Famous Trade-Marks in Canada and the US

The Supreme Court of Canada has granted leave to appeal to hear two cases relating to the protection of "famous marks". These are expected to be heard this fall. In Veuve Clicquot Ponsardin v Boutique Cliquot Ltée, [2003] 1 F.C. 271, the owners of the registered trade-mark VEUVE CLICQUOT sued a chain of retail women's clothing stores for trade-mark infringement, passing off and depreciation of goodwill. VEUVE CLICQUOT has been used in Canada in association with champagne since 1899, while the women's clothing stores held registrations for CLIQUOT and CLIQUOT "UN MONDE À PART" trade-marks which have been used in Canada since 1995. The other appeal is by Mattel Inc, and involves its trade-marks BARBIE and BARBIE'S used in Canada since 1959 in association with products for young girls. In 1993, a Quebec company applied to register BARBIE'S in association with restaurant services. Mattel opposed that application. See Mattel Inc v 3894207 Canada Inc, [2003] 1 F.C. 602 The primary issue in both cases was whether the test for confusion under subsection 6(2) of the Trade-Acts Act had been met. Under subsection 6(2) confusion can be inferred whether or not the wares or services are in the same general class. In assessing confusion several factors under subsection 6(5) must be considered, including the extent to which the marks have become known, the length of time the marks have been in use, the nature of the wares, services or business, and the nature of the trade,. Thus subsection 6(2) states that the class of the wares and services is not determinative, but subsection 6(5) states that the nature of the wares and services is relevant to the determination of the likelihood of confusion. Justice Rothstein of the Federal Court Appeal believes that the reconciliation of these notions will be a major issue in the appeal to the Supreme Court. In a recent US case, Almacenes Exito SA v El Gallo Meat Market 05 Civ. 3434, a judge in US District Court for the Southern District of New York ruled that a company that has not used its trade-mark on products sold in the US cannot acquire a US trade-mark through the "famous marks" doctrine. Almacenes Exito, the largest retail superstore chain Colombia, claimed that the defendants were using a virtual copy of its famed EXITO mark on their stores in New York City. Although the Court recognized that the "[d]efendents adopted the EXITO mark with the intent to cause consumer confusion and capitalize on plaintiff's goodwill", the case was nonetheless dismissed because to do otherwise would result in a "radical" change in the federal trade-mark laws. For the text of the news article see: http://www.law.com/jsp/nylj/decisionArchive.jsp?goto=0 For Justice Rothstein's comments on the cases to be heard in the Supreme Court of Canada see: http://www.oiprc.ox.ac.uk/EJWP0705.wpd Summary by: Abigail Browne