Archived — Trademark Agent Exam 2013 - Part B

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Questions and answers — (150 Marks)

Question 1 (4 marks)

Question 1 a) You have been hired by Client X to conduct a trade-mark search of the Register and provide an opinion on the registrability of their proposed mark.  The search reveals only one registered mark of concern.  It is for a similar mark and for overlapping goods and services.  The firm you work for is entered as the representative for service and agent for the registered trade-mark you have flagged as potentially problematic.  Can you provide the opinion on the registrability – Yes or No? (1 mark) Give one reason why or why not (1 mark)

Answer

No, cannot provide the opinion (1 mark).  There is a conflict of interest as the firm you are working for represents the registrant of the prior registration (1 mark)

Question 1 b) What are the two general duties to consider in determining if a conflict of interest exists? (2 marks)

Answer

The duty of confidentiality (1 mark) and the duty of loyalty (1 mark)

Question 2 (3 marks)

Frank has just received a cease and desist letter on behalf of one of his clients.  The cease and desist letter claims infringement of the other party's registered trade-marks.   Frank reports this letter to his client and is instructed to provide an opinion on the merits of the other party's infringement claim and likelihood of success should this matter proceed to court.   Frank is a trade-mark agent working by himself and is not qualified as a lawyer.  Can Frank provide the requested legal opinion – Yes or No? (1 mark) Give two reasons to support your answer as to why or why not (2 marks)

Answer

No Frank should not provide the opinion (1 mark) Frank is not a lawyer and as a result does not benefit from solicitor-client privilege (1 mark) and his insurance likely does not cover him in the event he provides an opinion he is not qualified to provide (1 mark)

Question 3 (4 marks)

A successful Canadian company, Wooly Lama, has created a new technology designed to ensure that wool sweaters it manufactures will not shrink when washed.  Wooly Lama has approached you and asked if it could register NOOOSHRINK as a certification mark, to designate sweaters that have been treated using this new technology.

Wooly Lama tells you to file an application for NOOOSHRINK in its own name, based on its use since November, 2010, in association with wool sweaters and wool treatment services.  

  1. Identify the primary problem with these instructions (1 mark), and identify the relevant provision of the Trade-marks Act or Trade-marks Regulations. (1 mark)
  2. Assuming the certification mark application issues to registration, and 10 years later the technology used to treat the wool shirts changes, is it possible to change the standard contained in the registered certification mark?  Yes or No (1 mark). Cite the relevant provision of the Trade-marks Act or Trade-marks Regulations. (1 mark)
Answer
  1. A certification mark cannot be registered by a person who is engaged in the manufacture of the wares (.5 marks) or the performance of the services (.5 marks) (Section 23(1)) (1 mark).
  2. Yes. (1 mark)  Section 41(1)(d)) (1 mark)

Question 4 (27 marks)

Your client, Happy Face Inc., also doing business under the trade-name Happy Face, has manufactured and sold ice cream and frozen confectioneries of all kinds under the trade-mark HAPPY FACE since 1999.  The trade-mark incorporates the design of a cheerful clown face, for which Happy Face Inc. owns a copyright registration. The HAPPY FACE products are distributed in the provinces of Ontario and Quebec only. The President of the company asked you to conduct an availability search on the trade-mark register before filing an application for the registration of the trade-mark HAPPY FACE & Design in Canada.

Your search on the Canadian trade-mark database reveals the following application:

  • Trade-mark : SMILEY FACE & Design (the design portion of the trade-mark is a cheerful clown face virtually identical to the design of the HAPPY FACE & Design trade-mark)
  • Wares : Frozen yogurt and frozen desserts
  • Applicant : Empire Foods, Inc. (134 President Avenue, New York, NY, 10019, USA)
  • Filed on September 11, 2012 (claiming a priority filing date : US Application No. 85-123456 filed on May 28, 2012)
  • Based on US Application No. 85-123456 and use in the United States
  • Advertised in the Trade-marks Journal on August 23, 2013

In order to obtain additional information regarding this company and the SMILEY FACE products, you conduct a quick search on Google. Your web-based searches do not reveal any reference to the sale of these products either in the United States or in any other country.

