Archived — Trademark Agent Exam 2011 - Part B

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Questions and answers — (150 Marks)

Question 1 (Total of 38 marks)

Your firm represents Blue Lake Ltd., a Canadian corporation. Your client has been doing business under the trade-name Blue Lake since its incorporation on June 15, 2004 as a manufacturer of fishing equipment. In February 2011, Blue Lake expanded its activities to outerwear for fishermen by granting a license to ABC Clothing Inc.

Blue Lake has used the trademark BLUE LAKE in Canada since August 2004 in association with fishing equipment. ABC Clothing Inc. has used the trademark in Canada under the license in association with outerwear since March 2011.

BLUE LAKE owns the following registration and application in Canada:

  • Registration No. TMA123,456 for the trademark BLUE LAKE for "fishing equipment, namely hooks, lines, sinkers, floats, rods, reels, baits, lures, spear, nets, gaffs, traps, waders and tackle boxes". The application, which matured to registration No. TMA123,456 in September of 2005, was filed on September 19, 2004 based on use of the mark in Canada since at least as early as August 2004.
  • Application No. 1,222,222 for the trademark BLUE LAKE filed on January 10, 2011 on the basis of proposed use of the trademark in Canada in association with "outerwear, namely bibs, coveralls, jackets, vests, raingear and boots".

It is October 28, 2011. You have received instructions from your client to oppose an application for registration of the trademark OCEAN BLUE advertised in the Trademarks Journal of September 7, 2011. The application was filed on January 21, 2011 by Ocean Blue Inc. The trademark has been applied for registration as follows:

  • based on use in Canada by the Applicant since at least as early as June 2010 in association with "fishing equipment";
  • based on proposed use in Canada by the Applicant itself and/or through a licensee in association with "fishing clothing".

According to a summary investigation conducted by your client, Ocean Blue Inc. was incorporated on May 5, 2010.

1 a) —What is the due date to file the statement of opposition? (2 marks)

Answer

November 7, 2011 or 2 months from the date of advertisement. (2 marks)

1 b) — Since you want to obtain a copy of the file wrapper for the application, you intend to request a first extension of time to file the statement of opposition. Do you need the consent of the Applicant to obtain the extension of time for this purpose? What is the maximum length of the extension of time that can be requested for this purpose? (2 marks)

Answer

Do not need consent (1 mark). Three months. (or an extension of time until February 7, 2012) (1 mark)

1 c) — Draft each ground of opposition that could be properly raised against the application on the basis of the provided information. For each ground of opposition, you must identify the relevant sub-section(s) of the Trade-marks Act. (25 marks)

Answer

Given the information provided, the grounds of opposition identified hereafter must be alleged and the pleading must be properly stated. No mark is to be granted for other grounds of opposition that may be identified (for instance, non-conformity to s. 30(i) of the Act or 12(1)(b)). Also, the full sub-section of the Act should be identify to get the full mark (for instance, no mark for referring to s. 16 rather than s. 16(1)(a) or ½ mark for referring to s. 16(1) rather than s. 16(1)(a).

  • Pursuant to s. 38(2)(a) of the Act (1 mark) the application does not conform to the requirements of s. 30(a) of the Act (1 mark) in that the wares "fishing equipment" are not stated specifically in ordinary commercial terms. (2 marks, only 1 mark if omit specifically)

  • Pursuant to s. 38(2)(b) of the Act (1 mark) and s. 12(1)(d) of the Act (1 mark), the Mark is not registrable because it is confusing with the Opponent's trademark BLUE LAKE of registration No. TMA123,456 for "fishing equipment, namely hooks, lines, sinkers, floats, rods, reels, baits, lures, spear, nets, gaffs, traps, waders and tackle boxes". (2 marks – Not required to identify the statement of wares to get the full mark, but required to identify the registration No.)

