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Canadian
Intellectual
Property Bulletin
Volume
9 - June, 2000
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.
Second Draft of the Intellectual
Property Enforcement Guidelines:
The Canadian Competition Bureau has released a second
draft of the Intellectual Property Enforcement Guidelines.
Due to a considerable amount of public concern and confusion, the
Guidelines, originally released in July of 1999, have undergone moderate
alterations. The second draft
addresses the following two issues:
-
a further definition and clarification of the vague phrase
“beyond
inherent IP rights,” and
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the circumstances where the Commissioner will use the powers outlined in
section 32 to trump the rights of an IP-owner.
The second draft also contains several specific
additions and expansions.
Section 3 has been added to detail the interface
between property, intellectual property and competition laws.
Previously, this section was significantly shorter and confined to
subsection 2.3. In addition
to reiterating the 1999 overview of the application of the Competition Act to
intellectual property according to the Commissioner’s
interpretation, Section 4 now contains an extensive application of the
Commissioner’s
powers in relation to section 32. Specifically,
section 32 applies to situations where merely exercising an IP right becomes
competitive. To respond to such
conduct, section 32 provides a mechanism of action and remedy not available in
other IP statutes. The 2000
Guidelines outline the thresh-hold requirements of this section. Finally, Section 5 (Section 3 in the 1999 Guidelines) has
been expanded to provide a summary of the analytical framework used by the
Commission in IP disputes.
Molson
Breweries v. John Labatt Ltd. (Export Trademark)
[1998] F.C.J. No. 929
This
case concerns an appeal by Molson Breweries from a decision by the Registrar that the word "EXPORT"
was not registrable as a trade-mark.
Words that are descriptive are not registrable under
paragraph 12(1)(b) of The Trademarks Act. However, Molson argued that the trade-mark had been used in
Ontario and Quebec before the filing of the application making it distinctive of
its wares and registrable under subsection 12(2). Subsection 12(2) allows descriptive words to be registered as
trademarks if the applicant is able to show that the trade-mark has been used in
relation to the associated goods so that it has become distinctive of the
applicant’s wares.
In the present case, Molson Breweries submitted
evidence that included a general survey of customer perception, sales and
advertising expenditure figures, and evidence of Labatt's (the Respondents)
successful application for the trade-mark "EXPORT" for one of their
subsidiaries.
Labatt submitted evidence showing use of the word
"EXPORT" by different beer companies in labels and as part of a trade-mark.
HELD: The evidence submitted by Molson was sufficient to show
"EXPORT" had become distinctive of Molson's "EXPORT" brand
in reference to beer. The evidence
of the survey was insufficient alone to meet the standard of proof required but,
when combined with the sales figures and advertising expenditures the
requirement was met. The evidence
did not have to establish that "EXPORT" was distinctive across Canada
because the area covered by the trade-mark was restricted to Ontario and Quebec.
The court determined that the appropriate date for when distinction had
to be present was the date the opposition was filed.
The respondents did not meet the necessary burden of proof to show that
"EXPORT" was not distinctive because all of their evidence pertained
to companies that either sold products outside of the area the trade-mark
covered or started selling their products after the date the opposition was
filed.
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