1

Footlocker Group Canada Inc. (formerly Venator Group Canada Inc.) v. R. Steinberg and the Registrar of Trade Marks

The Registrar decided to expunge registration for the trade-mark WOOLWORTH pursuant to section 45 of the Trade-Marks Act. Footlocker Group Canada Inc., owner of the trade-mark, is appealing the decision.

The Registrar found that the statements in the affidavit showing use of the mark in association with retail stores services were vague and did not show use during the relevant period. The photograph of the sign filed with the affidavit did not indicate when or where this sign was displayed. The sales figures presented were insufficient to conclude when and where these sales were made.

An additional affidavit was filed before the Court. This affidavit indicated that the sign in the photograph was affixed to the front of a store located in the City of Toronto during the relevant period.

The Court examines the evidence and the pleadings and indicates that the dispute between the parties comes down to a single issue of whether use of the trade-mark during the relevant period can be attributed to the registered owner.

The Court concludes that the connection between use and the registered owner is not clear and nothing in the evidence deals with this matter directly. The gaps in the affidavits are too great.

The appeal is dismissed.

Footlocker Group Canada Inc. (formerly Venator Group Canada Inc.) v. R. Steinberg and the Registrar of Trade Marks, Federal Court, Trial Division, 2004 FC 717, Docket T2094-02, 18 May 2004, Honourable Justice Russell.

2

Kraft Canada Inc., Kraft Foods Schweiz AG, Kraft Foods Belgium S.A. v. Euro Excellence Inc.

Kraft Foods Belgium S.A. ("Kraft") manufactures the Côte d’Or line of confectionary products in Europe. It authorized defendant Euro Excellence Inc. ("Euro") to act as Canadian distributor under an exclusive distribution contract. The contract expired in December 2000 and was not renewed. A contract was entered into with Kraft Canada Inc. ("Kraft Canada") for the Canadian distribution of the Côte d’Or line.

Euro continued its Canadian distribution of Côte d’Or products, which it obtained from another supplier. It also began distribution of the Toblerone line, which Kraft Canada had been distributing in this country since 1990.

Kraft does not raise issues of trade-mark protection or gray marketing. It alleges copyright in the wrapper of the products. The Toblerone copyright is a snow-covered mountain depicted on the wrapper. Some of the snow is in the shape of a bear. There are three separate copyrights covering Côte d’Or. One is an elephant facing to the right with its trunk curled up. The second is the style of script used to spell "Côte d’Or". The third is a red shield, which serves as a background to both the elephant and the Côte d’Or script.

Euro alleges that the works are not original artworks. It also alleges that Kraft did not come to court with clean hands. Finally, as a matter of public policy, it alleges that copyright cannot be used to create a monopoly.

The Court concludes to the existence of valid copyrights and the violation thereof, grants injunctive relief and awards damages.

Kraft Canada Inc., Kraft Foods Schweiz AG, Kraft Foods Belgium S.A. v. Euro Excellence Inc., Federal Court, Trial Division, 2004 FC 652, docket T-1821-02, 3 May 2004, Honourable Justice Harrington.

3

Groupe TVA Inc. v. Bell Expressvu société en commandite

Groupe TVA Inc. («TVA») has filed proceedings before the Superior Court seeking estimated royalties of $835,975 and exemplary damages of an additional $835,000. TVA alleges that Bell Expressvu ("Expressvu") has breached a verbal agreement.

Expressvu has filed a motion for dismissal on the grounds that these claims should be brought or continued before the Canadian Radio Television Commission ("CRTC"), which alone has jurisdiction to impose upon the parties all the conditions of a "Convention d’affiliation".

TVA replies that its claims are based on a breach of a verbal affiliation agreement, that it is based in Quebec, the agreement is performed in Quebec and involves Quebec subscribers; therefore, the Court has jurisdiction to hear this civil matter.

The Court finds that the first thing to resolve in matters of jurisdiction is to identify and properly characterize the relief that is sought. In this case, as in others, the Superior Court is the proper forum to determine monetary claims based on the breach of a contract, written or verbal, even where that contract depends in part on CRTC regulations.

The motion for dismissal is dismissed.

Groupe TVA Inc. v. Bell Expressvu société en commandite, Superior Court, 500-17-018324-031, 17 May 2004, Honourable Justice Tingley.

4

Clark O’Neill Inc. v. PharmaCommunications Group Inc. and the Registrar of Trade Marks

Clark O’Neill Inc. ("Clark") was established in the United States in the 1950s as a direct-mail marketing company. It expanded into the pharmaceutical sample distribution business in the 1980s. It provides American pharmaceutical companies with an inventory and delivery service, assists in marketing samples to doctors and when a request is received delivers the sample on the pharmaceutical company’s behalf.

In connection with the pharmaceutical side of its business, it has used and registered the trade-mark "SINGLE SOURCE SAMPLING" with design. The mark was registered in the United States in 1991 and in Canada in 1993.

Clark’s first inclination to use its trade-mark in Canada was by means of establishing a Canadian subsidiary. However, it was unsuccessful in obtaining lists of physicians and could not operate the way it intended. In 1997, it was approached by PharmaCommunications Group Inc. ("Pharma") for the launching of a sampling service business in Canada. There were regulatory difficulties on the American side. The contemplated joint venture came to an end when Clark’s parent company, IMS Health Inc., purchased another Canadian company, Walsh Canada ("Walsh"), which operates a business similar to Pharma.

Pharma started its own direct-mail pharmaceutical sampling program business in Canada and has been using the name Direct Source Sampling with elements of design very close to Single Source Sampling. Clark has taking action against Pharma for, amongst other things, passing off and trade mark infringement.

The Court finds that there has not been use in Canada and no special circumstances, which justify non-use. The appeal from the decision expunging its trade-mark is dismissed.

Clark O’Neill Inc. v. PharmaCommunications Group Inc. and the Registrar of Trade Marks, Federal Court, Trial Division, 2004 FC 136, docket T-2061-01, 28 January 2004.