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Appeals from the registrar of trademarks
This
In upholding the Registrar's decision, the Federal Court found that use of a variant of a mark may constitute valid use of a registered trademark where the deviation from the registered design does not change the distinctiveness of the registered mark in that the mark retains its dominant features and remains recognizable. The Federal Court was not convinced that the variant mark consisted of anything more than a slight variation and held that the variant mark retained the registered mark's dominant features.
Similarly, the Federal Court was not convinced by
However, as the licence agreement did have quality control and related termination provisions, and that royalties had been paid throughout, the Federal Court was satisfied that there was implicit consent to use of the variation of the mark, and that this use enured to the trademark owner in association with boots.
This cases raises the notion of vigilance in licensing marks, both in terms of the licensing agreement itself, and of supervising and approving the ongoing use. Modifications of the mark will always be more risky than using the mark as registered.
Tokai of
This decision serves as a reminder about the care that must be taken when designing and carrying out surveys.
This was an unsuccessful appeal by Tokai to register
The Court began by examining the new evidence Tokai sought to file, including the results of a survey. The Court found that there were reliability and validity issues with the survey. In particular, the Court held that: (a) the way in which the term "butane lighters" is used was unclear; (b) the way in which the survey removed answers that were found to be completed too quickly was improper, as these answers could have represented the first impression of a casual consumer somewhat in a hurry; (c) the way in which the survey allowed participants to take hours to complete the survey, as opposed to just 10, 20 or 30 minutes, was problematic, in that it did not guarantee that the survey captured the participants' first impression of the mark; and (d) there were contextual gaps, e.g., when the participants were first shown the mark KING, it was in isolation from anything else, which did not simulate the imperfect recollection of a casual consumer in a hurry at the time when they encounter the relevant trademark in the marketplace. On this basis, the Court held that the survey evidence was inadmissible.
The Court also considered Tokai's additional evidence of eleven third party applications and registrations, which it filed in an attempt to show that KING and KINGSFORD are inherently weak marks. However, the Court held that the eleven third-party trademarks were insufficient to draw any inferences about the state of the marketplace, especially in the absence of any demonstrated marketplace use, and found that this evidence was immaterial.
As the new evidence was either inadmissible or immaterial, the Court reviewed the Opposition Board's decision on the standard of palpable and overriding error and found that there were no palpable and overriding errors. On this basis, the Court dismissed the appeal and awarded costs in the amount of
Chartered Professional Accountants of Ontario v.
This decision sheds further light on "Official Marks", a unique creature of statute in
The Chartered Professional Accountants of
Notably, CPA Ontario became the owner of the official mark CPA only after 2017, while the
The sole issue on appeal was whether the Registrar made an extricable error of law, or a palpable and overriding error of fact and law, in finding that the Mark does not so nearly resemble CPA Ontario's official mark as to be likely to be mistaken for it under s. 9(1)(n)(iii) of the Trademarks Act. Since the Mark was not identical to CPA, the question was whether the Mark so nearly resembles CPA as to be likely to be mistaken for it. The Federal Court began with a brief overview of the law of resemblance as it pertains to official marks:
Whether a mark is likely to be mistaken for an official mark is not a test of straight comparison, but rather one of resemblance and imperfect recollection: Canadian Olympic Assn. v
CPA
CPA
[...]
CPA
As with the ideas suggested, the failure to discuss the dominant or unique aspects of the marks provides an insufficient basis to jettison deference in favour of a correctness review, particularly when the argument was not advanced before the TMOB. More importantly, however, I disagree that the TMOB's approach ignored the dominant or unique aspects of the marks. To the contrary, the CPA element was the focus of the TMOB's section 12(1)(e) analysis.
In summary, I am not persuaded that the TMOB applied a different test for resemblance than the one stated, or that it ignored the dominant aspect of the marks when assessing whether the Mark so nearly resembles as to be likely to be mistaken for CPA Ontario's official mark. CPA
Alternatively, CPA Ontario submitted that the Registrar committed a palpable and overriding error by ignoring the fact that the words THIS WAY TO at the beginning of AICPA's Mark point to or connect to the dominant element, CPA. However,
In its analysis of the section 12(1)(e) ground of opposition, the TMOB noted that the official mark CPA is an acronym consisting of letters of the alphabet. The TMOB referred to case law establishing that acronyms made up of letters of the alphabet are entitled to a narrow ambit of protection: BBM Canada v
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