Canadian trademark jurisprudence saw numerous interesting developments during 2010. Our courts and Opposition Board adopted new approaches to certain ‘old’ concepts and reinforced others.
After the Supreme Court of Canada’s ‘encouraging’ obiter comments in the 2006 Barbie and Veuve Cliquot cases, recognising the ability of the fame of a trademark to transcend its product and service line in certain circumstances, last year, both the courts and the board appeared reluctant to ‘push the envelope’ of the protection afforded to well-known or famous marks to broader categories of wares or services.
In Wrangler Apparel Corporation v Big Rock Brewery Limited Partnership, Groupe Procycle Inc v Chrysler Group LLC and Davide Campari-Milano Spa v Mastronardi Produce Ltd (appeal pending), the fame of the Wrangler mark did not transcend the apparel market into alcoholic beverages, the monopoly enjoyed by the trademark ‘Rocky Mountain’ for bicycles did not extend to cars, and the reputation acquired by the Campari mark in Canada for liqueurs and bitters was limited to alcoholic beverages, thus precluding confusion with Campari for tomatoes.
The Opposition Board also considered the significance of possible drug error as a surrounding circumstance in assessing confusion for pharmaceuticals. In Sanofi-Aventis v GlaxoSmithKline Biologicals SA, the registrar noted that although the cardiovascular medications associated with the opponent’s trademark PLAVIX differed from the vaccines covered by the applicant’s trademark PACIRIX, the parties’ wares were still related because they were both drugs.
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SCC, pharmaceuticals, trademark case law