In your opinion to the client, you recommend filing an application for the registration of their trade-mark HAPPY FACE & Design in Canada.  You also recommend filing a Statement of Opposition against Empire Foods, Inc.'s application that you consider as a potential obstacle to the registration of your client's trade-mark. Your client agrees with your strategy. In your client's view, the adoption of the trade-mark SMILEY FACE & Design in Canada would create confusion with his trade-mark and trade-name HAPPY FACE. He also considers that the design element of the mark SMILEY FACE & Design constitutes copyright infringement.

Without any further delay, you start preparing a Statement of Opposition against the SMILEY FACE & Design trade-mark application.

  1. Assuming that the Statement of Opposition will be filed on the day of the opposition deadline, on what day will you file the Statement of Opposition with the Trade-marks Office? (1 mark) Support your answer with any relevant provision of the Trade-marks Act. (1 mark)
    Answer

    October 23, 2013. (1 mark) Subsection 38(1) of the Trade-marks Act. (1 mark)

  2. Not including subsection 30(a) of the Trade-marks Act, identify the five (5) most relevant grounds of opposition in point form that you will include in your Statement of Opposition. (5 marks) For each ground, you must identify all the relevant provisions of the Trade-marks Act. (5 marks) Only the first five (5) grounds of opposition will be marked.
    Answer

    The grounds of opposition must be properly stated. No mark is to be granted for other grounds of opposition that may be identified. All subsections of the Trade-marks Act   should be identified.

    • Pursuant to subsection 38(2)(a) of the Trade-marks Act (0.5 mark), the application does not conform to the requirements of subsection 30(d) of the Trade-marks Act  (0.5 mark) in that the applied for trade-mark was not in use in the United States at the date of the filing of the Canadian application (or at the priority filing date). (1 mark) (need to indicate both: i) not used in USA and ii) at date of filing for the mark)
    • Pursuant to subsection 38(2)(a) of the Trade-marks Act (0.5 mark), the application does not conform to the requirements of subsection 30(i) of the Trade-marks Act  (0.5 mark) in that the statement that the applicant is satisfied that he is entitled to use the trade-mark in Canada in association with the wares described in the application is false because such use would constitute an infringement of the copyright of the opponent in the artistic work of which the applied-for trade-mark is a copy, contrary to the Copyright Act. (1 mark)
    • Pursuant to subsection 38(2)(c) of the Trade-marks Act  (0.5 mark), the applicant is not the person entitled to registration of the applied for trade-mark pursuant to subsection 16(2)(a) of the of the Trade-marks Act (0.5 mark) because it is confusing with the opponent's HAPPY FACE & Design trade-mark that has been previously used in Canada by the opponent in association with ice cream and frozen confectioneries. (1 mark) (need reference to wares for the mark)
    • Pursuant to subsection 38(2)(c) of the Trade-marks Act  (0.5 mark), the applicant is not the person entitled to registration of the applied for trade-mark pursuant to subsection 16(2)(c) of the of the Trade-marks Act (0.5 mark) because it is confusing with the opponent's HAPPY FACE trade-name that has been previously used in Canada by the opponent in association with the operation of a business specialized in the manufacture and sale of ice cream and frozen confectioneries. (1 mark) (need reference to wares for the mark)
    • Pursuant to subsection 38(2)(d) of the Trade-marks Act  (1 mark), the applied for trade-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 HAPPY FACE & Design trade-mark. (1 mark) (need to include language that is underlined for the mark)
  3. Indicate the material date for each of the five (5) grounds of opposition which you have identified. (1 mark each for a total of 5 marks)
    Answer

    s. 30(d) – priority filing date (May 28, 2012) or filing date (September 11, 2012)(1 mark)
    s. 30(i) – priority filing date (May 28, 2012) or filing date (September 11, 2012)(1 mark)
    s. 16(2)(a) – priority filing date or May 28, 2012 (1 mark)
    s. 16(2)(c) – priority filing date or May 28, 2012 (1 mark)
    s. 38(2)(d) – filing date of the opposition or October 23, 2013 (1 mark)

    A few months later, after having received the applicant's Counter-statement, you prepare your client's evidence pursuant to Rule 41 of the Trade-marks Regulations.

