On May 9th of this year, ESC Corporate Services Ltd. signed the documents confirming its acquisition of CRAC (Corporate Research and Analysis Centre).
CRAC will continue to provide corporate services and corporate accessories as well as trade-mark searches and registrations in Québec, Canada and internationally.
New Possibilities: Due Diligence Service
Our due diligence service will provide you with all the information you need with one quick order. This service extends to all the provinces within Canada, the United States and abroad. Just a few of the searches that you can order:
In addition, you will benefit from a new reduced price list for all our due diligence services.
Contact us for more details at 514-861-2722 / 800-361-5744 or at firstname.lastname@example.org
Same Team: The Specialists You Already Know
Me Pierre Bilodeau is taking over as CRAC’s new Managing Director. Surrounded by his associates, Pierre meticulously laid the groundwork for the transaction with ESC. He skilfully handled all of the logistics and planned for (almost) every change caused by the transition. Always attentive, receptive and patient, he calmly addresses every hiccup and challenge that comes his way… Congratulations, Pierre!
Denis Livernoche is continuing on as Manager of the Names Searches department. With the extensive experience he accumulated over the past 20 years, he has become an invaluable and indispensable source of knowledge regarding corporate and business names. He is diligently working on imparting this knowledge to his two associates, Nancy Bombardier and Samuelle Gadoury.
Me Iana Alexova remains Manager of the Trade-marks department. With the assistance of her colleague Bianca Sallesse Somensari, your trade-mark files will be processed with great care and professionalism. Even more reachable nationwide trade-mark services.
Kelly Cardoso is the official Manager, Corporate Services. Her team, composed of Claire Maurais, Émilie Jalbert and Sthesy Jean, can now provide a wider range of corporate and due diligence services.
Francis Houle is still Manager of Shipping and Legal Accessories, assisted by Pablo Gonzalez and Pascale Simard. Together, they make sure documents are promptly sent out to you along with the necessary accessories, per your specifications.
Unik Bergeron and Olivier Nadeau, our IT team, work on various projects to help us better meet your needs. They are continually looking for ways to improve our Incoweb platform, among other things.
Anne Roy is now Office Manager. She keeps the office running smoothly, tackling challenges both big and small every day to make sure everyone is happy, customers and employees alike.
CRAC will continue to operate under its own name and its offices remain in their current location, 1080 Beaver Hall Hill, suite 1700 in Montreal.
About ESC Corporate Services Ltd. (ESC)
ESC is a national corporate services provider focused exclusively on the provisioning of customized public record search and registration services and supplies to law firms, corporations and national institutions across Canada.
Founded in 2009 following the acquisition of the Ontario corporate services division of Dye & Durham, ESC’s team is renowned for its corporate services expertise, focused commitment on customer service and high volume transaction processing relating to nationwide search and registration services. Offering real time access to public corporate records across Canada, the United States and more than 26 countries and counting, ESC is a single point solution for organizations seeking exception free integrated outcomes to online corporate due diligence, incorporation services and supplies, customer on-boarding and compliance or credit solutions.
ESC is a licensed service provider under contract to ServiceOntario.
Almost three years ago now the new Canada Not-for-Profit Corporations Act (“NFP Act”) updating the rules and procedures relating to the incorporation and existence of not-for-profit organizations was brought into force.
Among other things, it established a transition period ending on October 17, 2014, for not-for-profit organizations to file their articles of continuance and new by-laws in compliance with the Act. This deadline is fast approaching!
If these documents are not filed by the deadline, the defaulting organizations will be presumed inactive and most likely dissolved.
While it is possible to file an application for revival under the new law, dissolution could have undesirable consequences for a registered charity. If you have any questions in this regard, you should refer to the Canada Revenue Agency’s Charities Directorate:
Remember that when an organization is continued, it keeps the same business number (BN) and can also continue to use its business name. However, organizations may want to use the application for continuance as an opportunity to change names. A NUANS report will then be required, unless the organization opts for a numbered name.
