Canadian Intellectual Property Bulletin

Volume 5 - January, 1998

This newsletter is not intended to constitute a legal opinion on any of the issues discussed. Readers should seek professional legal advice on issues of concern to them - we would be pleased to elaborate on any of the articles herein and discuss how it might apply to specific problems. Contact us for more information.

Perform Canadian Trademark Searches on the Internet:

The Canadian Trademarks Office has launched a new pilot project allowing anyone with access to the Internet to access and search the Canadian Trademarks Database without charge. This database covers Canadian trademark applications and registrations from January 1865 to the present, and is updated every few weeks. The database can be searched for pending applications, active registrations, expunged and abandoned registrations, and abandoned applications. Moreover, the database can be searched in particular fields such as mark, owner, wares or services. Images of design marks are also included in the database. We encourage all of our clients and associates to visit this new database by accessing our homepage.  

Trademarks - Conflict between trade names - Interim injunction

Great Clips Inc. v. PIP Inc., 76 C.P.R. (3d) 41, Alberta Queen's Bench

Plaintiff operated a number of hair franchises under the name "GREAT CLIPS". In one city where plaintiff had a salon, but no previously established business dealings, defendant intentionally copied not only the interior get-up of the plaintiff’s salon, but also attended training sessions by the plaintiff for their franchisees and started doing business under "GREAT CUTS".

HELD: Injunction allowed. Although both businesses were new, irreparable harm could be caused to the plaintiff by the defendant’s use of the substantially confusing business name in a new business territory.

Differentiation between channels of trade in trademark conflicts:

Consumers Distributing Inc. v. Sony Kabushiki Kaisha, 76 C.P.R. (3d) 106, Trademarks Opposition Board

Applicant Sony applied to register "CDIT" for use on audio cassettes. Opponent, amongst other things, alleged that Sony’s mark would be confusing with marks owned by them including "CD" for use in association with catalogue and mail order shopping.

HELD: Opposition rejected. Sony’s mark was distinctive but inherently weak. It was used in a substantially different business however, and as such any confusion was inconsequential. There was no evidence that the opponent had used its mark in association with the specified services. Also re use - the use of "$CD Price XX.XX" did not constitute proper use of the mark for any wares.

Maintaining control and proper use:

Consumers Distributing Inc. v. Sony Kabushiki Kaisha, 76 C.P.R. (3d) 106, Trademarks Opposition Board

Facts outlined above.

HELD: The use of "$CD Price XX.XX" did not constitute proper use of the mark "CD" for any wares or services.

Protection of trade secrets - Recipes - Injunctions - Irreparable harm:

2127449 Nova Scotia Ltd. v. Donna's Seashore Investments Ltd., 76 C.P.R. (3d) 63

Plaintiff had given a restaurant franchise to defendant. Franchise agreement had a restrictive covenant which restricted the defendant from opening another restaurant similar to the franchise. Some period of time into the franchise, the defendant terminated the franchise agreement without returning the secret recipes and other materials, which amongst other things, used the plaintiff’s trademark. Defendant was locked into an ongoing lease for the restaurant premises and opened another restaurant under another name. Plaintiff sued and claimed interlocutory relief, claiming that the restrictive covenant was violated.

HELD: The application was denied. In order to obtain an interlocutory injunction the plaintiff had to show irreparable harm if the application were denied - they could not. In actual fact it was the defendant in this case who would be irreparably harmed if the application were granted because they would be forced to default on their lease and would be out of business. Defendant acknowledged their duty to return the recipes and other materials, and an order was made confirming same.

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