  4. Are you entitled to file your client's evidence with the Trade-marks Office by fax? Yes or No. (1 mark) Support your answer with any relevant provision of the Trade-marks Regulations. (1 mark)
    Answer

    No. (1 mark) Rule 3(9)(b) of the Trade-marks Regulations (1 mark) (need to include Section and Subsection for the mark)

  5. Are you entitled to serve your client's evidence to the applicant's agent by registered mail? Yes or No. (1 mark) Support your answer with any relevant provision of the Trade-marks Regulations. (1 mark)
    Answer

    Yes. (1 mark) Subsection 37(1)(b) of the Trade-marks Regulations (1 mark) (need to include Section and Subsection for the mark)

    The applicant decides not to file any evidence and informs the Registrar accordingly.

  6. Will this preclude the applicant from later seeking leave to file evidence? Yes or No. (1 mark)
    Answer

    No. (1 mark)

    A few weeks later, you start preparing the written argument of the opponent. Your case law search and the drafting of the written argument is a bit more time consuming than anticipated and you realize that you will need more time to properly finalize your written argument on time. You decide to request an extension of time to file your written argument.

  7. Name the two (2) requirements you need in support of your extension request. (1 mark each) What is the extension that the Registrar will grant for a first request? (1 mark)
    Answer
    • sufficient reason(s) (1 mark)
    • the other party's consent (1 mark)
    • fee (1 mark) (max. of 2 marks)
    • 4 months. (1 mark)
    • (Practice in Trade-mark Opposition Proceedings)

    It is finally the day of the hearing. Both parties are represented at the Trade-marks Opposition Board. In your opening remarks, you refer to both parties' burden of proof in an opposition proceeding.

  8. Explain the burden of proof of the opponent (1 mark) and the burden of proof of the applicant. (1 mark)
    Answer
    • The opponent bears an initial evidential onus regarding each of the alleged ground of opposition. (1 mark) (the candidate must identify that it is an initial burden)
    • - The applicant bears the legal burden (on a balance of probabilities standard) of showing that its trade-mark is registrable. (1 mark) (the candidate must identify that it is a legal burden)

Question 5 (14 marks)

Your client, Global Apparel Inc., a Quebec-based company, is the owner of the trade-mark FASHIONIST-AH! used in Canada since 2006 in association with jeans. Your client does not own a registration for its trade-mark.

Worldwide Apparel Inc., an Ontario-based company, is the owner of the registered trade-mark FASHIONISTA in Canada for various clothing articles, under registration number 777,666. The trade-mark registration, dated November 2, 2008, is based on use of the trade-mark in Canada since at least as early as May 2007 for all wares covered by the registration. Worldwide Apparel Inc. was not aware of the trade-mark FASHIONIST-AH! when it adopted its own trade-mark in 2007.

Today, October 22, 2013, the President of Global Apparel Inc. conducts a search on the Canadian trade-mark database which reveals registration number 777,666. In his view, there is a likelihood of confusion between both trade-marks and it is his intention to have the FASHIONISTA trade-mark registration removed from the register. He immediately contacts you to seek your advice.

  1. Identify two (2) types of proceedings that you could recommend to the client. (1 mark each) For each type of proceeding, identify the relevant provision of the Trade-marks Act. (1 mark each)
  2. Assuming that your client has decided to contest the validity of the FASHIONISTA trade-mark registration in Court, list two (2) grounds that could be alleged in support of your action. (1 mark each) For each ground, you must identify the relevant provision of the Trade-marks Act. (1 mark each)
  3. Is there any specific date to consider for the commencement of the invalidity action? Yes or No. (1 mark) Give one reason why. (1 mark) Any relevant provisions of the Trade-marks Act must be identified. (1 mark)
  4. Can the invalidity action be brought before the Ontario Superior Court? Yes or No. (1 mark) Give one reason why. (1 mark) Any relevant provisions of the Trade-marks Act must be identified. (1 mark)
Answer
    • (Administrative) Summary expungement proceedings (1 mark) under Section 45 of the Trade-marks Act  (1 mark)
    • (Judicial) Cancellation action (1 mark) under Section 57 of the Trade-marks Act  (1 mark)
    • The trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced (1 mark); subsection 18(1)(b) of the Trade-marks Act  (1 mark)
    • The applicant for registration was not the person entitled to secure the registration (1 mark); subsection 18(1) in fine of the Trade-marks Act  (1 mark) (need to include Subsection for the mark)
  1. Yes (1 mark). The registration will become incontestable five years from the date of registration of the contested trade-mark (i.e. on November 2, 2013, optional) (1 mark). Subsection 17(2) of the Trade-marks Act  (1 mark)
  2. No (1 mark). The Federal Court has exclusive original jurisdiction (1 mark). Subsection 57(1) of the Trade-marks Act  (1 mark)

