TRADE MARKS |
Royal Roads University v. Canada
T-185-03
2003 FC 922, MacKay J.
25/7/03
9 pp.
Official marks--Action re: trade-marks; applications by both parties for summary judgment--Plaintiff using positioning line "You can get there from here" in advertising campaign for educational services--Defendant using same line in promoting sale of Canada Savings Bonds (CSBs), Canada Premium Bonds (CPBs) under brand "New Canada Savings Bond" during 2001-2002, 2002-2003 sales and marketing campaigns--In 2002, Registrar of Trade-marks gave public notice under Trade-marks Act, s. 9(1)(n)(ii) of adoption of official mark by University--When plaintiff requested defendant cease and desist from using it, defendant answered would not be using line in its 2003-2004 marketing campaign--Issue whether defendant's use of mark after May 29, 2003 in relation to same product sold both before and after that date--S. 9(1)(n)(ii) precluding adoption by another, after publication of University's notice of official mark "in connection with business, as trade-mark or otherwise", of official mark--Both before, after May 29, 2002, defendant carried on same business, marketing of CSBs, CPBs under official mark "New Canada Savings Bond"--Both before, after that date, products sold by defendant in essence similar, though for years in question, annual series might differ only in interest rates, identification numbers--Defendant's adoption and use of mark prior to its publication as official mark of plaintiff not violation of s. 9(1)(n)(ii); that publication did not result in, nor cause, any change in defendant's business with which it continued to use mark for its advertising in 2002-2003--Protection under s. 9 for prior user of official mark not extending to marketing of new, different product developed by user after publication of mark: Magnotta Winery Corp. v. Vintners Quality Alliance (2001), 17 C.P.R. (4th) 45 (F.C.T.D.)--Here however, annual series of basically similar bonds, differing in interest rates, not new products within business of defendant--Plaintiff's application for summary judgment dismissed; defendant's application for summary judgment allowed; plaintiff's action dismissed-- Trade-marks Act, R.S.C., 1985, c. T-13, s. 9(1)(n)(ii).