Protection of famous marks in Canada

March 18, 2008 by Tamsin Thomas

In late 2007, Virgin Enterprises successfully opposed the registration of “VIRGIN CANDLES” in Israel. The applicant sought to register the TM in association with candles. The Israel Patent and Trademark Office accepted that because Virgin is a famous TM and had a large range of products and widespread international distribution, a likelihood of confusion did exist [1]. Would such a claim succeed in Canada?

One of the leading Supreme Court of Canada cases regarding famous marks is the Mattel case [2]. The makers of Barbie dolls and accessories opposed the TM application for registration of “BARBIE’s and design” by the owners of a “bar-and-grill” type restaurant named Barbie’s. If in the opposition proceedings the applicant could prove that there was no likelihood of confusion between the applicant’s mark and the opposing party’s mark, the applicant was entitled to registration. The Mattel case, therefore, involved an analysis of s. 6 of the Trade-marks Act and the potential impact the status as a famous mark has on the determination of likelihood of confusion.

S. 6(5) lists out the relevant factors for determining whether TMs are confusing and instructs the court or registrar to consider “all the surrounding circumstances” including a list of five factors (a) through (e). The court concluded that in considering confusion the totality of circumstances dictates the weight to attach to each consideration. Fame of the mark is but one consideration which could have more or less weight depending on the other circumstances. After considering the factors in s. 6(5), the court turned to an analysis of the other surrounding circumstances including the fame of the mark as well as the absence of any actual confusion and concluded that the TM Registrar had not been unreasonable in the weighing of considerations and dismissed Mattel’s appeal.

Given the undeniable widespread fame of the Barbie mark, no matter what people might say about the impossible body dimensions and empty-headed blonde image, it is surprising that this fame was not enough for the court to grant extra protection. After all, as a casual consumer somewhat in a hurry, I might hear Barbie’s restaurant and think it was a Barbie doll-themed restaurant, especially in a culture where licensing of brands for use on everything from clothes to toys to restaurants is commonplace.

It was accepted in the Barbie case, that one of the purposes of 1953 amendments to TM legislation was to give, and indeed did give, greater protection to famous marks. Certainly there does seem to be something unfair about the fame of a mark being able to transcend other factors in the confusion analysis, but if fame is but one factor, in what manner do famous marks receive the broader ambit of protection? One important fact was that the Barbie TM was only famous in the limited field of dolls and accessories. In Mattel, the court specifically mentioned Virgin Enterprises as being an example of a famous TM which has been used in connection with an almost limitless diversity of wares and services but because such an example was not before the court, no pronouncement was made. A quick search of the CIPO TM database reveals Virgin has registered TMs for such diverse wares and services including soft-drinks, mobile phones and telecommunication services, transportation of goods and passengers by air, road, rail and sea and the arrangement of such travel, wines and entertainment services. If fame in a limited field is not sufficient, then surely fame in such a broad variety of wares and services would surely provide justification to attribute a lot of weight to the fame of this mark just as the Israel Office did.

While I might agree Virgin should be granted extra protection from a legal perspective, it is important to ask whether such a result would be a good thing from a policy perspective. The owners of famous marks have invested very large amounts of time and money into developing the reputation and goodwill in their brands and should be entitled to greater protection. One of the underlying principles of TM law, however, is to protect TM owners from unfair competition. It seems unlikely that the businessman who names his candle business Virgin candles because the candles are made from olive oil could be said to be unfair competition to Virgin Enterprises. It seems more unfair to preclude small-scale business owners from using a TM which has a similar name to a famous mark, especially where the TM lends itself to their particular products and services.

[1] See http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/ for brief comment.

[2] Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 SCR 772.