Intellectual Property Weekly Abstracts Bulletin — Week Of November 14

Trademark Decisions

Court of Appeal finds mark confusing with Opponent's design mark, where both marks considered in the same context have no more differences than comparing two word marks 
Pizzaiolo Restaurants Inc. v. Les Restaurants La Pizzaiolle Inc., 2016 FCA 265

This is an appeal from the Federal Court's decision setting aside the Registrar of Trade-marks decision to the extent that it dismissed the applicant's opposition regarding the mark PIZZAIOLO and Design (see 2015 FC 240our summary here). On appeal, the only question was whether the Federal Court properly applied the reasonableness standard to determine that the Board had erred in reaching its conclusion that the opposition should be rejected.

In dismissing the appeal, the Court of Appeal agreed with the Federal Court that the Board's analysis of the opposition based on paragraph 12(1)(d) of the Trade-marks Act was lacking in that the Board had failed to consider the full scope of the protection afforded by the registration of the respondent's mark.

The Board acknowledged that the scope of protection of the registered mark included the use of the word "Pizzaiolle" alone, and the respondent's use of the three designs reproduced in paragraph 7. On this basis, the Court of Appeal found that "it is most likely that using the word "Pizzaiolle" in an oval or simply on an oval sign would also qualify as use of the registered mark" since the word remains the dominant feature of the Design Mark.

As mandated by the Supreme Court in Masterpiece, the Court of Appeal considered the two marks in the same context (i.e. the words "Pizzaiolle" and "Pizzaiolo" in square lettering in a lighter shade on a dark oval), and concluded that there were no more differences than when comparing the two word marks, in respect of which the Board had already concluded that there would be a likelihood of confusion. Thus, the Board's decision to dismiss the opposition in respect of the Design Mark was not within the range of acceptable and defensible outcomes.

Lastly, the Court of Appeal cautioned that one should be careful not to give the principle set out in Masterpiece too great a scope as there would no longer be any need to register a design mark when one has a word mark. The Court of Appeal noted that its conclusion was entirely based on the facts of this case and the Board's findings as to what would constitute proper use of the registered mark.


Federal Court finds defendant allegedly dealing in counterfeit Burberry goods in contempt 
Burberry Limited v. Ramjaun (Laguna Trading), 2016 FC 1188

The Federal Court has found the defendant in this trademark proceeding in contempt of court.

The within action was commenced in September 2015 by Burberry. It alleges the defendant has dealt in counterfeit Burberry merchandise, resulting in the infringement and passing off of Burberry's trademarks.

Following events occurring in the United Kingdom, Burberry obtained an ex parte Mareva injunction in Canada, enjoining the defendant from dissipating his assets and other relief.

Burberry subsequently filed motion materials seeking a show cause order against the defendant based on allegations that he had dealt with his assets in contravention of the earlier orders, that his sworn statement was deficient and that he had lied under oath. The Court held that Burberry had established a prima facie case in contempt.

At the contempt hearing, oral evidence was provided by both parties. The sole issue to be decided was whether the evidence established the alleged contempt of the defendant beyond a reasonable doubt.

The Court concluded the defendant was in contempt of seven of the eight counts in the Show Cause Order. These related to the withdrawal of money from a bank account and for failing to disclose the identity of a bank account as a part of his assets. The Court did not conclude that the defendant was lying when he testified.

Submissions as to the relevant penalty are pending.

Supreme Court Updates

Nova Chemicals Corporation v. Dow Chemical Company, et al . (Federal Court) (Civil) (By Leave) (Court File No. 37274)

On November 7, 2016, Nova Chemicals Corporation filed an Application for Leave to Appeal from 2016 FCA 216 (our summary here ), which is an appeal from the decision in 2014 FC 844.

AstraZeneca Canada Inc. et al. v. Apotex Inc. et al. (F.C.) (Civil) (By Leave) (Court File No. 36654)

On November 8, 2016, the Supreme Court of Canada heard the appeal in AstraZeneca Canada Inc. v. Apotex Inc. The Court has reserved its Judgment. A webcast of the Hearing can be found here.

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