Trademark Law

The year 2014 will be remembered as the year when Canada rewrote its trademark laws. Much has been written on this subject and much more will be written over the next few years. However, 2014 was also an exceptionally busy year for trademark cases in Canada. While no single case stood out above the rest, there were a number of interesting cases of which both legal professionals and brand owners should take note.

When is a trademark clearly descriptive of geographic origin?

In Lum v Dr Coby Cragg Inc the Federal Court considered whether the registered mark OCEAN PARK for use with “dental clinics” was clearly descriptive of place of origin, as the dental clinic in question was located in an area called Ocean Park. The court applied a two-part test that:

• the mark must point to a place; and
• the place must be indigenous to the services in question.

The plaintiff failed on the second part of the test as Ocean Park was not indigenous to dental services. There was no evidence that a reasonable person hearing the term 'Ocean Park' would automatically think of going to the dentist, and as a result the registration was maintained.

In MC Imports Ltd v Afod Ltd the Federal Court considered whether the registered mark LINGAYEN, covering a variety of Filipino foods – including bagoong, a fish sauce – was clearly descriptive of the place of origin of these products. The evidence showed that Lingayen was a municipality in the Philippines and a known source of bagoong. Further, the registrant’s goods originated from Lingayen. As such, the court deemed the mark to be clearly descriptive of the place of origin and the registration was ordered to be expunged.

The Federal Court also considered the issue from the perspective of the ordinary consumer and concluded that he or she would not be without knowledge, and would have some intelligence and concern about the item being purchased. The ordinary consumer in this case would essentially be Canadians of Filipino or Southeast Asian origin, a group among which LINGAYEN would be viewed as clearly descriptive of origin.  

Both of these decisions have been appealed, providing the Federal Court of Appeal an opportunity to clarify the test to be applied in determining if a mark is objectionable on the basis that it is clearly descriptive of place of origin.

Distinctiveness of geographical designation not linked to absence of deception

London Drugs Limited v International Clothiers Inc concerned London Drugs, a well-known Canadian drugstore chain which owns various trademark registrations incorporating the term 'London'. It appealed a decision of the Opposition Board that allowed applications for the trademark SMITH & BARNES LONDON, covering a variety of retail store services and related wares.

In assessing confusion, the Federal Court rejected the argument that a trademark incorporating a geographical term may be distinctive where it is used on wares or services that have no pre-existing connection to the designation. It noted that the distinctiveness of a mark has to do with its originality, uniqueness and inventiveness, not with the absence of deception. Geographical designations such as 'London' are not inherently distinctive, and should not be accorded a high degree of protection unless they have acquired distinctiveness over time. The court upheld the board’s decision and rejected the appeal.

Assessing confusion between inherently weak letter marks

In Gemological Institute of America v Gemology Headquarters International an application for the mark GHI was opposed by the Gemological Institute of America on the basis of confusion with its registered trademark, GIA. Both marks covered goods and services in the field of gemology. The Opposition Board noted the inherent weakness of marks consisting of letter acronyms and rejected the opposition. On appeal to the Federal Court, fresh evidence was filed to show that while not inherently distinctive, the opponent’s GIA mark had been used over a significant period of time and was well known in Canada. The court noted that if this new evidence had been put before the board, it would have approached the confusion analysis differently and would have considered that the opponent’s mark was well known. The appeal was allowed, and the application to register GHI was refused. The court’s decision has been appealed.

Consideration of nature of wares and channels of trade

In Hayabusa Fightwear Inc v Suzuki Motor Corporation the applicant, a company specialising in mixed martial arts, appealed the board’s decision to refuse its application to register HAYABUSA for use with clothing. Suzuki opposed the application based on its registration for the identical mark HAYABUSA for motorcycles and on its prior use of HAYABUSA with motorcycles and caps.