Question 6 (3 marks)

List the three (3) most relevant elements that a plaintiff needs to establish to succeed in an infringement action under Section 19 of the Trade-marks Act. (1 mark each) (marks will only be awarded for the first 3 elements provided)

Answer
  • the existence of a registration; (1 mark)
  • that the defendant has used a trade-mark that is identical to the registered trade-mark; (1 mark)
  • that such use has been in association with one or more of the wares or services covered by the registration. (1 mark)

Question 7 (6 marks)

Indicate if these assertions regarding passing off actions are true or false:

  1. Subsection 7(b) of the Trade-marks Act creates a civil cause of action that essentially codifies the common law tort of passing off. (1 mark)
  2. The owner of a distinguishing guise cannot rely on a passing off action to sue a defendant. (1 mark)
  3. In a passing off action, the plaintiff has the burden of showing that the defendant has made a misrepresentation to the public. (1 mark)
  4. In a passing off action, the plaintiff has the burden of showing intentional misconduct or deliberate deceitful acts from the defendant. (1 mark)
  5. The Federal Court may hear passing off actions based on section 7 of the Trade-marks Act and passing off actions based on common law principles. (1 mark)
  6. Factors such as the style of lettering, the colouring of signs of the parties or the appearances of the parties' trade-marks as actually used on signs and boxes are relevant considerations in a passing off action. (1 mark)
Answer

(1 mark each)

  1. True
  2. False
  3. True
  4. False
  5. False
  6. True

Question 8 (6 marks)

ABC Inc. is the owner of the registered trade-mark RAINBOW used in Canada under license by XYZ Inc. since 2001 in association with face cream. A small company, 123 Ontario Inc., recently launched a hand cream sold under the trade-mark RAINBO. At this time, the distribution of the RAINBO hand cream is limited to the Ottawa area.

XYZ Inc. is of the view that use of the trade-mark RAINBO infringes upon the rights in the registered trade-mark RAINBOW, and asks ABC Inc. to bring a judicial action against 123 Ontario Inc. Three months later, ABC Inc. confirms to its licensee that it refuses to embark into any kind of judicial proceedings for the reason that they are too expensive.

  1. Identify two (2) causes of action based on the registration of the trade-mark RAINBOW that could support an action against 123 Ontario Inc. (1 mark each) Your answer must be supported by any relevant provisions of the Trade-marks Act. (0.5 mark each)
  2. Assuming that there is no agreement between the owner and its licensee in this respect, would XYZ Inc. be entitled to bring an infringement action against 123 Ontario Inc. in its own name? Yes or No. (1 mark) Give one reason why or why not. (1 mark) Your answer must be supported by any relevant provisions of the Trade-marks Act. (1 mark)
Answer
    • Infringement (1 mark) Section 20 of the Trade-marks Act (0.5 mark)
    • Depreciation of the goodwill (1 mark) Section 22 of the Trade-marks Act (0.5 mark)
  1. Yes. (1 mark) The licensee may call on the owner to take proceedings for infringement thereof, and, if the owner refuses or neglects to do so (within two months after being so called on: optional), the licensee may institute proceedings for infringement in the licensee's own name (as if the licensee were the owner, making the owner a defendant: optional). (1 mark for the general principle). Subsection 50(3) of the Trade-marks Act ( 1 mark)

Question 9 (33 marks)

You represent Island Pools Inc., a Canadian company, the owner of Canadian trade-mark registration TMA 123,456 for the mark SPLASH, registered on February 14, 2007 in association with the following wares and services:

Wares:

(1) pools; hot tubs
(2) solar blankets
(3) replacement pool liners
(4) chlorine
(5) salt water chlorine generators
(6) salt
(7) pool cleaning equipment, namely, pool wands, vacuum brushes, vacuum hoses
(8) diving boards

Services:

(1) pool installation and repair services; hot tub installation and repair services
(2) pool cleaning and maintenance services
(3) water analysis and testing services
(4) pool liner replacement services

A Section 45 Notice was issued to your client on June 1, 2012.

The following affidavit was filed on behalf of your client. 

