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Key Trademark Decisions in 2023

2023 has again been a difficult year for trademark owners and their advisors. Hopefully the impact of the pandemic is behind us, but we continue to face unacceptably long processing delays in the Trademark Office although Opposition Board proceedings seem to be doing much better.


There have been several important decisions in the Federal Court and two decisions of the US Supreme Court of interest in the last year. These decisions have considered the availability of interlocutory injunctions, the effect of previous findings in subsequent proceedings between the same parties, the potential use of a motion for summary trial, the degree control required for a trademark licence to comply with the Act, the impact of imprecise translations, the existence and effect of a trademark assignment, the impact of the right of freedom of expression, the scope of a claim for depreciation of goodwill , the nature of a claim for entitlement of a mark and the difficulties in appealing from an examiner’s refusal.


In 2572495 Ontario Inc. v. Vacuum Specialists (1985) Ltd. 2023 FC 345 the plaintiff carrying on business as Vacuum Parts Canada (VPC), sought an interlocutory injunction to stop the defendants from copying its photographs, or using its trademark “VPC” or its tradename “Vacuum Parts Canada.” The Judge was not persuaded that VPC demonstrated irreparable harm through evidence at a convincing level of particularity – as required by the Federal Court of Appeal. A more detailed comment is available in the Same Old Song blog post. A different result may occur outside the Federal Court. See for example Amer Sports Canada Inc. v Adidas Canada Limited, 2024 BCSC 3 (CanLII)


In Cheung’s Bakery Products Ltd. v. Easywin Ltd 2023 FC 190, 200 C.P.R. (4th)109 one issue was the effect of previous factual finding made by the Federal Court and affirmed by the Federal Cout of Appeal. The Court said that judicial comity does not apply to factual findings but failing to provide convincing evidence to contradict the previous finding relevant to a confusion analysis was fatal. A more detailed comment is available at the blog post Confusion and Chinese Characters.


In Techno-Pieux Inc. v. Techno Piles Inc. 2023 FC 581 the court made several observations. 1) On a motion for summary judgment the bar is relatively high as the plaintiff must show the defendant’s case is clearly without foundation but on a motion for summary trial the plaintiff need only establish its case on a balance of probabilities.2) Geographical separation no longer plays a role in a confusion analysis. 3) A likelihood of damage, in the form of a loss of sales and business, can be inferred from the parties' being direct competitors. A more detailed comment concerning the initial motion is available at Consider Summary Judgement or Trial in the Federal Court. 


In Milano Pizza Ltd v. 6034799 Canada Inc. 2023 FCA 85 the appellants argued that the Federal Court applied an incorrect legal test when assessing whether the appellants had control over their licensees within the meaning of subsection 50(1) of the Trademarks Act. The Appellate Court dismissed the appeal. They said control over the finished product is required to ensure the same quality across all licensees. A more detailed comment is available at Non-Compliance with the Trademarks Act Leads to an Unfavourable Result. 


In Shaoguan Risen Trading Corporation Ltd. v. Dong Phuong Group Partnership 2023 FC 748 there were problems relating to differences in the translation of the applicant’s Chinese character name depending on the method of translation used. A more detailed comment is available at Checks and Balances in the Section 45 Regime.


In Kiva Health Brands LLC v. Limoneira 2023 FC 774 the court said that the Trademarks Opposition Board should look at the quality of the evidence adduced by the parties i.e., the assignee and the assignor concerning the existence and effect of an assignment.

In Jack Daniels Properties Inc. v. Vip Products LLC (2023), 599 U.S. 140 (2023) the US Supreme Court said when an accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark. such use falls within the heartland of trademark law and does not receive special First Amendment protection. A more detailed comment is available at Trademark Infringement and Freedom of Expression.


In Energizer Brands, LLC v. Gillette Company 2023 FC 804 the primary issues related to claims for depreciation of goodwill associated with the plaintiff’s trademarks. The court said the determination must be made from the perspective of the “somewhat hurried consumer”. In addition, a trademark’s value can be lowered when different users bandy it about or when their actions cause “blurring” (whittling away the trademarks ability to distinguish the owner’s goods or services and attract consumers) or “dilution’ (resulting in lesser distinctiveness.) At trial the plaintiff was unable to convince the Judge that the reference to the Bunny brand was sufficient to show depreciation of the plaintiff’s goodwill. A similar result was arrived at concerning “the next leading competitive brand” which is not an Energizer Trademark, nor was it sufficiently similar to the Energizer Trademarks to evoke one of them to a hurried consumer. The casual observer would not recognize the phrase used by Duracell as a mark of Energizer, and without a “link, connection or mental association in the consumer’s mind” with an Energizer Trademark, there can be no depreciation. A more detailed comment is available at 15 or 20% Longer Lasting.


In Spirit Bear Coffee Company Inc. v. Kitasoo First Nation 2023 FC 1185 the court dismissed an appeal from the Trademarks Opposition Board. It was found on the filing date of the application, the applicant could not have been reasonably satisfied it was entitled to use the applied for mark because of a licence it had entered into with the opponent relating to the use of the mark A more detailed comment is available at Bad Faith as a Ground of Opposition.


In Dragona Carpet Supplies Mississauga Inc. v. Dragona Carpet Supplies Ltd. 2022 FC 1042, appeal dismissed 2023 FCA 228 The parties were two businesses run by separate branches of an extended family. Both used trademarks and trade names incorporating the word DRAGONA. On a motion for summary judgement the Judge concluded that the defendant had sufficient rights in the DRAGONA trademark that it could not be said they were misrepresenting those rights. The plaintiff could not show passing off was occurring and the action was dismissed. If there was confusion it resulted from the failure of the founder to develop a proper plan for the use of the mark and was "one of the misfortunes which occur in life”.


In Tweak-D Inc. v. Attorney General of Canada 2023 FC 427, appeal dismissed 2023 FCA 238A it has been established that a palpable and overriding error must be shown to successfully appeal from an Examiner's refusal of an application for a mark for questions of fact and questions of mixed fact and law without an extricable legal question. The palpable and overriding error standard is highly deferential and authorizes appellant intervention only where an error is both obvious and determinative of the outcome. A more detailed comment is available at A Palpable and Overriding Error Must be Shown to Successfully Appeal From an Examiners Refusal.


If you have questions, please contact me at mckeown@gsnh.com.

Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com


These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.


A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.



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