The court found that the board had failed to consider the different channels of trade for the parties’ products. As Suzuki did not hold a registration covering “caps”, it was imperative to consider its actual use with these goods, which involved sales strictly through authorised Suzuki dealers (ie, a single channel of trade and to targeted consumers). The fact that it would be virtually impossible to find the parties’ wares in the same channels of trade should have been determinative of the matter in favour of Hayabusa Fightwear. The court set aside the decision of the board and allowed the application.

Similarly, in Bridgestone Corporation v Campagnolo SRL the nature of the wares and channels of trade were key considerations. Campagnolo, a manufacturer of track and competitive road racing bicycle parts and accessories, applied to register the trademark POTENZA for bicycle parts and accessories, but not including tyres, brakes, wheels, rims and spokes. Bridgestone – primarily known for its automotive products – opposed based on its registration of the identical mark POTENZA in association with tyres, tubes and wheels. The board held that there was no reasonable likelihood of confusion, and on appeal the court agreed.

Bridgestone argued that it was erroneous to consider only current channels of trade – just because Campagnolo sold high-end bicycle components in specialty stores did not mean that it would not market a cheaper line in big-box stores in the future. The court disagreed, noting that the parties’ respective statements of wares must be read with a view to determining the probable channels of trade as opposed to the possible channels of trade.

Always confirm that the other side is still active

In Bacardi & Co Ltd v The Devil’s Martini Inc an application for the trademark DEVIL’S MARTINI was unsuccessfully opposed by Bacardi, which appealed to the Federal Court. During the appeal, it became apparent that the applicant had been dissolved. After confirming that the Office of the Public Guardian and Trustee in Ontario did not intend to continue with the application and that the director appointed under the Ontario Business Corportations Act did not intend to oppose the appeal, the court held that the mark was not registrable under Section 30 of the act and ordered that the application be refused. 

Issue raised for first time on appeal refused

In Cohen v Susan Fiedler Incorporated Cohen’s application for the 'F CANCER and design' mark was successfully opposed by Fiedler on the basis of Fiedler’s prior use of a series of unregistered F CANCER marks. On appeal, Cohen raised an entirely new argument – that the word 'f***' was obscene and therefore prohibited by Section 9(1)(j) of the act. The court noted that the argument was “somewhat counter-intuitive” given that it would be fatal to Cohen’s own application, but Cohen conceded that her goal was not the registration of her own mark, but rather the collateral purpose of obtaining a ruling from the court that Fiedler had no enforceable common law rights to its F CANCER marks.

The court held that the question should have been decided by the Opposition Board, the expert tribunal with the authority to decide such questions, and that there was no valid reason why the argument could not have been raised before the board. The appeal was refused and the court went on to assess elevated costs, given that the appeal had been brought for collateral purposes.

Strict interpretation of 'use in Canada' not applicable in Section 45 proceedings

In Ridout v HJ Heinz Company Australia Ltd, a non-use cancellation proceeding, the registrar of trademarks maintained the registered mark OX & PALM for use with meat and processed meat. The evidence before the registrar showed that the registrant had received a purchase order for the wares and the goods were delivered to a shipper in Australia before expiry of the material period, but that they were subsequently delivered to the Canadian customer three days after the expiration of the material period. The registrar maintained the registration, noting that the mark was not “deadwood” and that this case did not warrant a strict interpretation of 'use'. The Federal Court upheld the decision, concluding that there was a transfer of property in the goods in Canada when they were delivered to the shipping entity in Australia, so long as the delivery to Canada was ultimately completed.

Thymes decision distinguished

The Reitmans (Canada) Ltd v Thymes Ltd decision confirmed that an application claiming use and registration in another jurisdiction must have all of the requisite elements present (use and the foreign registration, or at least a pending application) as of the Canadian filing date. If not, the application could be successfully opposed. Coors Brewing Company v Anheuser-Busch, LLC established that an allegation of an improper foreign registration and use claim in a registered mark did not constitute a ground for expungement. A lack of foreign use at the Canadian filing date is not fatal to registered trademarks that are issued based on a claim of foreign use and registration, provided that the claim was true at the time that it was made.