Affidavit of Nick Summer

I, Nick Summer, of the City of Montreal, Quebec, hereby MAKE OATH AND SAY AS FOLLOWS:

I am the president of Island Pools Inc. (hereinafter “IPI” or “My Company”).

1. Every year since 2007 IPI has sold hundreds of pools and hot tubs bearing the mark SPLASH to customers in Canada.  Now shown to me and marked as Exhibit A is a photograph of a representative hot tub and the invoice for that hot tub. (The exhibit is not included in this examination.  However, assume it shows a photograph of a hot tub with  SPLASH clearly printed along the side.)  The trade-mark SPLASH is shown in a similar manner on all of our pools and hot tubs sold in Canada.

2. My Company has sold solar blankets to pool retailers across Canada from January 2011 to the present.  The trade-mark SPLASH does not appear anywhere on the solar blankets.  The solar blankets are shipped to pool retailers in large cardboard boxes marked with the trade-mark SPLASH and IPI.   The pool retailers usually remove the solar blankets from the cardboard boxes and sell them to the public.  Now shown to me and marked as Exhibit B is a photograph of a sample cardboard box as well as a representative invoice for that solar blanket. (The exhibit is not included in this examination.  However, assume it shows a photograph of a cardboard box with  SPLASH clearly printed along the side). 

3. My Company does not sell replacement pool liners, nor do we provide pool liner replacement services.  IPI has a division called Island Pool Liner Sales and Replacement Inc.  Island Pool Liner Sales and Replacement Inc. has sold and replaced pool liners for IPI every year since 2010.  Now shown to me and marked as Exhibit C is a photograph of a sample pool liner as well as a representative invoice for that pool liner and the installation of that liner from Island Pool Liner Sales and Replacement Inc. (The exhibit is not included in this examination.  However, assume it shows a photograph of a pool liner with SPLASH clearly printed on it). 

4. Since 2007 My Company has sold to the public chlorine in large plastic pails marked with the trade-mark SPLASH.  However, there was a chemical explosion at our chlorine plant in May of 2009 and production of the chlorine has ceased until repairs to the plant can be completed.  This cleanup and reconstruction of the plant has taken several years because of the environmental impact and extent of the damages.  However, we have deployed substantial resources over the past two years to reconstruct the plant and begin producing and selling chlorine by September 2012.  We have in fact already begun running an advertising campaign announcing our return and have orders pending for chlorine for delivery by late 2012.

5. Every year since 2009 My Company has sold salt water chlorine generators bearing the trade-mark SPLASH in Canada and/or the United States.  Now shown to me and marked as Exhibit D is a photograph of a sample salt water chlorine generator. (The exhibit is not included in this examination.  However, assume it shows a photograph of a salt water chlorine generator with SPLASH clearly printed along the side). 

6. In July of 2011 we had one sale of 80 bags of salt to a pool reseller in Saskatchewan.  The reseller in Saskatchewan left the salt outside and a severe rain storm melted all the salt.  Now shown to me and marked as Exhibit E is a photograph of a representative bag of salt and the invoice for that salt. (The exhibit is not included in this examination.  However, assume it shows a photograph of a bag of salt with SPLASH clearly printed along the side). 

7. IPI currently licenses the use of its trade-mark SPLASH on pool cleaning equipment, namely, pool wands, vacuum brushes, vacuum hoses to a company in Ontario called Best Pool Equipment Supplies Ltd.  All the pool cleaning equipment are clearly marked with the trademark SPLASH.  On the packaging of each pool cleaning equipment there is a notification that SPLASH is owned by IPI and used under license.   Now shown to me and marked as Exhibit F is a photograph of a representative pool wand, vacuum brush and vacuum hose and the invoice for these pool cleaning equipment items. (The exhibit is not included in this examination.  However, assume it shows a photograph of a bag of a pool wand, vacuum brush and vacuum hose with SPLASH clearly printed along the side). 

8. My Company has sold 68 diving boards between June 2010 and May 2012.  Our diving boards are well known for their flexibility and modern design.   We advertise our diving boards in Canada Pool a monthly magazine distributed across Canada.  Now shown to me and marked as Exhibit G is a copy of the June 2011 Canada Pool magazine with the advertisement for IPI's SPLASH diving boards. (The exhibit is not included in this examination.  However, assume it shows the magazine advertisement of IPI's diving boards with SPLASH clearly printed along the side). 

