Supreme Court of Canada Rules on Famous Marks

Last week, the Supreme Court of Canada released its decisions in two trade-mark cases. In both, the plaintiffs asserted that their marks were "famous" and thus entitled to a special, broader, scope of protection. The Veuve Clicquot case was an infringement action by the Champagne house Veuve Clicquot Ponsardin against a chain of mid-priced women's clothing boutiques, operating under the trade-mark "Cliquot". The plaintiff asserted that Cliquot infringed Veuve Clicquot. Veuve Clicquot was registered for wines and Champagne. The defendant used CLIQUOT for its women's clothing stores. In the Mattel case, Mattel opposed an application for BARBIE'S & Design for restaurant services on the basis of its BARBIE trade-mark. In some jurisdictions, there is special protection for famous marks. The approach in Canada has been somewhat different, and it continues to be different. The Canadian Trade-marks Act sets out a number of circumstances which are relevant to whether one mark is confusing with another. Those include the extent to which the marks have become known and the nature of the wares or services of each mark. Thus, if one of the marks has become known to a significant extent, that will have an effect on the scope of its protection. In these two decisions, the Court re-stated that "the totality of the circumstances will dictate how each consideration should be treated" and that "the fact the opponent's mark was world renowned could not be a factor so important as to make the differences in wares and services irrelevant". In the Veuve Clicquot case, the Court also discussed Canada's anti-dilution provision (s.22 of the Act). This provision does not require that the mark be well-known. It does require that the defendant use the registered mark of the plaintiff. In this connection, the Court found that the exact trade-mark did not need to be used for there to be dilution. However, the degree of variation seems to be a misspelling, for instance, if KLEENEX were spelled "Klenex". In the Veuve Clicquot case, though, the Court in the trial division found that there was no link or connection made by the consumer between CLIQUOT and VEUVE CLICQUOT. The Supreme Court found no reason to disturb this finding. As with most Supreme Court decisions, it will take a few years before we determine which passages are relied upon to argue other cases and accepted in those other cases. On its face, though, neither of these cases appears to change Canadian law significantly. For copies of the decisions, please visit: http://scc.lexum.umontreal.ca/en/2006/2006scc22/2006scc22.html http://scc.lexum.umontreal.ca/en/2006/2006scc23/2006scc23.html Summary by: Hung Nguyen