In August 2010 Anheuser filed a US application to register GRAB SOME BUDS based on intended use in the United States. A corresponding Canadian application was filed in mid-September 2010 based on proposed use in Canada. Use commenced in the United States in late September 2010 and the US case issued to registration in March 2011. In February 2011 Anheuser amended its Canadian application to rely on foreign (US) use and registration. The Canadian application proceeded to registration on this basis.  

Coors applied to expunge Anheuser’s Canadian registration, arguing that it was invalid since use of the mark did not commence in the United States until after the Canadian filing date. The court disagreed and upheld the registration. The sole basis for invalidating the registration raised by Coors was the alleged improper foreign registration and use claim. However, the grounds on which a registration may be expunged are set forth in Section 18 of the Trademarks Act, and the court confirmed that non-compliance with procedural filing requirements under Section 30 of the act does not constitute grounds for expungement. Further, while a misstatement in an application may present a ground for expungement, the statement made by Anheuser in its application was true when it was made, and as such it did not constitute a misstatement.

Section 9 objection at examination overturned by Federal Court

In Jack Black LLC v Canada (Attorney General) the applicant applied to register JACK BLACK for skincare products. The examiner objected to the registrability of the mark on the basis that Jack Black is a “famous living individual”. On appeal, the Federal Court concluded that the print-outs from the Internet relied on by the examiner in reaching his decision were insufficient to establish that there was an individual named Jack Black with a significant public reputation across Canada. The applicant also filed new evidence showing that the skincare products offered under its mark were not new, and in fact benefited from a fairly large circulation, without objection from Black.

Federal Court considers official marks

In Terrace (City) v Urban Distilleries Inc, which concerned the official mark SPIRIT BEAR, the failure to show prior adoption and use resulted in a declaration that the official mark was unenforceable. The court noted that adoption “is a low bar; all a party must do is state it has adopted the mark”. Use requires that the mark be made available for public display before publication. The court noted that “such use cannot be abstract. It must be associated with a particular ware or service, and a connection must be made with the wares or service and the mark”.

In surveying the relevant case law, the court noted that public display can include the display of a mark on a website in association with a particular service; use can be found when an announcement for the services and a logo, containing the mark and a graphical depiction of the mark, have been published in a public newsletter. A mark is not used where it is not distinguished from surrounding text, nor when it is used on internal communications only. 

The evidence fell short of establishing use, with the result that the SPIRIT BEAR official mark was deemed unenforceable. The court’s decision has been appealed.

In TCC Holdings Inc v Families as Support Teams Society the court considered whether a registered charity qualified as a public authority for the purposes of Section 9 of the act. The respondent, the Families as Support Teams Society, was a registered charity when it obtained the protection of Section 9, but its charity status was revoked shortly thereafter. It did not participate in the proceedings.

The court was satisfied that the respondent was not a public authority, noting that it did not meet the test of significant governmental control. As such, the court did not have to consider whether its activities satisfied the public benefit requirement. The court further noted that even if it had been a public authority, it ceased to be one when its charitable status was revoked, such that it was not entitled to benefit from the official mark.

Punitive and aggravated damages distinguished

In Bauer Hockey Corp v Sport Maska Inc, on a motion dealing with the sufficiency of pleadings, the Federal Court of Appeal commented on the distinction between punitive and aggravated damages. The court noted the following:

• Punitive damages are intended to punish the defendant in situations where the defendant’s misconduct is so malicious, oppressive and high handed that it offends the court’s sense of decency. They are not limited to situations of litigation misconduct.
• Aggravated damages are intended to compensate the plaintiff and are usually awarded in relation to intangible injuries (humiliation or mental distress), and it is questionable whether such damages can be claimed by a corporation.

The court struck Bauer’s claim to aggravated damages, but allowed the claim for punitive damages to remain in the statement of claim. While allegations of wilful and knowing infringement alone do not support a claim to punitive damages, the court held that it was not plain and obvious that the statement of claim disclosed no reasonable cause of action with respect to punitive damages, as there were other allegations to be considered.