For a NUANS report or information regarding the above topic, we invite you to contact us. Our team is available to assist you: 514-861-2722 / 1-800-361-5744 / email@example.com
In part 1 of this article, we looked at three legal concepts that must be kept in mind prior to adopting, using or filing for registration of a trade-mark in Canada.
Let’s now look at the issue of “confusion”, which is no doubt the most common and elusive issue to contend with when choosing a trade-mark.
Concept of Confusion
The definition of confusion sits at the center of Trade-mark Law. It is a reflection of what we as consumers expect (or at least, hope for!) when purchasing goods or services: clarity. We do not want to be confused, mislead. We want to know who stands behind those goods or services. More importantly perhaps, neither do manufacturers nor service providers who have invested much time and money in their brand names.
However, confusion is not a “static” concept. Over time, general criteria to consider when faced with a claim of confusion were provided. These have been the subject of much “tweaking” by our Courts, trying to apply the definition to a set of re-occurring, though never identical, circumstances. Such is the case for alcoholic beverages. The basic rule governing confusion stems from Sections 6(2) and 6(5) of the TMA2. The following sums up the applicable criteria when determining likelihood, or not, of confusion between two opposing trade-marks:
These factors are important but are not exhaustive of facts that could be considered3. Added to this is the principle that confusion is one of first impression, to be assessed from the perspective of the casual purchaser, somewhat in a hurry, who has an imperfect recollection of the trade-mark or trade-name4.
Finally, it is important to remember that confusion is not limited between trade-marks, but also trade-marks and/or corporate names and/or trade-names5.
Confusion as Pertaining to Alcoholic Beverages
First Important Note
Similarity in appearance, sound or ideas suggested between two trade-marks is now of primary importance in determining confusion. Whereas it could be true before, this criteria has recently been given much greater importance by the Supreme Court of Canada in the Masterpiece case6, which concluded that when considering the likelihood of confusion, this criteria is generally of such importance that it may even outweigh differences that exist in all the other relevant criteria. In the absence of a finding of similarity, the other criteria will be given more or less weight according to the circumstances in each case7.
Second Important Note
Generally, if the products or services are different or if they are marketed and sold differently, then it is possible to argue that confusion between two trade-marks is unlikely (see Sections 6(5)c) and d) TMA). For example, Champagne is marketed in a very different way than is a woman’s clothing store8.
However, this is currently not possible when dealing with alcoholic beverages. Beers, spirits, wines and coolers, are considered as being of the same general class of wares and sold through similar channels of trade. As a result, arguing that wine is different from tequila or that sparkling wine differs from beer will have little impact on the question of determining if two marks are confusing or not9.
The reason for this lies in the way alcoholic beverages are sold in Canada. It has been determined that there is no consistent, nationwide difference in the channels of trade used for the sale of alcoholic beverages as they are sold through identical venues in Canada. In Québec for example, grocery stores and a corner convenience store can sell wine, beer and coolers. Furthermore, the province run liquor stores of la Société des alcools “SAQ” sell beer, wine, coolers and spirits (hard liquor). The fact that other provinces may sell beer and spirits through separate venues (breweries v. liquor stores) does not matter since the issue is whether there is likelihood of confusion in the whole of Canada, not only in a few provinces.
What About Confusion Between Alcoholic and Non-alcoholic Beverages?
Alcohol certainly changes the product. For one thing, non-alcoholic beverages can be purchased by adolescents, even children. Arguably, this would mitigate the risk of confusion. However, the courts have determined that many non-alcoholic beverages are sold through the same commercial channels as those with alcohol10. In one case, the applicant tried to register EVIAN for vodka, gin and tequila. The opponent owned the trade-mark EVIAN for, inter alia, mineral, still and sparkling water. The Trade-mark Opposition Board in this case concluded there would be an overlap in channels of trade even with regard to licensed restaurants and bars, bottled water usually being sold in these venues11. The application was refused. The fact EVIAN is a very well know trade-mark in Canada was also evidenced, as well as the fact that the applicant had “adopted a modus operandi of filing trade-mark applications for known marks used in related domains”.