  • Pursuant to s. 38(2)(c) (1 mark):

    • the Applicant is not the person entitled to the registration of the Mark pursuant to s. 16(1)(a) (1 mark) since at the date of first use claimed in the application, the Mark in association with fishing equipment was confusing with the trademark BLUE LAKE previously used in Canada by the Opponent in association with fishing equipment (2 marks – Grant only 1 mark if the Opponent's wares are not identified in the pleading either by identifying the wares or by referring to the registered wares - Need to be able to determine that the candidate knows that the Opponent does not benefit from prior use in association with fishing clothing).

    • the Applicant is not the person entitled to the registration of the Mark pursuant to s. 16(3)(a) (1 mark) since at the filing date of the application, the Mark for fishing clothing was confusing with the trademark BLUE LAKE previously used in Canada by the Opponent in association with fishing equipment. (2 marks - Grant only 1 mark if the Opponent's wares are not identified in the pleading either by the general category or by referring to the statement of wares in the Opponent's registration - Need to be able to determine that the candidate knows that the Opponent does not benefit from prior use in association with fishing clothing)

    • the Applicant is not the person entitled to the registration of the Mark pursuant to s. 16(3)(b) (1 mark) since at filing date of the application, the Mark for fishing clothing was confusing with the trademark BLUE LAKE of Application No. 1,222,222 filed by the Applicant on January 10, 2011 for "outerwear, namely bibs, coveralls, jackets, vests, raingear and boots". (2 marks – Not required to identify the statement of wares to get the full mark, but required to identify the application No.)

    • the Applicant is not the person entitled to the registration of the Mark pursuant to s. 16(1)(c) (1 mark) and s. 16(3)(c) (1 mark) since at all relevant material dates the Mark was confusing with the Opponent's trade-name Blue Lake previously used in Canada (2 marks).

  • Pursuant to s. 38(2)(d) of the Act (1 mark), the Mark is not distinctive in that it does not actually distinguish and is not adapted to distinguish the Applicant's wares from the wares of the Opponent having regard to the use of the Opponent's trademark and trade-name identified in the statement of opposition (2 marks).

1 d) — As evidence of use of its trademark BLUE LAKE in association with fishing equipment, your client has provided you with a sample of current packaging and copies of invoices showing sales of fishing equipment to retail stores of sporting goods in Canada. The trademark BLUE LAKE is displayed on the packaging. All the invoices, with the oldest one dated August 15, 2004, show the trademark beside the description of each item listed therein (for instance: Spear – Blue Lake). What further information should you obtain from your client with respect to the packaging and the invoices? (6 marks)

Answer — (2 marks for each of the following)
  • When was the current packaging first used?
  • Is the current packaging representative of the manner of use of the trademark since August 2004?
  • Did the invoices accompany the wares sold to the stores?

1 e) — Assume that the applicant elected to not file evidence in support of its application. In its written argument, the applicant submitted that the state of the register supports its position that there is no likelihood of confusion between the trademarks. The applicant filed with its written argument copies of 5 registrations, all owned by distinct entities, for trademarks involving the word "blue" in association with fishing equipment. You are attending the oral hearing that was requested by the applicant. What argument should you make with respect to the evidentiary value of the registrations filed with the written argument? (3 marks)

Answer

The registrations must be disregarded as state of the register evidence because they have not been filed as part of an affidavit or statutory declaration. (3 marks – No marks if the candidate does not justify why they should be disregarded. No marks for a discussion of state of the register evidence as it is not relevant in the context of the question)

Question 2 (Total of 11 marks)

2 a) — The practice notice Practice Notice in Trademark Opposition Proceedings (the Practice Notice) states that an applicant may request an interlocutory ruling on the sufficiency of the pleadings before filing and serving its counter statement. Give one significant reason, apart from the guideline in the Practice Notice, why you should not request an interlocutory ruling at the time you file the counter statement. (3 marks)

Answer

As soon as the counter statement is filed, the Opponent may file evidence. If the Opponent files evidence, even partial, before the Board's ruling, the Board will refuse the request for an interlocutory ruling. Once evidence has been filed issues concerning striking all or any portion of the opponent's pleadings will only be considered at the decision stage. (3 marks only if the candidate recognized the principle)