Criminal penalties stemming from sale of counterfeit goods

In R v Strowbridge the accused was seen selling counterfeit brand-name products from the back of a van parked next to the highway, and C$500-worth of products were seized. He pled guilty to fraud and copyright and trademark infringement, and was sentenced to 15 months in prison – six of which were for copyright infringement under the Copyright Act and trademark infringement under the Criminal Code.

On appeal, the Newfoundland Court of Appeal canvassed sentencing decisions relating to the sale of counterfeit goods, primarily under the Copyright Act, most of which resulted in conditional sentences. The court distinguished between operations where customers buy goods from an ostensibly legitimate storefront operation versus the purchase of goods from the back of a van parked on the side of a highway, noting that while purchasers of counterfeit goods can be victims, there was no indication that they were in this case. The court deemed Strowbridge’s operation to be marginal and unsophisticated. 

The court agreed that a six-month sentence was disproportionately long and reduced it to two. This decision is of particular interest given the recent amendments to the Trademarks Act, which provide for significant criminal penalties in relation to counterfeiting activities.

Source: http://www.iam-media.com/reports/detail.aspx?g=3a07dca3-381e-4054-b2be-d0209a329ad4 

Delhi High Court restrains distribution and exhibition of Badmashiyaan

Delhi High Court has issued an order restraining the distribution and exhibition of the film after a complaint of copyright infringement was filed against makers of the film VRG Motion Pictures.

MSM Motion Pictures and Kaleidoscope filed a plea stating that Badmashiyaanwas a blatant copy of the Korean film Couples, whose rights had been acquitted by them for their yet to release film Mango. 

"The Delhi High Court has restrained the distribution and exhibition of the trailer and the film titled Badmashiyaan, on the basis of a claim for copyright infringement by MSM and Kaleidoscope. The Plaintiffs claimed that Badmashiyaan is a copy of the Korean film Couples and their yet to be released film, Mango. The plaintiffs also claimed this relief based on an exclusive right that they obtained from the producer of Couples to make the Hindi language remake of Couples."

http://www.bollywoodhungama.com/news/4665685/Delhi-High-Court-restrains-distribution-and-exhibition-of-Badmashiyaan

Consumer Products being watched by Big Companies Like Hawks

Everyone deals with trademarks on a daily basis. Trademarks are everywhere. They are in your kitchen, in your bathroom, in newspapers, in magazines, in restaurants, in department stores, on television, on radio — even on benches and buses. As consumers, our purchasing decisions are constantly influenced by trademarks. Everyday each of us encounters hundreds of trademarks. A trip to a grocery store or mall will put you in contact with thousands of trademarks in just one visit. As business people, we need a better understanding of why trademarks are so important to effective commerce and how to protect ourselves.

Venice Cookie Co. Forced To Rebrand Their Chocolate Chews

First it was Conscious Care Cooperative and TinctureBell. Hershey, the national candy company, didn’t like the names Reefer’s Peanut Butter Cups, Mr. Dankbar, Ganja Joy, Dabby Patty and Hasheath bars, alleging the names were too similar to their own Reese’s, Mr. Goodbar, Almond Joy, York Peppermint Pattie and Heath. Most recently, Venice Cookie Company found itself in a conflict with Tootsie Roll Industries.

After receiving a letter demanding they quit selling their chocolate chews under the name “Tai’s Cute lil’ Tootsies,” the Venice Cookie Co. quickly got to work on rebranding their product as “The 4.20 Bite.”

Do consumers really believe Hershey or Tootsie Roll Industries is making marijuana-infused candy? I don’t think so, and I don’t think these companies do either. However, the simple fact that consumers will seek out certain products, or even avoid certain products, depending on the trademark, creates a strong argument for brands looking to protect their pre-existing trademarks.