9. IPI's pool installation and repair services as well as their hot tub installation and repair services have been offered to Canadians every year since 2007 under the trade-mark SPLASH AT HOME.  Between the period of September 2010 and May 2012 we installed 375 pools, 475 hot tubs and had a total of 235 service calls to repair both hot tubs and pools.  Now shown to me and marked as Exhibit H are sample order forms for pool and hot tub installation and repair agreements dated between September 2010 and May 2012 to various customers in Canada. (The exhibit is not included in this examination.  However, assume it shows agreements with SPLASH AT HOME clearly printed on them). 

10. IPI has not yet signed any contracts with customers for pool cleaning and maintenance services.  However, we have been actively promoting and advertising these services in local newspapers and in the telephone yellow pages.   We have been ready to provide these services since 2007 and are just waiting for our first customer.  We believe this will be a big part of our business going forward.  Now shown to me and marked as Exhibit I is a photograph of an advertisement for our pool cleaning and maintenance services dated March 2012. (The exhibit is not included in this examination.  However, assume it shows an advertisement for pool cleaning and maintenance services with SPLASH clearly printed along the side). 

11. As part of IPI's sale of pools and hot tubs, we offer free water analysis and testing services.   Every day we test on average 30 water samples for our customers.   Our water analysis and testing services are outlined on point of sale advertisements found within our local stores.  Now shown to me and marked as Exhibit J is a sample point of sale advertisement from our local store outlining our water analysis and testing services dated July 2011. (The exhibit is not included in this examination.  However, assume it shows a point of sale advertisement with SPLASH clearly printed along the side). 

For each of the goods and services covered by the registration, provide your client an opinion on whether these will be maintained or expunged and explain why.  Do not assume any facts not in evidence and base your opinion solely on the evidence submitted and relevant principles of law.  Case law does not need to be cited unless specified.

a) Wares (1) Advise if pools will be maintained or expunged (1 mark) and if hot tubs will be maintained or expunged (1 mark).  Give one reason to support your opinion (1 mark)

Answer

Registration for pools will be maintained (1 mark).  Registration for hot tubs will be maintained (1 mark).    Need not show use of the trade-mark on each of the wares.  If the trade-mark is shown on one of the wares, and affidavit states that this is representative for the other wares, that is sufficient (1 mark)

b) Wares (2) Advise if solar blankets will be maintained or expunged (1 mark).  Give one reason to support your opinion (1 mark)

Answer

Registration for solar blankets will be maintained (1 mark).  Use anywhere in the chain of commerce constitutes use (1 mark). 

c) Wares (3); Services (4) Advise if replacement pool liners will be maintained or expunged (1 mark).  Advise if pool liner replacement services will be maintained or expunged (1 mark). Give one reason to support your opinion (1 mark)

Answer

Registration for replacement pool liners will be expunged (1 mark). Registration for pool liner replacement services will be expunged (1 mark).   A corporate relationship is not sufficient for an inference of control or licence (1 mark) (must make reference to inference of control for mark)

d) Wares (4) Advise if chlorine will be maintained or expunged (1 mark).  Give two reasons to support your opinion (2 marks)

Answer

Registration for chlorine will be maintained (1 mark). No use in relevant period.  However, while fire is beyond the owner's control (1 mark) (need to say “control” for the mark), the affidavit does demonstrate a serious intention to resume use shortly (1 mark).

e) Wares (5) Advise if salt water chlorine generator will be maintained or expunged (1 mark).  Give one reason to support your opinion (1 mark) and cite one relevant case in support (1 mark)

Answer

Registration for salt water chlorine generator will be expunged (1 mark). Affidavit in a Section 45 proceeding cannot be susceptible of more than one interpretation and/or if susceptible of more than one interpretation, the interpretation adverse to the interest of the party in whose favor the affidavit was made should be adopted (1 mark): 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) (1 mark). 

f) Wares (6) Advise if salt will be maintained or expunged (1 mark).  Give one reason to support your opinion (1 mark) and cite one the relevant case law (1 mark)

Answer

Registration for salt will be maintained (1 mark).  Sale to anyone in Canada along the chain of distribution is use (1 mark) (need to make reference to “chain of distribution” for the mark).  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) (1 mark for either case) 

g) Wares (7) Advise if pool cleaning equipment will be maintained or expunged (1 mark).  Give two reasons to support your opinion (2 marks) Cite any relevant provisions of the Trade-marks Act or Trade-marks Regulations (1 mark)