2 b) — What is the material date for assessing a ground of opposition based upon non-conformity to s. 30(e) of the Act. (2 marks)

Answer

November 25, 2010. (or the filing date of the application) (2 marks)

2 c) — You have been served with a copy of the Opponent's evidence, which includes one affidavit sworn by the Opponent's President. The affiant states that he is familiar with the provisions of the Trade-marks Act, including s. 6(5). He goes on to opine that the use of the Applicant's trademark would cause confusion with the Opponent's trademark. Will the Registrar afford any significant weight to the affiant's opinion? Why? (3 marks)

Answer

No (1 mark). It goes to the issue to be decided by the Registrar based on the particular facts of the case. (2 marks only if the candidate recognized the principle)

2 d) — The proceeding is at the evidentiary stage. Your deadline to file and serve the Applicant's evidence expires tomorrow. Assume that the only evidence to be filed is an affidavit from the Applicant's President. You do not have any draft of this affidavit as you are still waiting for information from your client. As you have already obtained an extension of time corresponding to the benchmark of three months set forth in the Practice Notice, you have advised your client that the extension of time is unlikely to be granted. Nonetheless, your client instructs you to request the extension of time. Since you expect your request to be denied, what is the action you can take to avoid the consequences of s. 38(7.1) of the Act when requesting the extension of time? (3 marks)

Answer

Request in the alternative that the letter be considered as the Applicant's statement that it does not wish to submit evidence pursuant to Rule 42 of the Regulations. (3 marks) (no marks if answer mentions request for leave under Rule 44 as the only alternative since it does not avoid consequence of 38(7.1))

Question 3 (4 marks)

List the four circumstances that are considered by the Registrar when deciding whether it is in the interests of justice to grant a request for leave pursuant to Rule 44(1) of the Trade-marks Regulations.

Answer

The candidate must recognize that Rule 44(1) relates to leave to file further evidence.

  1. The stage the opposition proceeding has reached; (1 mark)
  2. Why the evidence was not filed earlier; (1 mark - No mark if refers to "amendment")
  3. The importance of the evidence; (1 mark - No mark if refers to "amendment")
  4. The prejudice which will be suffered by the other party. (1 mark – No mark if refers to "the party" or ½ mark granted if refers to "the parties")

Question 4 (4 marks)

List two of the four circumstances identified in the practice notice Practice Notice in Trademark Opposition Proceedings as exceptional circumstances that may justify the grant of a further extension of time to comply with the cross-examination order.

Answer — (2 marks for each circumstance)

Two of the following circumstances must be identified. No mark for any other circumstances.

  1. Waiting for the transcript of a recent cross-examination;
  2. Waiting for answers to undertakings given during a recent cross-examination;
  3. The need to schedule multiple cross-examinations;
  4. The terms of the order apply to a recently substituted affidavit or statutory declaration.

Question 5 (3 marks)

Assuming that settlement discussions are ongoing, identify the three requirements that must be satisfied for an opponent to obtain up to nine months as an extension of time, amounting to a cooling-off period, to file its Rule 41 evidence.

Answer — (1 mark for each requirement)
  1. Payment of the prescribed fee of 125$;
  2. Consent of the applicant;
  3. The opponent has not already been granted an extension of time amounting to a cooling-off period.

Question 6 (Total of 35 marks)

You represent Museum Products Inc., the owner of Canadian trademark Registration No. TMA555,555, for the trademark MUSEUM, registered January 1, 2000. The trademark registration covers the following wares and services:

Wares:

  1. Picture frames;
  2. Vases;
  3. Musical instruments;
  4. Pens, pencils, erasers;
  5. Eyeglasses;
  6. Men's, women's and children's watches;
  7. Computer software for use in artwork database management;
  8. Art magazines;
  9. Table lamps;
  10. Stereo headphones.

Services:

  1. Rental of artwork;
  2. Watch repair.

A section 45 Notice issued on September 30, 2011.

The affidavit which you filed on behalf of your client appears below. Please provide your client with your opinion on whether each of the wares and services will be maintained in the registration or will be expunged and explain why. Base your opinion solely on the evidence as filed and relevant principles of law. Specific cases do not need to be cited. Marks will not be awarded for citing case law without the relevant principle. Do not assume any facts not in evidence.

AFFIDAVIT OF JANE SMITH

I, Jane Smith, of the City of Ottawa, Ontario, hereby MAKE OATH AND SAY AS FOLLOWS:

  1. I am the President of Museum Products Inc. (hereinafter "MPI" or "My Company").

  2. From January 2000 to June 2007, My Company sold picture frames marked with the trademark MUSEUM on the back of the frame to retail stores for resale to the public. In June 2007, there was a fire at My Company's picture frame manufacturing plant, and we were forced to cease production of the frames at that time. We have been unable since then to find a suitable source for the picture frames. Although we are not currently looking at any other manufacturing plants or other sources of picture frames, we do hope to find a manufacturer in China sometime in the next couple of years so that we can start shipping picture frames back to Canada in 2013 or 2014.

  3. My Company has sold vases to retail florists since January 2000. The trademark MUSEUM does not appear anywhere on the vases for aesthetic purposes. However, the vases are shipped to the retail florists in crates marked with the trademark MUSEUM as well as My Company's name. The florists can then unpack the vases, fill them with flowers for sale to the public. Now shown to me and marked as Exhibit 1 to this my affidavit is a photograph of a sample crate as well as a representative invoice of a sale to a florist in Canada dated December 31, 2010 (the Exhibit is not included in this examination. However, assume that it clearly shows a crate with the trademark MUSEUM in large letters across the front, as well as an invoice to a florist in Canada).

  4. MPI sells one only type of musical instrument, a limited edition grand piano that is only available by special order. We have regularly advertised these on our website, but since the date of registration we have only sold two, one of which was in May 2008. On the same day that we received the Section 45 notice from the Trademarks Office, we delivered our second piano to a customer in Ottawa. The trademark MUSEUM is prominently displayed on the piano. Now shown to me and marked as Exhibit 2 is a photograph of the piano that was just delivered that shows the trademark MUSEUM on it, as well as a copy of the purchase order for the customer (the Exhibit is not included in this examination. However, assume it clearly shows a picture of the piano with the trademark MUSEUM prominently displayed on it, as well as a purchase order confirming a Canadian address for the customer).

  5. MPI currently sells pens and replacement ink refill for the pens, with the trademark MUSEUM marked on the pens, and did so throughout the relevant period of September 30, 2008 to September 30, 2011. We originally sold a pencil/eraser combination product with the trademark MUSEUM on it, but demand for this dropped and have not sold those since 2006. Now shown to me and marked as Exhibit 3 to this my affidavit is a photograph of a sample pen showing the trademark MUSEUM marked on the pen as well as invoices showing sales of the pen to a customer in Canada, dated December 31, 2010 (the Exhibit is not included in this examination. However, assume it clearly shows a picture of the pen with the trademark MUSEUM clearly shown on it as well as an invoice).

  6. MPI has sold 200 pairs of MUSEUM eyeglasses per year within the relevant period of September 30, 2008 to September 30, 2011. Unfortunately, no samples of the product are available to show a picture of the eyeglasses because we are currently out of stock.

  7. From September 2005 to date My Company has approximately $100,000.00 in sales of men's, women's and children's wristwatches in Canada in association with the trademark MUSEUM. Now shown to me and marked as Exhibit 4 to this my affidavit is a photograph of a men's watch showing the trademark MUSEUM marked on the face of the watch (the Exhibit is not included in this examination. However, assume it clearly shows a picture of the watch with the trademark MUSEUM clearly shown on the face of the watch).

  8. My Company operates a division, Museum Artwork that rents artwork to individuals and professional firms, such as law firms and accounting firms. My Company developed a software program in order to manage our artwork database. The software is used internally between My Company and the Museum Artwork division to run the rental business. The trademark MUSEUM is clearly shown on the computer screen of the user as soon as the program is launched. Now shown to me and marked as Exhibit 5 to this my affidavit is a screenshot of the program showing the trademark MUSEUM. The screenshot is dated December 31, 2010, within the relevant period (the Exhibit is not included in this examination. However, assume it clearly shows a screenshot of the program dated December 31, 2010 with the trademark MUSEUM clearly shown on it).

  9. My Company publishes a magazine entitled "Art World" and in it has a regular section entitled "Museum" in order to discuss the latest exhibitions and showings at major museums across Canada. Now shown to me and marked as Exhibit 6 to this my affidavit is a copy of a column from the magazine dated December 31, 2010, distributed in Ottawa and showing information about Ottawa museums (the Exhibit is not included in this examination. However, assume that it shows a copy of an article dated December 31, 2010 with the title "Museum").

  10. Throughout the period of September 30, 2008 to September 30, 2011, my Company's table lamps have been manufactured at a facility in China and marked with the trademark MUSEUM on the base of the lamp. The lamps have then been shipped directly from the manufacturer to distributors in Canada for further sale to retail stores in Canada. Now shown to me and marked as Exhibit 7 to this my affidavit is a photograph of a sample lamp showing the trademark MUSEUM marked on the base as well as an invoice dated December 31, 2010 from one of My Company's distributors to a retail store in Canada (the Exhibit is not included in this examination. However, assume that it shows an invoice dated December 31, 2010 and a picture of a table lamp with the trademark MUSEUM clearly shown on it).

  11. MPI licenses the trademark MUSEUM to the well-known headphone manufacturer Crystal Clear Inc., because Crystal Clear Inc. makes the best headphones in the industry. All of the headphones are clearly marked with the trademark and there is a notation that the trademark is owned by Museum Products Inc. and used under license. Crystal Clear Inc. has advised that it has sold approximately $50,000.00 worth of Museum stereo headphones between September 2008 and September 2011 exclusively to customers in Canada. Now shown to me and marked as Exhibit 8 to this my affidavit is a photograph of the headphones clearly showing the trademark MUSEUM on them, together with several sample invoices from Crystal Clear Inc. to customers in Canada between September 2008 and September 2011 (the Exhibit is not included in this examination, however, assume that it shows invoices and a photograph of the headphones with the trademark MUSEUM clearly shown on them).

  12. My Company's artwork rental business is conducted by a separate division, namely Museum Artwork. This is a separate division but still within the same company as MPI. My Company rents artwork to individuals and to professional firms such as law firms and accounting firms. For rental to individuals, it is performed under the name "MUSEUM at home", and for the professional firms it is under the name "MUSEUM at the office". Between the period of September 30, 2008 and September 30, 2011, we had approximately 500 personal customers and approximately 1,000 professional firms as customers across Canada. Now shown to me and marked as Exhibit 9 to this my affidavit are sample order forms and rental agreements dated between September 30, 2008 and September 30, 2011 to various customers in Canada (the Exhibit is not included in this examination. However, assume that it shows invoices and rental agreements with "MUSEUM at home" and "MUSEUM at the office" clearly labeled on them).

  13. As part of My Company's sale of its Museum watches, we offer free repairs for life to any of our customers. Under this program, a customer can ship the watch to us, at our location in Canada, and we will repair it and then ship it back to the customer. Alternatively, a customer can take it to one of our authorized dealers in Canada with the invoice showing that it is a genuine Museum watch, and the dealer will repair it at our cost. This watch repair program is explained in point of sale advertising material for our Museum watches. Between the period of September 30, 2008 to September 30, 2011, I estimate we repaired approximately 1,000 Museum watches for customers in Canada. Now shown to me and marked as Exhibit 10 to this my affidavit is a sample of the point of sale advertising dated December 31, 2010 explaining this program (the Exhibit is not included as part of this examination. However, assume that it clearly shows a point of sale advertising material marked with the trademark MUSEUM and explaining the watch repair program).

Answer
  1. Picture frames will likely be expunged from the registration (1 mark). No use in relevant period. Fire at manufacturing plant beyond owner's control but affidavit fails to demonstrate a serious intention to resume use shortly. (2 marks)

  2. Vases will be maintained in the registration (1 mark). Use anywhere in chain of commerce constitutes use. (2 marks)

  3. Musical instruments will be maintained in the registration (1 mark). The use on the Notice date will be sufficient. Evidence of a single sale, 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 trade mark. (2 marks)

  4. Registration will be maintained for pens but expunged for pencils, erasers (1 mark). Registrant must show use in association with all of the wares within the group or state that the one used is representative of the group. (2 marks)

  5. Eyeglasses will be expunged from the registration (1 mark). The affidavit must show use of the trademark and not just provide a bald assertion or statement of use. (2 marks)

  6. Watches will be expunged from the registration (1 mark). The evidence must clearly establish use within the relevant period. It is ambiguous because it does not specifically refer to use within the relevant period. Ambiguities as to whether the trademark has been used within the relevant period or outside of the relevant period must be resolved against the registrant. (2 marks)

  7. Computer software will be expunged from the registration (1 mark). There must be use of the trademark in association with wares to a third party. Internal use only does not constitute trademark use. (2 marks)

  8. Artwork magazines will be maintained in the registration (1 mark). Use of a trademark in association with a column within a magazine constitutes use of the trademark in association with magazines. (2 marks)

  9. Table lamps will be maintained in the registration (1 mark). A sale by a distributor is the same as a sale by owner and does not require any license. (2 marks)

  10. Headphones will be maintained in the registration (1 mark). The trademark has clearly been in use by a licensee. Although the affidavit does not provide a copy of the license, section 50(2) of the Trade-marks Act provides that the public notice means that unless the contrary is proven, the use is licensed and the character of quality of the wares or services is under the control of the owner. (2 marks)

  11. (no marks for result, expunged or maintained) Deviation of trademark to be assessed. Test is whether the trademark as used is sufficiently close to the trademark as registered so as to sustain registration, by comparing the two and determining whether the differences are so unimportant that an unaware purchaser would be likely to infer that both trademarks, in spite their difference, identify the goods having the same origin. (2 marks)

  12. Watch repair services will be maintained in the registration (1 mark). Services performed ancillary to the sale or use of wares are sufficient to support the services on their own. (2 marks)

Question 7 (2 marks)

You represent the Requesting party in a section 45 proceeding. After a decision from the Registrar maintaining the registration, you appeal to the Federal Court, and you have evidence that the trademark owner fraudulently provided evidence of use of the trademark before the Trademarks Office by doctoring the dates on some of its documents. Can you file evidence of this fraud with the Federal Court? Why or why not?

Answer

No. Requesting party cannot file evidence even in case of fraud. (2 mark)

Question 8 (2 marks)

John Jones and Jane Smith run a business together, make all decisions together and share all profits. They are not incorporated. They want to file an application today to register their business' primary trademark. What should be the name of the applicant? (2 marks)

Answer

John Jones and Jane Smith, in partnership or joint venture. (2 mark)

Question 9 (Total of 4 marks)

Your United States-based client filed a United States trademark application for GOSH in association with pens eight months ago. The application became abandoned by failing to respond to an office action. Your client filed a new United States application for GOSH in association with pens one month ago. Your client is selling GOSH pens in the United States. You file a corresponding application in Canada today.

  1. Can you claim priority from the new United States application? Why or why not? (2 marks)

  2. Can you include a s. 16(2) basis for registration in the Canadian application relying on use and the eventual registration of the mark in the United States? Why or why not? (2 marks)

Answer

For (a) No. Can only claim priority from the first-filed application (2 marks for explanation. No marks for "no" on its own.)

For (b) Yes. Need not be first filed foreign application. (2 marks for explanation. No marks for "yes" on its own.)

Question 10 (2 marks)

John is a non-lawyer trademark agent working on his own. John's client has just received a cease and desist letter alleging trademark infringement. John's client asks John for an opinion as to the likelihood of success. List two important reasons why John should not provide the opinion.

Answer — (1 mark for any 2 of the following, or other important reason)
  1. John is not qualified as a lawyer.

  2. Because John is not a lawyer, the opinion would not benefit from solicitor-client privilege.

  3. John's insurance likely does not cover John in the event that he provides an opinion he is not qualified to provide.

Question 11 (4 marks)

Your client is a US-based multi-national company with factories in a number of countries. Your client filed its first application for WIDGET in association with pencils last week in Spain. No other applications have been filed anywhere. Your client is currently only selling WIDGET pencils in South Africa. Your client now asks you to file a corresponding Canadian trademark application.

  1. Can you claim priority from the Spanish application? (choose one)
    1. yes
    2. no
    3. You need more information. What information do you need?
  2. Can you include a s. 16(2) basis for registration in the Canadian application? (choose one)
    1. yes
    2. no
    3. You need more information. What information do you need?
Answer

For (a): the answer is (iii). You need to know if the client has a real and effective industrial or commercial establishment in Spain. Will accept – you need to know if the client has a factory in Spain. (2 marks for explanation. No marks for choosing (iii) if explanation is wrong or missing.)

For (b): the answer is (iii). You need to know if the client has a real and effective industrial or commercial establishment (factory) in Spain. (2 marks for explanation. No marks for choosing (iii) if explanation is wrong or missing. No marks if answer specifies that must have a real and effective industrial or commercial establishment (or factory) in both Spain and South Africa.)

Question 12 (7 marks)

You are the requesting party in a Section 45 proceeding. You lose. The appeal period has just expired. However, you still want to expunge the mark. (a) Will the Registrar grant your request to immediately commence a new Section 45 proceeding, why or why not? (b) Are other options available to cancel the registration? (c) If so, in what venue(s) and what are the four main bases upon which you could argue the registration should be cancelled?

Answer
  1. No because the final decision was rendered within the last 3 years. (1 mark for complete answer. No marks otherwise.)

  2. Can initiate s. 57 proceedings. (1 mark)

  3. In the Federal Court (1 mark) Must prove (a) tm not registrable, (b) tm not distinctive (c) the tm has been abandoned or (d) the applicant for registration was not the person entitled. (4 marks)

Question 13 (3 marks)

You are preparing a statement of opposition. The application you are opposing is based on use in Canada since at least as early at 2004. However, you learn that the applicant purchased the mark in 2006 and has failed to name the predecessor-in-title. Can you base the opposition on the failure to name the predecessor-in-title? If so, what subsection(s) of the Act will you rely upon in your ground(s) of opposition?

Answer
  • Yes. (1 mark)

  • s. 38(2)(a) (1 mark)

  • s. 30(b) (1 mark)

Question 14 (5 marks)

You filed an application for SHAZ for Granny Smith apples. In the first Examiner's Report, the Examiner cited registration TMA555,555 in the name of Acme Inc for SHAZ for Macintosh apples. The Examiner also cited official mark No. 902,902 in the name of the Government of Canada for the mark SHAZ in association with apples.

You have obtained letters of consent from the owner of the registration and from the owner of the official mark which you file in response to the Examiner's Report. Will the letters of consent be sufficient to overcome each of the citations, why or why not?

Answer

The examiner will accept the letter of consent from the owner of the official mark and withdraw the objection. (1 mark) Section 9(2). (1 mark)

The examiner will not withdraw the objection to the registration (1 mark) – since the two marks are confusing as defined (1 mark) and the Office is not bound by the consent. (1 mark)

Question 15 (6 marks)

Draft a ground of opposition alleging that the trademark depicted in the Applicant's application infringes the opponent's copyright.