Generally, to win a trademark claim for infringement, the suing party (the plaintiff) must establish that (1) the mark is valid and legally protectable; (2) the mark is owned by the plaintiff; and (3) the party being sued (the defendant) is likely to create confusion concerning the origin of the goods or services by use of its mark to identify goods or services.

Important Factors To Consider When Comparing Trademarks

When determining likelihood of confusion, courts use several factors derived from a 1961 case. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).  These factors, sometimes known as the “Polaroid factors” may vary slightly as federal courts apply them throughout the country. The factors are intended as a guide.  Let’s break down a few.

Strength of the Mark

A mark is “weak” if it is descriptive and has not acquired sufficient secondary meaning. A mark is “strong” when it has acquired secondary meaning, or if it is arbitrary, fanciful or suggestive.  Let’s face it who hasn’t used the word “tootsies” to refer to toes.  Kenny Morrison, co-founder of The Venice Cookie Company even says he was inspired to make this product when he saw cute lil’ baby toes.  I know I personally say “tootsies” when I see cute, little baby feet.  It makes perfect sense to me why The Venice Cookie Company would pick the term “tootsies.”  Look at the chews, they look like fat, pudgy toes.

Similarity of the Marks

As a general rule, marks must be compared in their entirety, including appearance, sound, connotation, and commercial impression.  OK, I’ll give Tootsie Rolls a little weight on this one.  TOOTSIE versus TOOTSIES.  Tootsie Roll Industries was fortunate that Stern & Saalberg Company realized the value of trademarks and obtained a federal registration for the mark TOOTSIE back in 1909.  Title eventually ended up in the name of Tootsie Roll Industries, although it is not clear how from the chain of title recorded at the United States Patent & Trademark Office.  Tootsie Roll Industries has since registered the mark TOOTSIE in other formats and for various goods.  I  wonder  how many people actually refer to the candy as TOOTSIE separate and apart from “ROLL.”  If I want a piece of the candy, I say give me a Tootsie Roll.

Similarity of the Product

The standard of infringement is whether an ordinary prudent purchaser would be likely to purchase one product, believing he was purchasing the other.  In other words, would TOOTSIES (especially used in close proximity with Tai’s Cute ‘lil) when used for cannabis-infused chocolate chews be confused with TOOTSIE candy. As a general rule, a trademark owner can use an identical or  similar mark as long it is on completely dissimilar goods. For example, the use of the mark Lexus on automobiles was determined not to confuse consumers of the Lexis database services.  The issue here appears to be that both companies are selling chocolate food products.  But anyone who is familiar with the cannabis industry knows that none of the big guys are making cannabis-infused products.  Advertising and distribution channels are not similar either.  One could also argue that the Venice product is a medicine not a candy.

Actual Confusion

Proof of actual confusion is not essential in determining trademark infringement. However, such evidence may be compelling in an infringement case. We know Tootsie Rolls has been selling its product since as early as 1909. Venice Cookie has been selling its product for several years. Why did it take years for Tootsie Rolls to complain? I suspect that it wasn’t until the internet made it easier for Tootsie Rolls to find Venice Cookie’s product that they took notice.  Unfortunately, the internet is a two-edged sword. I find it very unlikely that anyone actually complained to Tootsie Rolls that they were confused.

Competitor’s Intent

Although intent is not essential in proving infringement, it is a relevant factor. According to the Restatement of Trademarks, it is appropriate to consider intent because a party intending to cause confusion will generally be successful in doing so. Direct evidence of the competitor’s intention to deceive is usually unavailable and the complaining party must depend on circumstantial evidence such as how the competitor’s mark was chosen. The co-founder of Venice Cookie has already told us how he chose the mark. Remember those cute pudgy baby toes.

Bridging the Gap

What is the likelihood that the senior user will bridge the gap.  If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion.  This basically means is it probable Tootsie Rolls Industries will sell cannabis-infused products.  Who knows, maybe someday companies like Tootsie Rolls will make products in the industry, but I don’t see that happening any time soon.