Answer

Registration for pool cleaning equipment will be maintained (1 mark).  The trade-mark is used under license (1 mark).  Even if 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 is under control of the owner (1 mark).  Section 50(2) (1 mark). 

h) Wares (8) Advise if diving boards will be maintained or expunged (1 mark).  Give two reasons to support your opinion (2 marks)

Answer

Registration for diving boards will be expunged (1 mark).  The affidavit must show use of the trade-mark and not just provide bald assertion or statement of use. (1 mark)   Advertising of a trade-mark does not constitute use in association with wares (1 mark)

i) Services (1) Advise if pool installation and repair services; hot tub installation and repair services will be maintained or expunged (1 mark).  Identify the principle (1 mark) and explain the test to be applied in this situation (2 marks)

Answer

Registration for pool installation and repair services; hot tub installation and repair services will be expunged (1 mark).  Deviation of trade-mark (1 mark).  Test is whether the trade-mark as used is sufficiently close to the trade-mark as registered so as to sustain registration (1 mark), by comparing the two and determining whether the differences are so unimportant that an unaware purchaser would be likely to infer that both trade-marks, in spite of their difference, identify the goods and/or services as having the same origin (1 mark)

j) Services (2) Advise if pool cleaning and maintenance services will be maintained or expunged (1 mark).  Give two reasons to support your opinion (2 marks)

Answer

Registration for pool cleaning and maintenance services will be maintained (1 mark).  Advertising of a trade-mark in association with services (1 mark) and being ready, willing and able to provide the services is use in association with services (1 mark)

k) Services (3) Advise if water analysis and testing services will be maintained or expunged (1 mark).  Give a reason to support your opinion (1 mark)

Answer

Registration for water analysis and testing services will be maintained (1 mark).  Services performed ancillary to the sale of the wares are sufficient to support the services on their own (1 mark)

Question 10 (3 marks)

Can you cross-examine on the affidavit filed by a Registrant in a section 45 proceeding – Yes or No? (1 mark)  Support your answer (1 mark) and cite any relevant provisions of the Trade-marks Act. (1 mark)

Answer

No (1 mark) Section 45(2) (1 mark) and only evidence to be received is the affidavit filed on behalf of the registered owner of the trade-mark (1 mark)

Question 11 (2 marks)

What options, if any, does a requesting party have in a Section 45 to comment or contest the evidence filed by a Registrant? (2 marks)

Answer

The requesting party may file written submissions (1 mark) and/or request and attend the oral hearing (1 mark) (need to identify oral hearing to receive the mark)

Question 12  (20 marks)

Match each principle with the relevant case.

Principles Cases
  1. The presence of an onus on the applicant in an opposition proceeding means that if a determinate conclusion can't be reached once all the evidence is in, then the issue must be decided against the applicant.
  2. Inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
  3. The most important factor in assessing confusion is often the degree of resemblance between the marks.
  4. The material date for registrability under section 12(1)(d) is the date of decision.
  5. The first portion of a trade-mark is the most relevant for purposes of distinction.
  6. There is nothing to prevent two registered trade-marks from being used at the same time.
  7.  Section 30(b) of the Act requires that there be continuous use of the applied for trade-mark in the normal course of trade from the date claimed to the filing date of the application.
  8.  A deficiency in a pleading can sometimes be cured by the evidence.
  9.  Corporate structure alone is insufficient to establish the existence of a license within the meaning of s. 50.
  10.  A variation of a registered trade-mark could constitute use of the mark as registered so long as the differences between the two are minor.
  1. A W Allen Ltd v Warner-Lambert Canada Inc (1985), 6 CPR (3d) 270 (FCTD)
  2. Benson & Hedges (Canada) Ltd v Labatt Brewing Co (1996), 67 CPR (3d) 258 (FCTD)
  3. John Labatt v Molson Companies (1990), 30 CPR (3d) 293 (FCTD)
  4. Kellogg Salada v Maximum Nutrition (1992), 43 CPR (3d) 519 (FCA)
  5. Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC)
  6. MCI Communications Corp v MCI Multinet Communications Inc (1995), 61 CPR (3d) 245 (TMOB)
  7. Novopharm Ltd v AstraZeneca AB (2002), 21 CPR (4th) 289 (FCA
  8. Pernod Ricard v Molson Breweries (1992), 44 CPR (3d) 359 (FCTD)
  9. Promafil Canada Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA) 
  10. Park Avenue Furniture Corp v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)
Answer

(2 marks each)

  1. c.
  2. d.
  3. e.
  4. j.
  5. h.
  6. a.
  7. b.
  8. g.
  9. f.
  10. i.

