Patent  Cases

Decision of Re-examination Board Affirmed on Standard of Reasonableness
Newco Tank Corp. v. Canada (Attorney General), 2015 FCA 47

The Re-examination Board found the Claims of a patent obvious in light of prior art submitted by the person requesting re-examination. In so holding, the Board made a finding that the state of the common general knowledge included the information presented as background information in the patent.

The Court reviewed the decision of the Board on the standard of reasonableness and upheld the decision of the Board. The Court of Appeal agreed that the Court chose the correct standard of review and dismissed the appeal.

Trademark Cases

Use of Trademarks in Metatags Found Not to be Copyright or Trademark Infringement
Red Label Vacations Inc. (redtag.ca) v. 411 Travel Buys Limited (411travelbuys.ca), 2015 FC 19

The Plaintiff has three registered trademarks: “redtag.ca”, “redtag.ca vacations”, and “Shop. Compare. Payless!! Guaranteed”. The Defendant company was incorporated in 2008, and went online in 2009. The Court noted that the owner of the Plaintiff bought the domain name “411travelbuys.ca” to sell to the Defendant for a profit. The Defendants’ website contained the terms “red tag vacations” and “shop, compare & payless” in the metatags, which was not visible to customers visiting the 411 Travel Buys website. The Plaintiff contacted the Defendant in March 2009, advised of the allegedly infringing content and the content was removed.

The Plaintiff brought the within action for copyright infringement, trademark infringement, passing off and depreciation of goodwill. The Defendant filed a defence and counterclaim for passing off against the Plaintiff.

After reviewing the evidence of all the witnesses, the Court noted that “there is no dispute that in this case, the Defendant 411 Travel Buys copied the Plaintiff’s metatags”. However, the Court ultimately found “[w]hile in some cases there may be sufficient originality in metatags to attract copyright protection when viewed as a whole, the substance of the metatags asserted by the Plaintiff in this case does not meet the threshold required to acquire copyright protection in Canada.” The Court found that there was little evidence of a sufficient degree of skill and judgment in creating the metatags. The Court also noted that the evidence established that it was innocent infringement if any infringement had occurred.

In terms of trademarks and trade names, the Court found that goodwill did exist in two of the three trademarks. The Court also found that the use of the trademarks in the metatags of the Defendants did result in redirected traffic. However, the Court found “use of a competitor’s trademark or trade name in metatags does not, by itself, constitute a basis for a likelihood of confusion, because the consumer is still free to choose and purchase the goods or services from the website he or she initially searched for.” The Court found no passing off, no trademark infringement and no depreciation of goodwill. The action was dismissed.

Registered word mark LA PIZZAIOLLE found to be confusing with proposed PIZZAIOLO and Design  mark
Restaurants La Pizzaiolle Inc. v. Pizzaiolo Restaurants Inc., 2015 FC 240

The Applicant had opposed the registration of two marks, PIZZAIOLO and Design and PIZZAIOLO. The Registrar had refused the word mark and allowed the design mark as used with certain wares and services. This is an appeal of the Registrar’s decision under section 56 of the Trademarks Act.

Both parties own pizzerias. The Applicant has owned LA PIZZAIOLLE in Montreal since the 1980s.
The respondent has owned PIZZAIOLO, in Toronto since the 2000s. The respondent sought to register the challenged marks in 2008, and the applicant opposed, claiming confusion with its own registered mark
LA PIZZAIOLLE.

The Court held the Registrar erred in failing to take into account, in his analysis of the likelihood of confusion, the potential uses that the registration of the registered word mark LA PIZZAIOLLE (or its variant PIZZAIOLLE) confers upon the applicant. Following Masterpiece, the Court found the registered word mark permitted the Applicant to use the words LA PIZZAIOLLE “in any size, and with any style of lettering, colour or design”, and, therefore, to depict these words in an identical or very similar manner to that of the design mark PIZZAIOLO.

The appeal was allowed and the Registrar’s decision dismissing the applicant’s opposition to the registration of the Graphic Mark was set aside.

Other Industry News

Health Canada has published a Notice with respect to Therapeutic Products with Paediatric Labelling.

Authors

Chantal Saunders 
CSaunders@blg.com
613.369.4783

Beverley Moore 
BMoore@blg.com
613.369.4784

Adrian J. Howard 
AJHoward@blg.com
613.787.3557

Expertise

Intellectual Property
Patents
Licensing
Copyright
Trademarks