Degree of Care Exercised by the Consumer

The degree of care a consumer takes in making purchases varies according to the purchase. For example, someone buying an expensive item is more likely to be discriminating and is less likely to be confused as to similar marks. The theory here is that you buy expensive items less frequently. Under this theory, the courts require a more substantial showing of similarity to justify a claim of likelihood of confusion. The same is true for items purchased by “sophisticated buyers,” such as doctors, avid hobbyists, interior decorators, realtors, etc., who arrive at the purchasing point already knowledgeable about the goods. A sophisticated buyer is less likely to be confused because of their superior knowledge as to purchasing decisions.

An “ordinary purchaser,” particularly one that buys inexpensive items on impulse is considered the most likely to be confused by similar marks.  It would be an interesting argument to make that a MMJ patient falls in the category of a “sophisticated buyer.” Unlike the ordinary purchaser who quickly scans the shelves at a supermarket and impulsively buys a box of candy without realizing that he bought the wrong one and was confused as to the choice of brands, a MMJ patient arrives at a dispensary already knowledgeable about the goods he wants to purchase or is educated by the budtender before making a buying decision. There is also a significant difference in price between an ordinary piece of candy and MMJ edible.

Did Venice Cookie Company really need to change its product’s name? You decide for yourself… but I know where I stand. I think it would have been a very interesting case to see litigated. I understand why they didn’t fight. Trademark litigation is expensive and time-consuming, with no guarantee how it will be decided in the end, and entrepreneurs and start-ups can’t afford to take the risk most of the time. One thing is for certain, there will likely be many more trademark battles to come as the industry takes shape.

http://www.medicaljane.com/2014/09/13/the-big-companies-are-watching-consumer-products-like-hawks-beware/

US Bullying at TPP Negotiations for Big Pharma Profits. Intellectual Property Rights and the Sale of Generic Drugs

Outrageous US bullying by US Trade Representative Stan McCoy on intellectual property and health. McCoy puts profits of pharmaceuticals ahead of the lives of people.

“The world should stand up to the United States.  US corporations are not more important than people’s lives.”

A key dispute in the TPP negotiations is the patents on pharmaceutical drugs and medical procedures.  Long patents inflate the profits of the pharmaceutical industry by not allowing less expensive generic drugs on the market.

This means that people around the world will not be able to afford critical, often life-saving, drugs and medical procedures.  It also means that countries like Japan, Australia and New Zealand that have national health care systems will see the cost of healthcare rise to a breaking point, undermining some of the best health systems in the world.

Stanford McCoy of the US Trade Rep. His bullying tactics seek to prop up inflated pharmaceutical profits at the expense of thousands of lives.

In order for the US to get its way,Stan McCoy, Assistant US Trade Representative for Intellectual Property and Innovation, is chairing the meetings on intellectual properties and medicines.  He has been using bullying tactics to force countries to agree to positions that will harm people in the countries negotiating the TPP, including the US.

“The US has adopted a strategy of exhaustion in its bullying of negotiators on the crucial intellectual property chapter to force countries to trade away health in the Trans-Pacific Partnership Agreement negotiations in Salt Lake City,” according to Professor Jane Kelsey from the University of Auckland, New Zealand, who is monitoring the negotiations. ”The US has stepped up its aggression as they move towards their ‘end point’ of the TPP ministerial meeting in Singapore from 7 to 10 December.”

Margaret Flowers, MD a health policy expert from the US says

“The Office of the US Trade Representative is putting the interests of trans-national health corporations before the needs of people. If the US position is forced through, the TPP will extend patents for medications, medical devices and even procedures for exorbitant lengths of times. This will inflate prices, keeping treatments out of reach for those who need them. This will cause unnecessary suffering and death, especially for the most vulnerable populations, and will undermine health systems around the world and at home.”

