Federal Court Trademark Victory

Posted by james on September 03, 2014

We are pleased to announce our recent victory for Magellan Law Group LLP client Urban Distillery Inc. in Federal Court Action T-700-13.

The decision of the Honourable Justice Martineau released September 2, 2014 found that both the City of Terrace and Kitasoo Band Council’s Official Marks for SPIRIT BEAR were invalid, having been improperly registered. In particular Justice Martineau found that the SPIRIT BEAR marks had not been properly adopted, and had not been used as a mark. City of Terrace and Kitasoo Band Council were also ordered to pay costs to Urban Distillery.

City of Terrace and Kitasoo Band Council filed official marks for SPIRIT BEAR in 2003 and 2006 respectively, after which they began to work together to license the mark to businesses and collect royalty payments from businesses.  

Official Marks are a system unique to Canadian Trademark law designed to protect the integrity of Government marks and symbols, such as the Canadian Flag, Crests on the Federal and Provincial Coat of Arms, etc. The rights given to Official Marks are very powerful, but unfortunately there is little examination by the Canadian Intellectual Property Office as to whether the agency claiming the mark is a government agency, and if they have in fact adopted the mark prior to applying for the Official Mark to be published. While for the most part, government agencies have been self-enforcing, opportunities for abuse persist unless the law is changed.

Urban Distillery was approached by the City and Band in 2011 and ordered to rebrand their award winning Spirit Bear Vodka and Gin brands. Facing prohibitive rebranding costs Urban Distillery instead persisted in their defense of non-infringement and after being sued and hiring legal counsel counterclaimed that the marks being asserted were invalid.

While ultimately successful our client faced 4 years of uncertainty and risk with the potential loss of the goodwill acquired in their award winning brands.

In order to avoid situations like this this we highly recommend conducting a trademark clearance search prior to launching most new names or brands, to reduce the chances of collision with other marks that may have earlier registration dates.
For more information regarding this case or a copy of the decision please contact Magellan Law Group LLP Lawyer and Trademark Agent James Wagner who represented Urban Distillery Inc. in this matter at james@magellanlaw.ca

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Third Party Submissions

Posted by james on November 27, 2013

One of the features of the AIA act that I find most interesting was the introduction of Third Party Submissions.

Third Party Submissions pursuant to provide the opportunity for a third party to submit prior art documents and explain the relevance of the prior art to pending claims in a US Patent Application. 

 A paper I co-wrote, Third-party submissions for patent applications pending before the USPTO, available here provides an outline for the procedure for preparing Submissions and further details as to when a Submission might be advisable. 

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Inter Party Reviews (IPRs) and Covered Business Methods

Posted by james on November 25, 2013

The American Invents Act (AIA) introduced several important changes to US patent practice in late 2012 and 2013. This post explores the implementation of Inter Party Reviews (IPRs) and Covered Business Methods Review (CBMs), which provide mechanisms for challenging issued patents in a faster and less costly manner than through litigation. In tomorrow’s post I address the new mechanism for challenging a patent application through third party submissions pursuant to 37 CFR 1.290.  

On Thursday, November 21, 2013 I had the opportunity to attend the Vancouver chapter Licensing Executive Society meeting with speaker Mike Lee, a US based IP attorney. Mike succinctly summed up the implementation and operation of Inter Party Reviews (IPRs) and Covered Business Methods Review (CBMs) – all stats listed herein are courtesy his presentation.

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Easter Bunnies, Trade-Marks and Chocolate

Posted by james on March 31, 2013

12 years after Lindt first complained that competitors were seeking to sell confectionary confusingly close to their iconic bunnies (crinkled gold foil with red bows) a German regional court (Frankenfurt Oberlandesgerichts )has ruled that the current iteration of the competitor’s bunny (solid gold painted bunnies with a painted brown bow) would not confuse the average consumer and thus did not infringe Lindt’s trade mark rights. (for images of the respective rabbits see the report in the German media here http://www.t-online.de/wirtschaft/unternehmen/id_62762938/lindt-spruengli-kassiert-endgueltige-schlappe-im-goldhasen-streit.html)

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On March 1st the Conservative government put forward Bill C-56 for first reading. Bill C-56 seeks to amend the Copyright Act and Trade-Marks Act in substantive ways, implementing new civil and criminal penalties and offenses for copyright and trade-mark infringement, and increased border controls.

Bill C-56 is still in an early stage in the legislative process and subject to change (or potential defeat, although this is unlikely as the Conservatives command a significant majority in the house). If ultimately passed in substantially its current form it will result in significant changes to the enforcement of copyrights and trade-marks in Canada.

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