Post by Clouseau on Aug 31, 2006 17:18:53 GMT
www.legalweek.com/ViewItem.asp?id=30293
Commonwealth Countries: Marked Goods
by Gary Daniel & Francis Chang
31/08/2006
Canada’s Supreme Court has clarified the limits of protection for famous marks, as Gary Daniel and Francis Chang explain
In two recent decisions the Supreme Court of Canada clarified the scope of protection for famous marks in Canada. In Mattel v 3894207 Canada Inc and Veuve Clicquot Ponsardin v Boutiques Cliquot et al, it dismissed appeals by the owners of the famous trademarks Barbie and Veuve Clicquot respectively.
The issue in both appeals was the extent to which the owner of the famous trademark could enforce its rights in its famous trademark against someone in Canada engaged in an apparently unrelated business. Mattel opposed an application to register a trademark consisting of the word ‘Barbie’s’ with a small design element filed by a company that operated a small chain of restaurants in Quebec. The famous French champagne maker sued a small chain of women’s fashion stores that catered to the midto low-price part of the market using the trade name ‘Cliquot’.
The law in Canada prior to the Supreme Court’s decisions was reflected in two decisions of the Canadian Federal Court of Appeal in the United Artists Pictures v Pink Panther Beauty and Toyota Jidosha Kabushiki Kaisha v Lexus Foods. The owner of the famous trademark Pink Panther for entertainment services was unsuccessful against the use of the identical trademark for hair care products and services. The Japanese manufacturer of Lexus motor vehicles was also unsuccessful against a company using a similar trademark for canned food products. In those cases, the Federal Court of Appeal held that the widely divergent nature of the wares and services effectively prevented any likelihood of confusion.
The Supreme Court of Canada agreed that while Barbie was indeed famous, its fame in Canada was in association with dolls and related accessories and did not extend to restaurant and related services. The Supreme Court appeared loath to extend broad protection to the Barbie trademark in part because it possessed a low degree of inherent distinctiveness; of its significance as a common contraction of ‘Barbara’ and, to some extent, because it had surname significance. The court suggested that a trademark possessing a higher degree of inherent distinctiveness, such as a coined word like Kodak, might garner broader protection.
In Mattel, the Supreme Court narrowed the decision in Pink Panther that "only in exceptional circumstances, if ever" should the owner of a famous trademark be excused from establishing a connection between its goods and services and those of the opposite party. Rather, the Supreme Court held that fame is capable of carrying a mark across product lines whereas lesser marks would be more restricted to their traditional wares or services. The Supreme Court of Canada noted that the differences in wares and services in association with which the respective parties trademarks were used or applied for would not always be determinative; the differences in wares and services was just one factor to be considered.
In Veuve Clicquot, the Supreme Court also held that the trademarks were not confusing, finding that the key factor was the significant difference between Veuve Clicquot’s champagnes and the defend-ant’s clothing stores. It noted that "fame presupposes that the mark transcends at least to some extent the wares with which it is normally associated".
The Supreme Court in Veuve Clicquot reiterated that the decision in Pink Panther and Lexus put too much emphasis on the dissimilarities between the wares in applying at least part of the confusion test. Thus, the message from the Supreme Court of Canada appears to be that at least certain marks, whether because they possess a high degree of inherent distinctiveness, or because of their extensive use in a wide variety of wares and services, may indeed entitle them to broader scopes of protection than those trademarks that acquire fame but are not inherently distinctive, or are only used with a small set of wares and services.
One aspect of Canadian law considered in Veuve Clicquot, which was not addressed in Mattel, was the question of depreciation of goodwill. Under Section 22 of Canada’s Trademarks Act, no person may use a trademark registered by another in a manner likely to depreciate the goodwill in the trademark. The Veuve Clicquot decision is significant in that it was the first time since that section of the Act came into force more than 50 years ago that the Supreme Court had given any significant consideration to it. Section 22 of Canada’s Trademarks Act is comparable in some respects to anti-dilution legislation in other countries. However, Canada does not have separate anti-dilution legislation, as such. It is also important to bear in mind that there does not have to be confusion for there to be depreciation of goodwill.
