Law Times

www.lawtimesnews.com Page 10 February 11/18, 2008 / Law Times W hen is an icon not an icon? Les Nordiques du Québec haven't taken stick to puck in anger since 1995 but their brand lives on, to the con- sternation of a Quebec auto parts retailer who has been rebuffed in his attempt to block another na- tional icon, Canadian Tire, from registering a similar trademark. The national retailer had tried to register the name "Nordic," with a snowflake logo, to embla- zon a line of winter tires but was opposed by auto retailer and ma- chine shop Accessoires d'Autos Nordiques Inc., which claimed there would be confusion in the marketplace. The trademark opposition board agreed, saying the trademarks were "pho- netically" similar, that Nordiques had used the trademark since 1990, and that both were in similar businesses. Canadian Tire went to Federal Court, where it presented a survey showing most francophone Quebec- ers thought first of Les Nordiques, the old NHL team, when asked about the word — not the auto parts retailer. The court overturned the opposition board ruling and the Federal Court of Appeal upheld the decision, dismiss- ing Nordiques' appeal. Nordiques has decided not to proceed to the Su- preme Court of Canada. Ottawa lawyer Bayo Odutola, who acted for Accessoires d'Auto Nordiques on appeal, says the decision is some- what frustrating because it would seem to contradict the previ- ous precedent-setting Supreme Court of Canada cases of Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, and Mattel Inc. v. 3894207 Canada Inc. The court held that a retailer, Cliquot, with stories in Quebec and Ottawa was not infringing on the famed champagne maker, nor confusing the market, be- cause they were in two unrelated businesses, and that Veuve Cli- quot had not shown any evidence their brand had suffered. In the other case the court held Mattel's Barbie doll trade- mark could not be confused with Barbie's restaurants. In both cases the court recognized confusion could be an issue but was not the only issue to be weighed in mak- ing a decision. Odutola, whose firm pub- lishes the industry standard Odutola on Canadian Trade- mark Practice, says the test applied at Federal Court of Appeal was that, despite the obvious similarities in the two businesses and names, there was another brand, the hockey club, which held more notori- ety in the minds of consumers. If there was any claim of confu- sion it probably accrued to the hockey club, which was sold and relocated to Colorado as the Avalanche in 1995. "They have placed the bur- den on the owner of the registra- tion to establish that they have a reputation that is not dwarfed by a well-known or better-known marque," says Odutola. However, says Odutola, con- fusion is still a key issue, even if it's a family name. He refers to to the unusual matter of father versus daughter in British Co- lumbia. In Stenner v ScotiaMcleod the B.C. Supreme Court held the fa- ther's name in conjunction with financial services was a recog- nizable trademark and that the daughter and her husband's use of the family name in their own financial services business was an infringement. The case, which dragged on for several years, involved Gor- don Stenner, a high-profile in- vestment advisor, who used a radio show to attract clients. He had trained his daughter Van- essa in the business and she was successful enough to run the of- fice. Gordon had agreed to sell the business to his daughter on retirement, but when the deal soured, tensions rose. Vanessa and her husband split from the National Bank, under whose auspices the busi- ness operated, and set up with rival ScotiaMcleod, using her name and her husband's and op- erating under the name Stenner- Campbell. The court ruled that without modification of a Christian name such as Vanessa, there was in fact a "passing off " and ordered her to pay compensation. However, while the court re- strained her from future use of es- tablished Stenner brands like Team Stenner or in conjunction of words like "investment," "team," or "fi- nancial," it held she could use her own name in full. a tire by any other name . . . Bayo Odutola says confusion is still a key issue, even if it's a family name. FOCUS With over 20,000 Office Products finding what you want is easy. Just one of our Dye & Durham BASICS ® featured Office Products is the D&D Storage Boxes Attached hinged lid. Holds letter or legal folders. Easy to assemble, pop-open box. 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Jenna obtained her Juris Doctor from the University of Toronto in 1998 and was called to the Ontario Bar in 2000. She earned a Bachelor of Science in Co-operative Applied Physics at the University of Waterloo in 1995. Dimock Stratton ��� is pleased to introduce the firm's newest partner, Jenna Wilson. BY IAN HARVEY Law Times LT REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS REPRINTS Been in Law Times? Want a record of it? Promote your law firm by ordering reprints of articles from the voice of the profession — Law Times! $175 - $225/reprint We provide a color PDF and unlimited reproduction rights. For more information or to order reprints, please e-mail Gail Cohen at: gcohen@clbmedia.ca LAW TIMES *Pages 1-16.indd 10 7/18/08 12:45:33 PM

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