The Trademark Act of Canada

Answer

The Trademark Act of Canada

The Trade-marks Act of Canada was enacted in 1954 after dissatisfaction arose from the preceding legislations dealing with trademarks owing to their narrowness in scope, difficulty in their interpretation, as well as their contradictory nature[1]. The Act was purposed to provide a regulatory framework through which commercial rights and considerations acquired through the use and registration of trademarks can be protected while, at the same time, safeguarding the public from any misrepresentations, confusion, or deceit as regards the quality and origin of the goods and services offered[2]. Therefore, the act aimed to meet two major objectives including protecting persons from actions that infringe their commercial rights including passing off and depreciation of goodwill; and safeguarding the public from confusion. This essay seeks to explore the court decision relating to the case of Jose Cuervo and determine whether the view of Judge Snider on Professor Kindra's approach to establishing the fame of Cohiba is consistent with the Canadian Trade Mark Act.

Jose Cuervo Case

Cuervo filed a trademark application to register the trademark LAZARO COHIBA in the Canadian Intellectual Properly Office. Habanos S.A opposed the registration of the trade-mark LAZARO COHIBA on the ground that it was not registrable because it would create confusion with already registered Habanos's COHIBA trademarks[3]. Both parties filed evidence with trademarks opposition board and made arguments for their cases. The board dismissed Habanos's case and allowed Cuervo to proceed with the registration of the trade-mark. However, Habanos appealed before Madam Justice Snider of the Federal court presenting new evidence to prove their case. Notably, among the new evidence presented before Justice Snider is the Kindra Affidavit that provided an expert testimony on brand identity that depicted COHIBA's status as an iconic brand within the pop culture[4]. This new evidence introduced some movies, television shows, and other media evidence pointing to the fact that COHIBA cigars dominate the media content thereby indicating that Cohiba is a famous brand.

Judge Snider’s view on Kindra's approach to establishing the fame of Cohiba

Justice Snider holds the view that Kindra's approach to establishing the fame of Cohiba is well reasoned and persuasive. She argued that the fame of a product is not limited to the extent of use of that product but extends to the general awareness about the existence of the product among the public domain[5]. As such, she viewed the prevalence of the COHIBA brands in the media such as television, films, music, and print as a mark of fame of the brand that evokes a sense of status or legitimacy on the character presenting in the media[6]. Indeed, she considered this as a way of showing public notoriety of COHIBA brand.

Consistency of Judge Snider’s view with the Canadian Trade Mark Act

Judge Snider’s view above is very much consistent with the trade-mark Act of Canada that requires that the extent to which trademarks or trade names have become known must be considered in determining whether they are confusing[7]. Notably, the Act refers to the extent to which trademarks are known rather than the extent to which the product is used. As such, the view posited by Snider that the general awareness about the existence of the product among the public domain as posited by Kindra's approach to establishing the fame of Cohiba is indeed consistent with this Act.

I do agree with Snider about this because being aware of a product does not necessarily mean you have to use that product. In fact, in my view, using a product is only a result of the awareness created about the existent of such products. Therefore, the extent to which a product is known by its non-uses is central to the future use of the product and as such, it should not be limited to the use of the product alone.

The importance of her decision

The decision made by Snider is important in enhancing understanding about section 6 (5)(a) of the Act. It highlights the scope of awareness about a brand among the public thereby setting the bar of determination of confusion due to trademarks, with regard to the extent to which brands are known, above the product users. Indeed, if this view is adopted in determining whether trademarks are confusing, it will provide a holistic picture about the fame of a particular brand thereby protecting persons from the depreciation of goodwill.

Conclusion

The trademarks opposition board erred in their ruling in favor of Cuervo. The new evidence presented by Habanos provided more light on the matter during the appeal hearing and Madam Justice Snider’s view on such evidence was correct. Indeed, her view on Kindra's approach to establishing the fame of Cohiba was consistent with the trade-mark Act of Canada.

[1] Vaver, David. "Intellectual property law: copyright, patents, trade-marks." (2011).

[2] Vaver, David. "Intellectual property law: copyright, patents, trade-marks." (2011).

[3] EMPRESA CUBANA DEL TABACO, TRADING ALSO AS CUBATABACO AND CORPORATION HABANOS S.A; AND TEQTTILA CUERVO, S.A DEC. V. (Federal Court October 4, 2013).

[4] EMPRESA CUBANA DEL TABACO, TRADING ALSO AS CUBATABACO AND CORPORATION HABANOS S.A; AND TEQTTILA CUERVO, S.A DEC. V. (Federal Court October 4, 2013).

[5] EMPRESA CUBANA DEL TABACO, TRADING ALSO AS CUBATABACO AND CORPORATION HABANOS S.A; AND TEQTTILA CUERVO, S.A DEC. V. (Federal Court October 4, 2013).

[6] EMPRESA CUBANA DEL TABACO, TRADING ALSO AS CUBATABACO AND CORPORATION HABANOS S.A; AND TEQTTILA CUERVO, S.A DEC. V. (Federal Court October 4, 2013).

[7] Trade-marks Act, R.S.C. 1985, c. T-13 [“the Act”].