The Supreme Court in Veuve Clicquot held that it was no defence that the boutique’s trademark ‘Cliquot’ was differently spelled than the plaintiff’s ‘Clicquot’, finding that if the casual observer would recognise the mark used as that of the owner of the famous trademark, the part of the test requiring ‘use’ of the registered trademark would be made out.
This part of the ruling should be particularly helpful for trademark owners who pursue, for example, typo-squatters who intentionally use common typographical misspellings of famous trademarks as part of their domain names.
However, in finding that the boutique had not depreciated the trademark’s goodwill, the Supreme Court stated that there could be no depreciation of goodwill without evidence of a connection in the consumer’s mind between the famous mark and the defendant’s activities. This would appear to make more difficult, rather than easier, the task of the owner of the famous trademark in pursuing, for example, someone who uses the famous trademark in association with an unsavoury activity, which any right-thinking consumer would immediately know is not associated with the activity in question.
Overall, the decisions in Mattel and Veuve Clicquot can still be seen as beneficial for owners of famous trademarks in Canada in view of the narrowing down of the decisions in Pink Panther and Lexus. Neither Mattel nor Veuve Clicquot narrows the scope of protection to which famous marks have previously been entitled in Canada.
As an interesting postscript to the Supreme Court of Canada’s decisions in Mattel and Veuve Clicquot, the Federal Court recently ruled in favour of Jaguar Motor Car Company against a Canadian company named Remo Imports that had used and registered the trademark ‘Jaguar’ in Canada for luggage. In that case, the motor car company was successful in expunging Remo’s registration for ‘Jaguar’ in Canada and restraining it from further use of the trademark in association with its wares.
However, in that case, there was evidence of a reputation in Canada of the motor car company in association with goods like luggage. That decision is currently on appeal to the Federal Court of Appeal. It will be interesting to see how the Federal Court of Appeal deals with the appeal in Jaguar now that the Supreme Court of Canada has rendered its rulings in Mattel and Veuve Clicquot, which give guidance on the scope of protection to which famous trademarks are entitled in Canada.
Gary Daniel is a partner and Francis Chang an associate counsel at Blake Cassels & Graydon in Canada.
by Gary Daniel & Francis Chang
31/08/2006
Canada’s Supreme Court has clarified the limits of protection for famous marks, as Gary Daniel and Francis Chang explain
In two recent decisions the Supreme Court of Canada clarified the scope of protection for famous marks in Canada. In Mattel v 3894207 Canada Inc and Veuve Clicquot Ponsardin v Boutiques Cliquot et al, it dismissed appeals by the owners of the famous trademarks Barbie and Veuve Clicquot respectively.
The issue in both appeals was the extent to which the owner of the famous trademark could enforce its rights in its famous trademark against someone in Canada engaged in an apparently unrelated business. Mattel opposed an application to register a trademark consisting of the word ‘Barbie’s’ with a small design element filed by a company that operated a small chain of restaurants in Quebec. The famous French champagne maker sued a small chain of women’s fashion stores that catered to the midto low-price part of the market using the trade name ‘Cliquot’.
The law in Canada prior to the Supreme Court’s decisions was reflected in two decisions of the Canadian Federal Court of Appeal in the United Artists Pictures v Pink Panther Beauty and Toyota Jidosha Kabushiki Kaisha v Lexus Foods. The owner of the famous trademark Pink Panther for entertainment services was unsuccessful against the use of the identical trademark for hair care products and services. The Japanese manufacturer of Lexus motor vehicles was also unsuccessful against a company using a similar trademark for canned food products. In those cases, the Federal Court of Appeal held that the widely divergent nature of the wares and services effectively prevented any likelihood of confusion.
The Supreme Court of Canada agreed that while Barbie was indeed famous, its fame in Canada was in association with dolls and related accessories and did not extend to restaurant and related services. The Supreme Court appeared loath to extend broad protection to the Barbie trademark in part because it possessed a low degree of inherent distinctiveness; of its significance as a common contraction of ‘Barbara’ and, to some extent, because it had surname significance. The court suggested that a trademark possessing a higher degree of inherent distinctiveness, such as a coined word like Kodak, might garner broader protection.
