Volume 13 • Number 10c • September 25, 2006 Index by date Cancellation of free subscription Marquedor


 
 

1

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.)

2

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.)

3

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.)

4

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).