Question 13 (4 marks)

What are the four circumstances the Board considers when determining whether or not it is in the interest of justice to grant leave to an opponent to file an amended statement of opposition?

Answer
  1. stage of the proceeding (1 mark)
  2. reason why the amendment was not made earlier (1 mark)
  3. importance of the amendment (1 mark)
  4. prejudice to the other party (1 mark)

Question 14 (4 marks)

You are the agent acting for ABC Inc., the opponent in an opposition proceeding.  You have already asked and been granted one extension of time to file ABC Inc.'s Rule 41 evidence.   

The current deadline to file the opponent's Rule 41 evidence is December 27, 2013.

On December 20, 2013, you come down with a new virus known as H2/N2.  The doctor has ordered that you stop working for at least three weeks.

a) Can you request a further extension of time to file the opponent's evidence?  Yes or no. (1 mark)

b) Do you need the Applicant's consent in order to do so?  Yes or no. (1 mark) Give one reason why or why not? (1 mark)  Indicate any relevant provisions of the Trade-marks Act or Trade-marks Regulations. (1 marks)

Answer

a) Yes. (1 mark)
b) No.  (1 mark)

This request would constitute a request for extension of time under ‘Exceptional Circumstances' as detailed in the Opposition Practice Notice entitled  “Practice in Trade-mark Opposition Proceedings” (1 mark)

This circumstance would justify the Registrar exercising discretion under s. 47(1) of the Trade-marks Act to grant the opponent the further extension.  (1 mark) (both rational and Section and Subsection needed for the mark)

Question 15 (5 marks)

In point form, list three fundamental requirements for acceptance of a Statement of Opposition by the Registrar.  Only the first three answers provided will be marked. Cite any relevant provisions of the Trade-marks Act or Trade-marks Regulations.  (5 marks)

Answer
  • the grounds of opposition must be set out in sufficient detail (1 mark) so the applicant can respond to them (s. 38(3)(a)) (1 mark) (need to include Section and Subsection for the mark)
  • the address of the opponent's principal office or place of business (1 mark)
  • at least one substantial issue (1 mark) for decision (s. 38(4)) (need to include Section and Subsection for the mark) (1 mark)
  • and/or filing fee (1 mark)
  • (maximum of 5 marks)

Question 16 (2 marks)

On October 14, 2013, you receive instructions from your client to oppose an application which was advertised in the issue of the Trade-marks Journal dated July 11, 2013.  Name the one step you must take before you can oppose the application. (1 mark)   Cite the relevant provision of the Trade-marks Act or Trade-marks Regulations.  (1 mark)

Answer

You must request a retroactive extension of time (1 mark) (need to say “retroactive extension” for the mark) pursuant to section 47(2) of the Trade-marks Act (1 mark) in order to oppose the application as the deadline to do so has passed.

Question 17 (10 marks)

True or False

  1. A statement of opposition may name any number of persons jointly as opponents.
  2. Corporate structure alone can establish the existence of a licensing arrangement.
  3. Evidence of control over the character or quality of the wares by a trade-mark owner can support the existence of an implied license agreement.
  4. An appeal lies to the Federal Court from any decision of the Registrar within one month from the date on which notice of the decision is dispatched by the Registrar.
  5. The Registrar has the jurisdiction to stay proceedings.
  6. The following trade-mark is registrable for toy cars: CARZ.
  7. An application for registration of a distinguishing guise can be filed on the basis of proposed use.
  8. An application that has been allowed can still be opposed.
  9. An application can be amended after advertisement to identify a predecessor-in-title.
  10. An application can be amended after advertisement from one alleging use or making known to one for a proposed mark.
Answer

(1 mark each)

  1. true
  2. false
  3. true
  4. false
  5. false
  6. false
  7. false
  8. false
  9. true
  10. false

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