philip Electronics N.V. (1995), 64 C.P.R. (3d), 467 (FCA.)
  2. Mattel Inc. v. 3894207 Canada, Inc. (2006), 49 CPR (4th) 321 (SCC)
  3. Roadrunner Trailer Manufacturing Limited v. Roadrunner Trailer Co. (1984), 1 C.P.R. (3d) 443 (FCTD.)
  4. Fiesta Barbeques Limited v. General Housewares Corp. (2003), 38 C.P.R. (4th) 6 (FCTD.)
  5. Ontario Association of Architects v. Association of Architectural Technologist of Ontario (2002), 19 C.P.R. (4th) 417 (FCA)
  6. Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 (FCA)
  7. Novopharm Limited v. AstraZeneca AB (2002), 21 C.P.R. (4th) 289 (FCA)
  8. GWG Ltd. v. Registrar of Trademarks (1981), 55 C.P.R. (2d) 1 (FCTD)
  9. Clairol International Corp. v. Thomas Supply Equipment Co. (1968), Fox Pt. Cases 176 (FCTD)
  10. Promafil Canada Limitée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (FCA)

Legal Principle

  1. Cautious variations may be made to a trademark as it is used over the years, as long as the same dominant features are maintained.
  2. 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.
  3. 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.
  4. 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
  5. In section 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 Section 2 and of use in Section 4 of the Trade-marks Act.
  6. The material date for deciding a ground of opposition based on Section 12(1)(b) is the date of the trademark application.
  7. In order to be clearly descriptive, a mark must be more than merely suggestive of the character or quality of the wares or services in association with which it is used. The descriptive character must go a material composition or intrinsic quality of the goods or services and a test is one of immediate impression.
  8. In order to determine that an applicant is a public authority within the meaning of Section 9 of the Trade-marks Act 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.
  9. 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.
  10. In determining the sufficiency of a statement of opposition after evidence is filed, regard must be had to both the evidence and the pleadings in the statement of opposition in order to make a proper determination as to whether the applicant knows the case it has to meet.
Answers to Question 15
  • 1d;
  • 2i;
  • 3c;
  • 4f;
  • 5h;
  • 6e;
  • 7j;
  • 8g;
  • 9b;
  • 10a.

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