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R.C. Purdy Chocolates Ltd. v. Gershkovitch
Eli A. Gershkovitch applied to register the trade mark
HEDGEHOG based on proposed use in Canada in association with pies and
cakes. R.C. Purdy Chocolates Ltd. (“Purdy”) opposed the registration on
the grounds of confusion with its trade marks HEDGEHOG and HEDGEHOGS
used in association with chocolates since the early 1990s.
The evidence submitted by Purdy indicates use of the marks under license
by, among others, Dynamic Chocolates (Dynamic”). No copy of any license
agreement was submitted, no particulars of the licensing arrangement and
no details about any exercise of control by Purdy of the character and
quality of the chocolates manufactured and sold by Dynamic, which led
the Board to conclude that the use of the mark by Dynamic did not enure
to the benefit of Purdy under s. 50 of the Trade Marks Act.
The Board noted that the marks HEDGEHOG and HEDGEHOGS were inherently
distinctive. However, the evidence that Purdy’s chocolates were in the
shape of hedgehogs rendered the marks somewhat suggestive and therefore
not inherently strong.
Considering third party uses of the mark HEDGEHOGS, although the marks
at issue were almost identical in all respects, the Board concluded that
there was no likelihood of confusion.
R.C. Purdy Chocolates Ltd. v. Gershkovitch, 46 C.P.R. (4th) 71 (T.M.O.B.)
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Novopharm Ltd. et al. v. Purdue Pharma
Purdue Pharma filed an application to register the trade
mark “Orange Coloured Circular shaped Tablet Design” in association with
60 mg dosage units of sustained release morphine. Novopharm Ltd. opposed
the registration.
The T.M.O.B. reviewed the case law setting out some of the legal
principles with respect to distinctiveness as applied to pharmaceutical
colour/shape/size marks.
The evidence submitted showed a substantial number of orange tablets
common to the pharmaceutical trade. The T.M.O.B. concluded that the
colour orange did not mean “medication from one particular source”.
The opposition was granted.
Novopharm Ltd. et al. v. Purdue Pharma, 48 C.P.R. (4th) 455 (T.M.O.B.)
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Matériaux à bas prix ltée v. Rona Inc.
Rona Inc. (“Rona”) applied to register
the trade mark SI CE N’EST PAS JAUNE, CE N’EST PAS RONA L’ENTREPÔT in
association with the sale of a variety of wares including materials for
building and renovation. Matériaux à bas prix ltée («Matériaux») opposed
the registration.
Materiaux alleged that Rona used the colour orange rather than yellow in
conducting its business.
The T.M.O.B. held that Rona had not attempted to register the colour
yellow but a slogan including the word yellow in French (“jaune”).
However, the board held that Rona had not used the trade mark with
respect to the sale of various wares, such as sporting goods and
recreational articles, articles for babies, cars and trucks. The
application was refused only in association with such articles and
services.
Matériaux à bas prix ltée v. Rona Inc., 47 C.P.R. (4th) 447 (T.M.O.B.)
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PPL Legal Care of Canada Corporation v. Patey
Complaint to obtain the transfer of the
domain name « pre-paidlegalservicesinc.ca ». Granted.
PPL Legal Care of Canada Corporation (“PPL”) was incorporated in Nova
Scotia in 1999. PPL is a wholly owned subsidiary of Pre-Paid Legal
Services Inc. (“PPLSI”), an American company incorporated in 1976 and
listed on the New York Stock Exchange.
Curtis Patey registered the domain name “pre-paidlegalservicesinc.ca”.
PPL filed a complaint under CDRP to obtain the transfer of the domain
name.
PRE-PAID LEGAL SERVICES & DESIGN is a trade mark registered in the
United States by PPLSI.
The Panel ordered the transfer of the domain name. PPL did not have to
use the mark itself. The use of the mark by the parent company was
sufficient to constitute use of the mark under the CDRP.
The Panel held that Patey had registered the domain name in bad faith.
It was used as part of a fraudulent scheme to deceive individuals into
purchasing non-existent legal service plans.
PPL Legal Care of Canada Corporation v. Patey, 47 C.P.R. (4th) 472 (CIRA).
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