What About Confusion Between Alcoholic Beverages and Other Unrelated Wares?
Even in this situation, the criteria as to how the wares or services are sold or marketed could play a role in a finding of confusion. Thus, in the COHIBA case, it was concluded that confusion could occur between a trade-mark for spirits (rum) and one for cigars. In this matter, evidence showed that although tobacco and hard liquor are two different products, they are sometimes available through the same channels of trade and that both rum and tobacco are known to be used together by the same consumers12 (see our last issue of Info-CRAC which reviews this case).
How to be Safe? Do a Proper Search!
The best way to avoid problems when choosing a trade-mark is by performing a proper search. Whether it be called an “availability” search, a “registrability” search or even a “pre-search”, this step is as important as the actual creation of a new trade-mark.
At a minimum, an identical or preliminary verification will dig into public trade-mark databases to find flagrant risks of confusion with existing trade-marks, taking into account the two important rules that were described above namely:
Ideally, a more in-depth search will also ensure the trade-mark is not a Prohibited Geographical Indication and that if it is clearly descriptive or not, with particular consideration to the “place of origin”.
Also of importance, though sometimes overlooked due to costs, is the searching of Canadian trade-name databases to cover commercially used names that may be confusing with the submitted trade-mark, but that have not yet been filed on the Canadian Trade-marks Register.
Before seeking to adopt, use or register trade-marks in connection with alcoholic beverages, you or your advisors should conduct a search addressing the following:
Should you have any questions regarding trade-marks in general or would like to further explore the afore-mentioned subject, please do not hesitate to contact CRAC’s trade-mark team.
1 Trade-marks Act (R.S.C., 1985, c. T-13)
2 6 (2) The use of a trade-mark (or trade-name) causes confusion with another trade-mark (or trade-name) if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class […]
6(5) In determining whether trade-marks or trade-names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including:
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) The degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
3 Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23
4 Mattel, Inc. v. 3894207 Canada Inc. 2006 SCC 22 (paras. 55-56) (BARBIE)
5 Section 16 TMA
6 Masterpiece Inc. v. Alavida Lifestyles Inc.  2 S.C.R. 387
7 Gainers Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)
8 Veuve Clicquot supra
9 Carling Breweries Ltd. v. Canada (Registrar of Trade-marks) (1972), 8 C.P.R. (2d) 247, 251 (F.C.T.D.) (WHITE CAP): “[…] In my view, however, the overriding factor is that beer, wines and spirits, are all products of one industry, and as a result, it is probable that the public would be more likely to confuse the source of origin of any of these products […]”. Followed in Oregon Brewing Co. v. Flat Rock Cellars Ltd. 2013 TMOB 176 (ROGUE). See also John Haig & Co. Ltd. v. Haig Beverages Ltd. (1975), 24 C.P.R. (2d) 66 (F.C.T.D.), Pernod Ricard v. Molson Breweries (1992), 44 C.P.R. (3d) 359 (F.C.T.D.), Vincor International Inc. v. Cerveceria Nacional Dominicana C por A, 2011 TMOB 157 (CanLII) (PRESIDENT)
10 Moosehead Breweries Ltd. v. Stokely-Van Camp Inc., (2001), 20 C.P.R. (4th) 181 (TMOB); T.G. Bright & Co v. Blake, (1985), 4 C.P.R. (3d) 36 (TMOB)
11 Société Anonyme des Eaux Minérales d’Evian v. Marcon, 2010 TMOB 83 (CanLII) (EVIAN)
12 Empresa Cubana Del Tabaco v. Tequila Cuervo, S.A. Dec. V., 2013 FC 1010 (CanLII) (COHIBA)
Last September 5th, for a second time, we rode to raise funds and contribute to prevent and accelerate the pace of research on Type 1 diabetes.
Below are our riders who participated in this event that brings together more than 23,000 business leaders and employees from across Canada.
Team CRAC: Pierre Bilodeau, