Archived — Trademark Agent Exam 2012 - Part B
Questions and answers — (150 Marks)
Question 1 (4 marks)
Your client gives away pens bearing its trademark to promote its flower business. It doesn't have any plans to sell pens. The pens are a great promotion and the client sells a huge number of flowers as a result. The client also gives away pencils bearing the trademark, in the hopes that the recipients will appreciate the pencils and buy them in the future. However, it has not yet sold any pencils.Do these facts constitute use of the trademark in association with pens? Why or why not? With pencils? Why or why not?
These facts do not constitute use in association with pens (1 mark) because the client doesn't intend to sell pens (1 mark). These facts constitute use in association with pencils (1 mark) because the client hopes that the giveaways will generate future sales of pencils (1 mark.)
Question 2 (3 marks)
List the main factors required to establish passing off.
Goodwill or reputation (1 mark for either), misrepresentation or confusion (1 mark for either), actual damage (0.5 marks) or potential damage (0.5 marks).
Question 3 (3 marks)
Provide three entirely different scenarios where a trademark registration will not have effect across Canada.
A territorially restricted registration obtained with 12(2) evidence where the evidence only proves distinctiveness in certain provinces (1 mark. Need not specify section as long as it's clear the candidate is referring to 12(2) evidence.); a distinguishing guise registration where there was only evidence of distinctiveness during prosecution for certain provinces (1 mark); a registration with Newfoundland carved out to overcome a citation of a Newfoundland registration during prosecution or a Newfoundland registration (1 mark for either).
Question 4 (2 marks)
Jim sells chairs. No trademark appears on the chairs. However, Jim's trademark appears on the invoice. Jim's trademark is the same as his trade name. Jim wants to assert that the display of the trademark on the invoice constitutes use of the trademark in association with chairs, and is not just trade name use. List two important factors that will determine whether or not a court will agree that the depiction of the mark on the invoices constitutes use in association with chairs.
The invoice is provided to the customer at the time of the transfer of possession of the chairs. (1 mark) One mark is available for either one of the following two propositions: On the invoice, the trademark is distinguished from the surrounding text; or the mark appears beside the reference to chairs in the invoice. (1 mark for either)
Question 5 (29 marks)
Your client, LOL, Inc., is the owner of Canadian trademark registration No. TMA111,222 for the trademark GRANOLA PUNCH for cereals, energy bars and meal replacement bars. The application was filed on February 1, 2005, based on use of the mark in Canada since at least as early as 2000.
On January 11, 2013, OMG, Inc. files an application for the trademark GRANOLA LUNCH for granola based snack bars. The application is based on use of the mark in Canada by the applicant since at least as early as December 20, 2005. The mark is advertised in the Trademarks Journal of May 1, 2013.On Monday, July 8, 2013, you receive instructions from your client to oppose the application for registration of the trademark GRANOLA LUNCH. Your client explains that he was away on vacation, but in view of an accident, he has just returned to work. He mentions that, while on vacation in Banff, he purchased a GRANOLA LUNCH granola bar and noticed on the wrapping that the manufacturer was identified as OMG Enterprises.
5 a) — On what day would you have had to file the statement of opposition in the Trademarks Office? Why? (2 marks)
July 2, 2013 (will also accept first day after July 1, 2013, that CIPO's offices are open) (1 mark for either). Because July 1, 2013 is a statutory holiday and CIPO's offices are closed (1 mark)
5 b) — What do you need to request in order for the Registrar to accept the statement of opposition? What do you need to do in order for the request to be granted? Cite any relevant provision of the Trade-marks Act. (3 marks)
Request a s. 47(2) retroactive extension of time to file a statement of opposition (1 mark) (no marks given for citing s. 38(1) of the Trade-marks Act). In order for the request to be granted, you must provide reasons justifying the delay (1 mark) and pay the required fee. (1 mark)
5 c) — Not including section 30(a) or section 30(i) of the Trade-marks Act, identify the five most relevant grounds of opposition in point form that could be properly raised against the application on the basis of the provided information. (5 marks)
For each ground you must identify all the relevant provisions of the Trade-marks Act. (5 marks)
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. Also, all sub-sections of the Trade-marks Act should be identified to get the full mark.
- Pursuant to s. 38(2)(a) of the Act (.5 marks) the application does not conform to the requirements of s.30(b) of the Act (.5 marks) in that the mark was not used by the applicant OMG, Inc. since December, 2005. (1 mark)
- Pursuant to s. 38(2)(b) of the Act (.5 marks), the mark is not registrable pursuant to s. 12(1)(b) of the Act (.5 marks) because it is either clearly descriptive or deceptively misdescriptive of the character or quality of the applied for wares. (1 mark)
- Pursuant to s. 38(2)(b) of the Act (.5 marks), the mark is not registrable pursuant to s. 12(1)(d) of the Act (.5 marks) because it is confusing with the opponent's registered mark GRANOLA PUNCH, Registration No. TMA111,222. (1 mark)
- Pursuant to s. 38(2)(c) of the Act (.5 marks), the applicant is not the person entitled to registration of the mark pursuant to s. 16(1)(a) of the Act (.5 mark) because it is confusing with the opponent's GRANOLA PUNCH mark that has been previously used in Canada by the opponent in association with cereals, energy bars and meal replacements. (1 mark)
- 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 opponent's GRANOLA PUNCH trademark. (1 mark)
5 d) — Set out the material dates for each of the grounds of opposition which you have identified. (5 marks)
No marks to be granted for other grounds that may have been identified in the answer to 6(c)
s. 30(b) – filing date of the application or January 11, 2013 (1 mark)
s. 12(1)(b) – filing date of the application or January 11, 2013 (1 mark)
s. 12(1)(d) – date of decision (1 mark)
s. 16(1)(a) – applicant's date of first use or December 20, 2005 (1 mark)
s. 38(2)(d) – filing date of the opposition or July 2, 2013 (or first day after July 1, 2013, that CIPO's offices are open) (1 mark)
5 e) — While preparing your written argument, you realize for the first time that your client's evidence shows that they also own and have used the mark GRANOLA BRUNCH for granola based snack bars since 2004. What four circumstances are considered by the Registrar when deciding whether it is in the interests of justice to grant leave to file an amended statement of opposition pursuant to Section 40 of the Trade-mark Regulations? Do you think your request for leave will be granted? Explain why or why not, applying the facts as provided. (9 marks)
There is no right or wrong answer to this question. Marks will be given to the application of the facts to the relevant circumstances.
When deciding whether to grant leave to amend a statement of opposition, the Registrar considers the following circumstances:
- the stage the opposition proceeding has reached (1 mark)
the opposition proceeding is at a relatively late stage or the evidence stage is closed or the parties are now writing written arguments (any of these answers for 1 mark)
- why the amendment was not filed earlier (1 mark)
the opponent does not have a good reason why the amendment was not made earlier (.5 marks) as he or she should have been aware of his or her client's other mark (.5 marks)
- the importance of the amendment (1 mark)
the amendment is important because this additional mark may also be found to be confusing with the applicant's mark (1 mark)
- the prejudice which will be suffered by the other party (1 mark)
given the late stage in the proceedings, the prejudice that would be suffered by the applicant is that they may have to file an amended counter statement, request leave to file additional evidence, and/or request leave to file additional written arguments and suffer undue delay in the proceedings (2 marks for at least 2 examples)
Question 6 (7 marks)
Today is Wednesday, November 2, 2012. Your deadline to file and serve your client's section 42 evidence is Thursday, November 3, 2012. You instruct your assistant to file your client's evidence with the Registrar today, and include the letter notifying the Registrar of the manner of service. You also instruct your assistant to serve the evidence on the opponent by registered mail. The next day (i.e. November 3, 2012), your assistant confirms that she properly filed the evidence with the Registrar on November 2, 2012. However, instead of serving the opponent by registered mail, she informs you that she mailed your client's evidence to the opponent by placing it in the Canada Post red street mailbox outside your building that night.
6 a) — Assuming that the opponent has not properly been served with the applicant's evidence, what two different steps could you take on November 3, 2012, to remedy the situation? Indicate the relevant provisions of the Trade-marks Act or Trademark Regulations. (3 marks)
- call the other side and ask for their consent (1 mark) to serve the evidence by another means prior to the deadline (s. 37(1)(d) of the Trade-mark Regulations) (1 mark)
- request a s. 47(1) extension of time to properly serve the opponent (1 mark)
6 b) — You learn later on November 3, 2012, that your assistant had the opponent's consent to serve the evidence by regular mail. The opponent received your client's evidence on November 4, 2012. What date is the effective date of service? Explain why citing the relevant provision of the Trademarks Act. (2 marks)
The effective date of service is November 4, 2012 (1 mark) because that is the date of delivery of the evidence to the opponent (s. 37(5) of the Trademark Regulations). (1 mark)
6 c) — What is the potential consequence to an applicant for failing to properly serve its evidence prior to the deadline? What is the relevant provision of the Trade-marks Act? (2 marks)
The application shall be deemed to have been abandoned (1 marks) pursuant to s. 38(7.2) of the Trade-marks Act (1 mark)
Question 7 (18 marks)
On October 23, 2001, ABC, Inc. (the Applicant) applied to register the trademark MEMORIES 4 U based on use in association with the operation of an online interactive computer website for customers to customize and order photo gift products since at least as early as Sept. 1, 1999. You represent ABC, Inc.
XYZ, Inc. (the Opponent) is the owner of Canadian trademark registration No. TMA555,888 for the trademark MEMORIES R US for picture frames and providing electronic greeting cards via the Internet based on use in Canada since at least 1990. One of the grounds of opposition pleaded by the opponent in its statement of opposition is that the applied for mark is not registrable pursuant to section 12(1)(d) because it is confusing with the opponent's registered mark MEMORIES R US, Registration No. TMA555,888.
One of the other grounds of opposition pleaded by the Opponent in its statement of opposition is that the Applicant has not used the mark MEMORIES 4 U in association with the applied for services since the date claimed. As part of its evidence, the trademark firm representing the Opponent files and serves the affidavit of Ms. Smith, one of the firm's lawyers. Ms. Smith states that she conducted an Internet search on May 31, 2005, for ABC, Inc.'s trademark MEMORIES 4 U and "found no evidence of use of that trademark as of the date of first use alleged".
7 a) — What argument would you make at the oral hearing regarding the admissibility of Ms. Smith's affidavit? ( 4 marks)
I would argue that this affidavit is inadmissible/or little weight can be given to it (1 mark) because Ms. Smith is an employee of the opponent's agent (1 mark). She is therefore not an objective witness giving unbiased evidence (1 mark) about a contentious issue (1 mark).
7 b) — Identify the leading case to support your argument in part (a). (1 mark)
Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada
7 c) — What are two ways the Opponent could have evidenced its client's MEMORIES R US trademark registration in support of its s. 12(1)(d) ground of opposition? Cite relevant provisions of the Trade-marks Act where appropriate. (4 marks)
The Opponent could have filed a certified copy (1 mark) of its trademark registration for MEMORIES R US pursuant to s. 54 of the Trade-marks Act. (1 mark).
A copy of or particulars of the registration could also have been filed by way of affidavit or statutory declaration. (2 marks for either)
7 d) — If the Opponent did not evidence its client's registration for the MEMORIES R US trademark, can the Registrar still have regard to it? Why or why not? (3 marks)
Yes (1 mark), the Registrar does have the discretion to check the register in order to confirm the existence of the registration (1 mark) identified by the opponent in the statement of opposition (1 mark).
7 e) — The Opponent's agent also filed and served the affidavit of Mr. Jones, President of XYZ, Inc. Mr. Jones deposes that he used the Way Back Machine ( a web site which contains a digital library of Internet web sites) in order to access the Applicant's website as it had existed on September 1, 1999, and could not find any use of the Applicant's trademark.
Will the evidence of the Way Back Machine be given any weight by the Registrar in the opposition proceeding? Explain why or why not. (2 marks)
Yes (1 mark), evidence from the Way Back Machine has been generally found to be reliable (1 mark).
7 f) — The Opponent's agent also filed and served the affidavit of Mr. Chang, XYZ, Inc.'s Vice-President. Attached to Mr. Chang's affidavit as exhibits are seven advertisements for the Opponent's MEMORIES R US picture frames that appeared in the Globe and Mail, a national daily newspaper, and the Perth Weekly, a weekly newspaper from a small town in Ontario, between April and June, 2009. Can the Registrar take judicial notice of the general circulation in Canada of either of these newspapers? Explain why or why not. (4 marks)
Yes, the Registrar can take judicial notice of the general circulation in Canada of the Globe and Mail (1 mark) because it is a major daily Canadian newspaper recognized by a significant number of Canadians (1 mark). No, the Registrar cannot take judicial notice of the general circulation in Canada of the Perth Weekly (1 mark), because it is a weekly newspaper from a small town and would not be known by a significant number of Canadians (1 mark).
Question 8 (32 marks)
Your client, Relite Cinemas Inc., is the owner of Canadian trademark registration TMA456,789 for the trademark RELITE, registered May 10, 2005 in association with the following goods and services:
- television sets and video projectors
- surround sound processors
- DVD players; optical disc players
- polo shirts; baseball caps
- computer software for electronic tablets
- magazines relating to audio and video
- 3D glasses
- MP3 docking stations
- home theater design services
- home theater installation services; audio and video calibration services
- audio and video equipment rental services
A Notice pursuant to Section 45 issued on June 20, 2012.
The following affidavit was filed on behalf of your client. Provide an opinion to your client in point form on whether each of the goods and services covered by the registration will be maintained or expunged and explain why. Base your opinion on relevant principles of law. Case law does not need to be cited and do not assume any facts not in evidence.
AFFIDAVIT OF RAY ADAMS
I, Ray Adams, of the City of Toronto, Ontario, hereby MAKE OATH AND SAY AS FOLLOWS:
I am the CEO of Relite Cinemas Inc. (hereinafter "RCI" or "My Company").
My Company has sold every year since 2005 hundreds of television sets and video projectors bearing the mark RELITE to consumers in Canada. Now shown to me and marked as Exhibit 1 is a photograph of an actual television set sold in Canada as well as an invoice dated June 12, 2011 for that television. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of the television set with the trademark RELITE prominently displayed on it, as well as an invoice.) The mark is shown in a similar manner on all of our video projectors sold in Canada. (3 marks)
Since 2007, my company no longer sells surround sound processors. Due to the high end nature and high costs of these surround sound processors RCI has decided no longer to manufacture and sell these units. However, my company licenses the use of its trademark on surround sound processors to a company in Alberta called Fony Electronics Ltd. All the surround sound processors are clearly marked with the trademark RELITE. On the back of the surround sound processors is a label with a notation that the trademark is owned by RCI and used under license. Fony Electronics Ltd. has only sold a dozen of Relite-branded surround sound processors between October 2009 and June 2012 to customers in Ontario and British Columbia. Now shown to me and marked as Exhibit 2 is a photograph of an actual surround sound processor sold in Canada as well as an invoice dated May 4, 2012 for it. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of the surround sound processor with the trademark RELITE prominently displayed on it, as well as an invoice.) (3 marks)
RCI has sold thousands of DVD and optical disc players in Canada since the creation of My Company. Since 2009 optical discs have become very popular and RCI is now selling on average over 500 optical disc players per year in Canada. Since August of 2009 RCI has had over $200,000 in sales of optical disc players in Canada. Now shown to me and marked as Exhibit 3 is a photograph of an actual optical disc player sold in Canada as well as an invoice dated February 3, 2011 for it. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of the optical disc player with the trademark RELITE prominently displayed on it, as well as an invoice.) (4 marks)
Every year since 2008, my company attends the Canadian Electronics Trade Show (CETS) in Toronto. Since March 2010 we have distributed over 200 polo shirts and 400 baseball caps as promotional gifts to people attending our booth. Now shown to me and marked as Exhibit 4 is a photograph of a polo shirt and baseball cap. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of the polo shirt and baseball cap with the trademark RELITE prominently displayed on it.) (3 marks)
RCI has been producing and selling computer software for electronic tablets in Canada since 2005. This software allows a user to use their electronic tablet as a remote control for their audio and video gear. Now shown to me and marked as Exhibit 4 is a photograph of a box containing the computer software for electronic tablets along with the invoice for that box sold in Canada in 2011. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of a box containing the computer software for electronic tablets with the trademark RELITE TABLET SOFTWARE prominently displayed on it, as well as an invoice.) (3 marks)
My Company produced and sold magazines relating to audio and video between 2005 and February of 2009. However, due to the recession, the sales and subscriptions to our magazine has dropped. As a result we have temporally stopped the production of our magazine until the economy picks up again. We remain hopeful that we will be in a position to re-launch our magazine very soon. (2 marks)
RCI manufactures 3D glasses through a Japanese manufacturer. The 3D glasses are not marked with the RELITE trade mark for aesthetic reasons. The 3D glasses are shipped in cardboard boxes marked with the trademark RELITE. Now shown to me and marked as Exhibit 5 is a photograph of the cardboard boxes containing the 3D glasses as well as an invoice dated January 10, 2011 from one of our distributors to a retail store in Quebec. My company has no trademark licenses with our distributors. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of a box containing the 3D glasses with the trademark RELITE prominently displayed on it, as well as an invoice.) (4 marks)
Given the notoriety of our electronic goods, my company decided to expand into the MP3 field. We have been actively advertising our MP3 docking stations in trade publications and local newspapers in Canada since December of 2010. The flyers show our MP3 docking stations with the word RELITE in large font. Now shown to me and marked as Exhibit 6 is a photograph of My Company's advertising flyer showing our MP3 docking stations with the RELITE trademark. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of the advertising flyer with the MP3 docking stations with the trademark RELITE prominently displayed on it.) (2 marks)
As part of My Company's sales of its audio and video gear, RCI offers free home theater design services. Between April 2007 and February 2012, RCI designed 44 home theaters for our Canadian customers. Our home theater design services are outlined in point of sale advertisements found at local retail stores. Now shown to me and marked as Exhibit 7 is a sample point of sale advertisement from a Canadian store outlining our home theater design services dated March 12, 2010. (The Exhibit is not included in this examination. However, assume it clearly shows a point of sale advertisement showing the trademark RELITE and explaining the free services.) (3 marks)
RCI does not provide home theater installation and home theater audio and video calibration services directly to consumers. This part of our business is handled through Relite Custom Installers. Relite Custom Installers is a wholly owned subsidiary of RCI. Now shown to me and marked as Exhibit 8 are 23 representative invoices from July 2009 to January 2011 showing sales of our home theater installation and home theater audio and video calibration services in Canada from Relite Custom Installers (The Exhibit is not included in this examination. However, assume it clearly shows the invoices showing the trademark RELITE.) (2 marks)
My Company also rents audio and video equipment. While we have not rented any equipment since 2005, we have been actively promoting and advertising our rental services through our network of retailers across Canada. As soon as we get a request for the rental of audio and video equipment we will provide these services. Now shown to me and marked as Exhibit 9 is a photograph of My Company's advertising flyer distributed in Canada in 2011 promoting our audio and video equipment rental services with the RELITE trademark. (The Exhibit is not included in this examination. However, assume it clearly shows a picture of the advertising flyer with the related audio and video equipment rental services with the trademark RELITE prominently displayed on it.) (3 marks)
(b) television sets and video projectors will be maintained (1 mark). Need not show use of the trademark on each of the wares (1 mark). If the trademark is shown on one of the wares, and affidavit states that this is representative for other wares, that is sufficient. (1 mark)
(c) surround sound processors will be maintained (1mark). The trademark was used under license (1 mark). Even though the affidavit does not attach a copy of the license agreement, the public notice means that unless the contrary is proven, the use is licensed and the character and quality of the wares or services is under the control of the owner (1 mark)
(d) DVD players will be expunged from the registration (1 mark) and optical disc players will be maintained (1 mark). No evidence of sales of DVD players. (1 mark). Bald assertions that many DVD players sold without providing dates or invoices is insufficient. (1 mark)
(e) polo shirts and baseball caps will be expunged from the registration (1 mark). These facts do not constitute use of the mark in the normal course of trade (1 mark). Promotional items or gifts are not considered part of the normal course of trade. (1 mark)
(f) (no marks for result, expunged or maintained). Deviation of mark to be addressed. Test is whether the trademark as used is sufficiently close to the trademark as registered (1 mark) so as to sustain registration, by comparing the two and determining whether the differences are so unimportant (1 mark) that an unaware purchaser would be likely to infer that both trademarks, in spite of their differences, identify the goods having the same origin (1 mark).
(g) audio and video magazines will be expunged from the registration. (1 mark). Recession or poor economy does not constitute special circumstances justifying non use. (1 mark)
(h) 3D glasses will be maintained (1 mark). Use anywhere in chain of commerce constitutes use (1 mark). The sale by the distributor is the same as a sale by the owner (1 mark) and does not require a license (1 mark)
(i) MP3 docking stations will be expunged from the registration (1 mark). Advertising of a trademark does not constitute use in association with wares. (1 mark) (or 1 mark if answer that affidavit does not contain evidence of sales of MP3 docking stations)
(j) home theater design services will be maintained (1 mark). Services performed ancillary (1 mark) to the sale or use of the wares are sufficient to support the services on their own (1 mark).
(k) home theater installation services will be expunged and audio and video calibration services will be expunged (1 mark). A corporate relationship is not sufficient for an inference of control (1 mark)
(l) audio and video equipment rental services will be maintained (1 mark). Advertising of a trademark in association with services (1 mark) and being ready, willing and able to provide the service is use in association with services (1 mark)
Question 9 (3 marks)
As a favour to his sister, Frank engraves his Rolex watch with the trademark DR. FRANK and exports the watch from Montreal to his sister in the United States for 1¢ (one cent). Does this transaction constitute use of the trademark DR. FRANK in association with watches? Why or why not? Indicate any relevant provisions of the Trade-marks Act if applicable.
Yes. (1 mark.) s. 4(3). (1 mark. No mark for s. 4 alone.) There is no requirement that use by export be in the normal course of trade. (1 mark.)
Question 10 (3 marks)
Mike uses the trademark SHAZAM to sell lollipops. Ed sees this trademark and decides to use the same trademark to sell his nuclear reactors. Both Mike and Ed are separately listed simply as "SHAZAM" in the telephone listings. So far, Mike has received 10 calls by mistake from people wanting to buy nuclear reactors. Is this confusion? Why or why not?
No. (1 mark.) Confusion requires a mistaken inference of origin (1 mark) not simply calling the wrong number by mistake (1 mark).
Question 11 (4 marks)
Tom asks you to conduct a trademark registrability search. Tom uses the trademark EGG in association with telephones. The word "egg" is in the dictionary and means nothing in the context of telephones. Is the trademark inherently strong or inherently weak? Why? In assessing the scope of protection of a mark, what are the implications of a mark being inherently strong or weak and why?
The mark is inherently strong (1 mark) because it provides no information about the character or quality of the telephones (1 mark). Determining if a mark is inherently weak or strong is relevant when assessing confusion (1 mark.) In general, a finding of confusion is more likely for inherently strong marks and less likely for inherently weak marks (1 mark)
Question 12 (4 marks)
You are a trademark agent employed by a law firm. Your firm provided trademark advice for former client A. That mandate concluded five years ago. Client X now wants you to oppose a new trademark application filed by former client A. Unrelated to these facts, what are the two most important general duties to consider to help determine if you have a conflict of interest? Briefly analyze how each principle applies in this case?
The two most important principles are: the duty of confidentiality (1 mark) and the duty of loyalty (1 mark). In this case, consider: Did former client A provide any confidential information relevant to the opposition? (1 mark) Since client A left the firm five years ago, there is likely no longer a duty of loyalty. (1 mark) No marks given for conclusion as to whether or not you can act in this case.
Question 13 (2 marks)
In an opposition, you represent the applicant. You ask for an interlocutory ruling that the Statement of Opposition should be struck. At what specific point during the opposition will the Opposition Board no longer consider requests for an interlocutory ruling to strike the Statement of Opposition?
Once evidence has been filed. (2 marks)
Question 14 (6 marks)
You represent the opponent. You have been granted a four month cooling-off period to file the opponent's rule 41 evidence. The cooling-off period has now expired. You have not yet filed the opponent's evidence. The parties are on the verge of completely resolving their dispute and you have the consent of the applicant to a further one month cooling-off period.
- Will the Opposition Board grant an additional one month cooling-off period – yes or no? (0.5 marks)
- According to the current Practice Notice relating to oppositions and based upon these facts, identify two other types of extensions of time available for the opponent at this stage? For each, what is the standard maximum number of months available and what are the standard requirements? (4.5 marks)
- The settlement was not completed by the opponent's extended deadline in spite of the opponent being granted any extension(s) of time available in (b). The opponent requests a further one month extension of time to complete the settlement on the basis of "exceptional circumstances for the purpose of completing the settlement," with no further explanation. Is the extension of time likely to be granted – yes or no. (1 mark)
- no. (0.5 marks)
- two types of extensions of time are available: first - a general benchmark extension of time (0.5 mark) for three months (0.5 mark) which requires sufficient reasons (0.5 mark), the other party's consent (0.5 mark) and payment of fee (0.5 mark) and second – an extension of time for finalizing settlement (0.5 mark) for three months (0.5 mark) which requires consent of the applicant (0.5 mark) and payment of fee (0.5 mark). No marks for saying that a requirement is to finalize settlement, since that is evident from the name of the extension. No marks for other exceptional circumstances.
- no. (1 mark)
Question 15 (1 mark)
What is the only situation where the Trademarks Office currently requires a disclaimer during prosecution?
If the mark has a depiction of the 11 pointed maple leaf. (1 mark.)
Question 16 (2 marks)
In a section 45 proceeding, the registrant's evidence consists of an invoice showing a sale in Canada in the normal course of trade, within the relevant period, and a sample of the related packaging showing the mark. The package is only in Spanish and does not comply with Canadian labeling laws. Will the registration be maintained for that product? Why or why not?
The registration will be maintained because failure to comply with laws other than the Trade-marks Act is not relevant. (2 marks. No marks for "yes." Marks only for explanation.)
Question 17 (2 marks)
The registrant owns a registration in association with "wines, sparkling wines and other fermented alcoholic beverages." In a section 45 proceeding, the registrant proves use of the trademark in Canada in the relevant period only in association with sparkling wines. Will the registration be amended and if so, how?
The registration will be amended to read "sparkling wines." (2 marks.) (No marks for "yes." on its own without an explanation. No marks if "wines" is included in the answer.)
Question 18 (3 marks)
In a s. 45 proceeding, list the three factors for determining whether or not there are special circumstances to excuse the absence of use within the relevant period.
Consider the length of time during which the trademark was not in use (1 mark); determine if the registrant's reasons for not using the trademark during the relevant period were due to circumstances beyond its control (1 mark); and determine if the registrant has a serious intention to shortly resume use (1 mark – no marks if "shortly" or similar sentiment missing)
Question 19 (2 marks)
Hearsay evidence is filed that does not fall within any of the statutory exceptions relating to hearsay evidence. What two main factors must be established if the evidence is to be considered admissible?
necessity (1 mark) and reliability (1 mark)
Question 20 (2 marks)
Crown Agency Co is a public authority which sells eyeglasses to the less fortunate for $5. Yesterday, they advertised their new EYEGLASS service and sold their first pair of glasses. They file an application today to obtain an official mark for EYEGLASS with proof of their public authority status and proof of their advertisement and sale. Is the descriptiveness of the mark relevant – yes or no? Will the Trademarks Office publish the mark in the Trademarks Journal – yes or no?
No. (1 mark.) Yes. (1 mark)
Question 21 (3 marks)
- In a s. 45 proceeding before the Trademarks Office, can the requesting party cross-examine on the affidavit filed by the registrant?
- In an appeal to the Federal Court, can the requesting party cross-examine on the evidence that was filed before the Trademarks Office?
- In the appeal, if the registrant files new evidence, can the requesting party cross-examine on that new evidence?
- No (1 mark.)
- No (1mark.)
- yes (1 mark.)
Question 22 (1 mark)
In an opposition, if a party filed no evidence before the Opposition Board and then appeals the decision, can that party file evidence in the appeal – yes or no?
yes (1 mark)
Question 23 (1 mark)
Is a non-profit corporation with charitable objectives necessarily a public authority – yes or no?
no. (1 mark.)
Question 24 (3 marks)
You want to plead a ground of opposition alleging that the applicant's trademark would depreciate the value of the goodwill of the opponent's registration. List all the relevant sections of the Trade-marks Act, including relevant provisions, you should rely on in the ground of opposition.
38(2)(a) – (1 mark); 30(i) – (1 mark); 22(1) – (1 mark).
Question 25 (4 marks)
True or false (4 marks):
- The opponent's evidentiary burden can be satisfied by the applicant's evidence.
- In an appeal, if there is no new evidence that would have materially affected the earlier decision, the standard of review is correctness.
- "Materially affected" does not mean that the new evidence would have changed the hearing officer's mind. It only means that the new evidence would have a material effect in her decision.
- In an opposition, you can rely on a ground of opposition that is not pleaded.
Answer (1 mark each)
Question 26 (5 marks)
Match each principle with the relevant case.
In order to constitute infringement, the defendant's impugned use must be "use" as a trademark.
Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 CPR (2d) 25 (FCTD)
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.
Masterpiece Inc. v. Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC)
The Registrar should not perpetuate past errors.
Registrar of Trademarks v Compagnie Internationale Pour L'Infomratique CII Honeywell Bull SA, (1985) 61 NR 286, 4 CPR (3d) 523 (FCA).
Expert testimony which simply assesses the resemblance between the marks is not necessary.
Mattel Inc v. 3894208 Canada Inc (2006), 49 CPR (4th) 321 (SCC)
Assess confusion not from the perspective of the careful and diligent purchaser or the "moron in a hurry." Rather, consider the "ordinary hurried purchaser."
Clairol International Corp v Thomas Supply & Equipment Co,  2 ExCR 552, 55 CPR 176 (Can Ex Ct).
Answer (1 mark each)
1. - e
2. - c
3. - a
4. - b
5. - d
Question 27 (1 mark)
John is a trademark agent. John just hired a new assistant. According to the Intellectual Property Institute of Canada's Code of Ethics, does John have a duty to ensure that the new assistant is advised to keep all client matters confidential - yes or no?
yes (1 mark)
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