TRADE-MARKS2012 Year in Review

PRESENTED BY:

DANIELA BASSAN

March 28, 2013Schulich School of Law

DANIELA BASSAN

doc#2592335.v1

Introduction – Trade-marks in 2012

AGENDA

Well Known Brands

Beverage Wars

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Beverage Wars

Luxury Goods

Dark Market

Q & A

BBM Canada v. RIM

Same Word Mark BUT:

Different Services

WELL KNOWN BRANDS

Different Customers

Different Protection

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BBM Canada v. RIM

Trade-mark Findings for RIM:

No Confusion

WELL KNOWN BRANDS

No Passing Off

No Depreciation of Goodwill

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Bertico v. Dunkin

What Happened to the Franchise?

Demise of Dunkin’s

WELL KNOWN BRANDS

Rise of Tim’s

Loss of Brand

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Bertico v. Dunkin

Who is Responsible for Losses?

Franchisor Breach of Contract

WELL KNOWN BRANDS

Franchisor Breach of Duty

Franchisor to Pay $16 Million

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Bodum v. Meyer

FRENCH PRESS for coffee makers:

Generic or Distinctive?

COFFEE GRIND

Valid or Invalid?

Confusing or Descriptive?

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Bodum v. Meyer

Trade-mark Findings for Meyer:

Not Distinctive

COFFEE GRIND

Not Valid

Not Confusing

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FRENCH PRESS

Busch v. Molson (Sub Zero)

BEER WARS

REGISTRABILITY

Is SUB ZERO clearly descriptive of methodof brewing beer at below 0 temperature?

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of brewing beer at below 0 temperature?

NO, like KOLD ONE.

Busch v. Molson (Sub Zero)

BEER WARS

REGISTRABILITY

Does SUB ZERO clearly describebeer designed to be sold, served,etc. at below 0 temperature?

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etc. at below 0 temperature?

NO, like KOLD ONE.

Busch v. Molson (Cold Certified)

BEER WARS

REGISTRABILITY

Is COLD CERTIFIED clearlydescriptive of the conditions ofproduction of beer?

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production of beer?

YES, like SUPER COLD.

Busch v. Molson (Cold Certified)

BEER WARS

DISTINCTIVENESS

Does COLD CERTIFIED clearly denotetype of beer which is certified to bemade to be served and drunk at cold

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made to be served and drunk at coldtemperature?

YES, like SUPER COLD.

Busch v. Molson (Cold Case)

BEER WARS

REGISTRABILITY

Does COLD CASE clearly describe acharacteristic of beer or acondition of production?

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condition of production?

NO, like KOLD ONE.

Busch v. Molson (Cold Case)

BEER WARS

DISTINCTIVENESS

Does COLD CASE clearly describebeer to be sold in cases that arecold?

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cold?

NO, like KOLD ONE.

BEER MARK TALLY

WORD MARK REGISTRABLE

KOLD ONE YES

SUPER COLD NO

BEER RESULTS

SUPER COLD NO

COLD CERTIFIED NO

SUB ZERO YES

COLD CASE YES

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Gucci v. Mazzei

Liability for Counterfeit Goods:

Sale of Goods?

LUXURY GOODS

Advertisement of Goods?

Display of Goods?

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Gucci v. Mazzei

Damages for Counterfeit Goods:

Value of Originals?

LUXURY GOODS

Nominal Damages Only?

Minimum Compensation?

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Marlboro v. Philip Morris

Can there be trade-markinfringement by PM without

DARK MARKET

infringement by PM withoutusing the MARLBOROname on package? YES.

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Marlboro v. Philip Morris

Trade-mark Findings for Marlboro:

Same Wares

DARK MARKET

Same Trade

Resemblance in Ideas

Surrounding Circumstances

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Questions

Q & A TIME

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