In Mattel, the Supreme Court narrowed the decision in Pink Panther that "only in exceptional circumstances, if ever" should the owner of a famous trademark be excused from establishing a connection between its goods and services and those of the opposite party. Rather, the Supreme Court held that fame is capable of carrying a mark across product lines whereas lesser marks would be more restricted to their traditional wares or services. The Supreme Court of Canada noted that the differences in wares and services in association with which the respective parties trademarks were used or applied for would not always be determinative; the differences in wares and services was just one factor to be considered.
In Veuve Clicquot, the Supreme Court also held that the trademarks were not confusing, finding that the key factor was the significant difference between Veuve Clicquot’s champagnes and the defend-ant’s clothing stores. It noted that "fame presupposes that the mark transcends at least to some extent the wares with which it is normally associated".
The Supreme Court in Veuve Clicquot reiterated that the decision in Pink Panther and Lexus put too much emphasis on the dissimilarities between the wares in applying at least part of the confusion test. Thus, the message from the Supreme Court of Canada appears to be that at least certain marks, whether because they possess a high degree of inherent distinctiveness, or because of their extensive use in a wide variety of wares and services, may indeed entitle them to broader scopes of protection than those trademarks that acquire fame but are not inherently distinctive, or are only used with a small set of wares and services.
One aspect of Canadian law considered in Veuve Clicquot, which was not addressed in Mattel, was the question of depreciation of goodwill. Under Section 22 of Canada’s Trademarks Act, no person may use a trademark registered by another in a manner likely to depreciate the goodwill in the trademark. The Veuve Clicquot decision is significant in that it was the first time since that section of the Act came into force more than 50 years ago that the Supreme Court had given any significant consideration to it. Section 22 of Canada’s Trademarks Act is comparable in some respects to anti-dilution legislation in other countries. However, Canada does not have separate anti-dilution legislation, as such. It is also important to bear in mind that there does not have to be confusion for there to be depreciation of goodwill.
The Supreme Court in Veuve Clicquot held that it was no defence that the boutique’s trademark ‘Cliquot’ was differently spelled than the plaintiff’s ‘Clicquot’, finding that if the casual observer would recognise the mark used as that of the owner of the famous trademark, the part of the test requiring ‘use’ of the registered trademark would be made out.
This part of the ruling should be particularly helpful for trademark owners who pursue, for example, typo-squatters who intentionally use common typographical misspellings of famous trademarks as part of their domain names.
However, in finding that the boutique had not depreciated the trademark’s goodwill, the Supreme Court stated that there could be no depreciation of goodwill without evidence of a connection in the consumer’s mind between the famous mark and the defendant’s activities. This would appear to make more difficult, rather than easier, the task of the owner of the famous trademark in pursuing, for example, someone who uses the famous trademark in association with an unsavoury activity, which any right-thinking consumer would immediately know is not associated with the activity in question.
Overall, the decisions in Mattel and Veuve Clicquot can still be seen as beneficial for owners of famous trademarks in Canada in view of the narrowing down of the decisions in Pink Panther and Lexus. Neither Mattel nor Veuve Clicquot narrows the scope of protection to which famous marks have previously been entitled in Canada.
As an interesting postscript to the Supreme Court of Canada’s decisions in Mattel and Veuve Clicquot, the Federal Court recently ruled in favour of Jaguar Motor Car Company against a Canadian company named Remo Imports that had used and registered the trademark ‘Jaguar’ in Canada for luggage. In that case, the motor car company was successful in expunging Remo’s registration for ‘Jaguar’ in Canada and restraining it from further use of the trademark in association with its wares.
However, in that case, there was evidence of a reputation in Canada of the motor car company in association with goods like luggage. That decision is currently on appeal to the Federal Court of Appeal. It will be interesting to see how the Federal Court of Appeal deals with the appeal in Jaguar now that the Supreme Court of Canada has rendered its rulings in Mattel and Veuve Clicquot, which give guidance on the scope of protection to which famous trademarks are entitled in Canada.
Gary Daniel is a partner and Francis Chang an associate counsel at Blake Cassels & Graydon in Canada.