Answer

The Opponent is the owner of the copyright in the design shown in the Applicant's trademark (1 mark). Accordingly, pursuant to s. 38(2)(a) of the Trade-marks Act (1 mark) and contrary to s. 30(i) of the Act (1 mark), the Applicant could not have been satisfied that it was entitled to use the Trademark in Canada (1 mark) at the date of filing of the Application (1 mark) since such use of the Applicant's trademark infringed the Opponent's copyright in the design contrary to the Copyright Act, or was unlawful (1 mark).

Question 16 (6 marks)

George created a two-dimensional design which became his famous trademark in association with shirts and registers the mark in association with shirts.

Without George's consent, Dan uses the same mark in association with shirts and uses a similar mark in association with pants.

  1. Based only upon the facts given, specify on which sections of the Trade-marks Act George can rely to sue Dan in respect of shirts? (4 marks)

  2. Based only on the facts given, specify on which sections of the Trade-marks Act George can rely to sue Dan in respect of pants? (1 mark)

  3. Based only on the facts given, what is the main non-trademark cause of action against Dan? (1 mark)

Answer
  • Answer for (a): sections 7, 19, 20, 22. (1 for each of these sections. No marks for other sections)

  • Answer for (b): sections 7, 20, 22. (1 mark. No marks for other sections) (No marks if s. 19 is listed)

  • Answer for (c): copyright infringement. (1 mark)

Question 17 (Total of 10 marks)

Match each principle with the appropriate case.

Principles Cases

1) 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.

a) Porter v. Don the Beachcomber (1966), 48 CPR 280 (Ex. Ct. of Canada)

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

b) Scott Paper Ltd v Smart & Biggar, 2008 FCA 129, 65 CPR (4th) 303.

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

c) Dion Neckwear Ltd. v. Christian Dior, S.A. (2002), 20 CPR (4th) 155 (FCA).

4) With respect to special circumstances of non-use, the special circumstances 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".

d) Veuve Clicquot Ponsardin Maison Fondee en 1772 v. Boutiques Cliquot Ltee (2006), 49 CPR (4th) 401 (SCC).

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

e) Masterpiece Inc. v. Alavida Lifestyles Inc. (2011), Supreme Court of Canada

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

f) Manhattan Industries Inc. v. Princeton Manufacturing Ltd. (1971), 4 CPR (2d) 6 (Fed TD)

7) Common law use of a confusing trademark anywhere in Canada prior to the relevant date is sufficient to invalidate a registration.

g) Orkin Exterminating Co v Pestco Co of Canada, (1984) 80 CPR (2d) 153, 47 OR (2d) 265 (Ont HC). Aff'd 5 CPR (3d) 433 (Ont CA).

8) In a Section 45 proceeding, in order 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.

h) Effigi Inc. v. Canada (Attorney General) (2004), 35 CPR (4th) 307 (FCA)

9) 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.

i) Remington Rand Corp v Philips Electronics NV, (1995) 191 NR 204, 64 CPR (3d) 467 (Fed CA).

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

j) John Labatt Ltd. v. Ranier Brewing Co. (1984), 80 CPR (2d) 228 (FCA)
Answer — (2 marks for each principle with the appropriate case)
  1. g)
  2. h)
  3. i)
  4. b)
  5. f)
  6. c)
  7. e)
  8. j)
  9. d)
  10. a)

Question 18 (Total of 4 marks)

Dan has used the trademark BOOBOO in Vancouver in association with pencils since 2007. His trademark has not acquired any reputation beyond British Columbia. Ted filed an application to register the same mark in 2010 in association with pens based on use in Canada since 2010. Ted has only used his trademark in Montreal and Ted's trademark has not acquired any reputation beyond Quebec.

  1. If Dan opposes on the basis of confusion, and both parties prove their respective sales and reputations, who will prevail in the Opposition and why? (2 marks)
  2. If Dan sues for passing off, will he succeed, why or why not? (2 marks)
Answer
  1. Dan will prevail in the opposition in view of his prior use of a confusing mark. (2 marks. No marks if reasoning is wrong.)
  2. Dan will not succeed in an action for passing off, since his mark has no prior reputation in the geographic area where Ted is selling. (2 marks. No marks if reasoning is wrong.)

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