“This is a loaded game,” Professor Kelsey said. “McCoy sets the agenda and timetable. Negotiators are working from morning until late at night and preparing to work all night, if necessary. ”This is a crucial period for New Zealand and a number of other countries,” Kelsey observed. The text published by Wikileaks last week shows they have tabled an alternative to the US proposed text that has been repeatedly rejected.”

“New Zealand’s trade minister Tim Groser and his counterparts from the other ten countries must tell the US to stop this behaviour now,” Kelsey said. Flowers added: “Countries negotiating with the United States should not allow themselves to be bullied but should stand up to the United States.  It is looking very unlikely that President Obama will be able to get TPP through the Congress. Why would any country negotiate against the interests of their people?”

The US has around twenty people in Salt Lake City for the intellectual property chapter, who can rotate. Some countries have only one delegate for crucial talks on intellectual property on medicines. Their negotiations on medicines have been extended beyond the dates that were scheduled before negotiators came.  They have continued despite the fact that some health negotiators, especially from poor countries, could not extend their stay.

This follows a pattern of abuse over recent rounds reported in Inside US Trade and other media, where McCoy has acted as a gatekeeper, deciding what proposals from other countries are allowed into the text and what are not.

“This is an early warning of the extreme bullying that can be expected in when the trade ministers seek to close the deal off in December,” Professor Kelsey warned.

Source:http://www.globalresearch.ca/us-bullying-at-tpp-negotiations-for-big-pharma-profits-intellectual-property-rights-and-the-sale-of-generic-drugs/5359221

Cadbury loses trademark case on Eclairs

 In a win for ITC Ltd, the Intellectual Property Appellate Board (IPAB) last week said that Cadbury India is no longer the owner of three trademarks containing the word Eclairs, putting to rest over a decade-old battle.

The three trademarks—Choclate Éclairs, Orange flavoured chocolate éclairs and Chocolate Eclairs pop—were ordered to be removed from the trademarks registry as the patent board found that Cadbury could not provide evidence showing the use of the three trademarks after they were registered.

“The only defence of the respondent is that they are registered proprietors both in India and abroad. Though the respondents (Cadbury) claim use since 1972, there is no evidence for the same,” said the order, adding that registration alone will not help the respondents to prove use. Cadbury is a subsidiary of UK-based Mondelēz International.

“Section 47 of the Trademarks Act, 1999, provides for removal by IPAB of a trademark on the ground of non-use, or if there has been no proof of use for a period of five continuous years from the date of application for registration of the trademark,” said Suchindran B.N., a lawyer practising at the Madras high court.

The implication of this order is that Cadbury can no longer claim to be the owner of the trademarks, which means Cadbury in the future cannot hold anyone for infringement of these marks, said R. Satish Kumar of Chennai-based law firm IP Lead.

Cadbury said it does not plan to pursue this matter further as the Cadbury Eclairs label has not been used by the company for a long time.

“The label mark for Cadbury Eclairs, which formed the subject matter of the litigation, has not been used by Cadbury for many years and hence we do not plan to take this matter further,” said a Cadbury India spokesperson in an email. “We continue to retain other trademark rights in the Cadbury Dairy Milk Eclairs brand and the IPABs decision, if any, has no bearing on those trademark rights. We are yet to receive IPAB’s order in this matter, therefore we wouldn’t be in a position to comment further on this, at this stage.”

The battle began when Cadbury’s in April 2005 filed an injunction in Ahmedabad high court seeking to restrain the use of the trademark Eclairs by ITC against its product called Candyman Eclairs. Since other manufacturers, too, have been using the word Eclairs, the court allowed ITC to use the name Candyman Choco Eclairs.

ITC filed an application with the IPAB in 2005 for the removal of the trademark from the registry.

Source:http://www.livemint.com/Companies/v2om2cMruwjp1CPzvPDXyO/Cadbury-loses-trademark-case-on-Eclairs.html

Marks & Spencer’s use of AdWords is trade mark infringement

http://www.lexology.com/library/detail.aspx?g=16208385-ceb4-4d5b-8994-8e3877a5a82a