Law Times

PAGE 12 FOCUS January 31, 2011 • Law Times SCC to consider rare trademark case BY JULIUS MELNITZER For Law Times I Matter considers geographic separation in dealing with expungement application "Over the past 10 years, the But the top court's decision t's quite rare for the Su- preme Court of Canada to rule on trademark issues. Supreme Court has considered only three trademark appeals and only one since 2006," says Jane Caskey of Ogilvy Renault LLP. last April to grant leave to ap- peal in Masterpiece Inc. v. Alav- ida Lifestyles Inc. has the poten- tial to be an adrenalin injection for trademark law. Th e court heard the substan- CANADIAN PHARMACY LAW Marie Berry UNDERSTAND CANADIAN PHARMACY LAW WITH THIS PLAIN LANGUAGE GUIDE TO THE RULES AND REGULATIONS Written by a well-respected Canadian community pharmacist and lawyer, Canadian Pharmacy Law provides a fundamental framework for explaining the underlying principles and doctrines of law within the legal system as they apply to the practice of pharmacy. It includes all of the latest case law, jurisdictional comparison charts of practice in pharmacy and much more. Through clear and concise explanations, you'll gain insight into: professional liability, counseling liability and prescription-error • • • Looseleaf (3 volumes) • $264 Subscription updates invoiced as issued (2/yr) P/C 0971030000 ISBN 0-88804-192-6 Prices subject to change without notice, to applicable taxes and shipping & handling. • • • liability intellectual property—patents and generic drugs drug regulations that dictate day-to-day professional practices—both provincial pharmacy statutes and federal schedules to the Food and Drugs Act and the Controlled Drugs and Substances Act provincial legislation dealing with the collection, use and disclosure of personal health information licensing and disciplining of the profession Internet pharmacy Visit canadalawbook.ca or call 1.800.565.6967 for a 30-day no-risk evaluation tive appeal on Dec. 8 and reserved its decision on the three key issues before it: whether the test for confusion should take into ac- count potential future confusion; whether a likelihood of confusion can exist between two existing trademarks that aren't competing in the same geographic area; and whether parties can overcome a likelihood of confusion by refer- ence to the designs that accom- pany trademarks. Masterpiece and Alavida Lifestyles were both in the re- tirement residence business. Masterpiece claimed it had been using various trademarks that included the word "mas- terpiece" for about fi ve years be- fore Alavida registered the mark "Masterpiece Living" in 2007. Masterpiece was unaware of the registration and didn't op- pose it but subsequently moved to expunge it on the basis that it had already acquired the rights to it and because Alavida's mark was likely to create confusion. Th e Federal Court of Appeal ruled against Masterpiece. It concluded that future confusion wasn't a relevant consideration because the statutory language prohibited registration only if confusion existed "at the date of fi ling" of the application. "We are therefore of the view CANADA LAW BOOK® LT0131 that in an application for ex- pungement grounded on para- graph 16(3)(a) [of the Trade- marks Act], the relevant time to test for confusion is the date of fi ling of the application for the trademark for which expunge- ment is sought." Th e court also ruled that confusion wasn't a consider- ation for the purposes of an ex- pungement application when the parties weren't using the marks in the same geographic area at the date of application. "At the date of fi ling of the respondent's trademark, the ap- pellant did not sell its product in the same market as the respon- dent," the court noted. "Th is court need not consider the ap- pellant's plans for expansion af- ter that date." Finally, the court held that judges in expungement ac- tions could consider designs surrounding marks in deciding whether confusion existed. In- deed, the court observed that Masterpiece had provided no precedent for the proposition that the consideration of designs was an unacceptable method of analyzing confusion. "On the other hand, we refer the appellant to United Artists 'The International Trademark Association intervened in the case because of the importance of the principles involved,' says Clarke Hunter. Corp. v. Pink Panther Beauty Corp. [sic] [where] this court specifi cally stated that the 'getup,' or the way that a product is packaged and as a consequence the way the mark is presented to the public, is an important factor in determining whether confusion is likely." Th ese issues were signifi cant enough to attract global inter- est to the case. "Th e International Trade- mark Association intervened in the case because of the impor- tance of the principles involved," says Clarke Hunter of Macleod Dixon LLP's Calgary offi ce. He represents Masterpiece. Th is marked the second time in recent years that the Supreme Court has recognized the associ- ation as an intervener in a trade- mark case. In 2006, it intervened in Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée., in which the top court clarifi ed the law of dilution in Canada. Among other things, the association, represented by Daniel Bereskin of Bereskin & Parr LLP's Toronto offi ce, argued in Masterpiece that the Federal Court of Appeal incorrectly took into account the geographic separation be- tween a prior user and an ap- plicant when determining if there's a likelihood of confu- sion between the two marks. "Th e decision of the Federal Court of Appeal, unless correct- ed, can complicate trademark clearance in Canada," Bereskin said in a press release after the hearing. "It also contradicts the Trademarks Act, which requires that the owner of a valid trade- mark registration must be the fi rst to have applied to register or used the mark before anyone else uses a similar mark or name anywhere in Canada." LT www.lawtimesnews.com

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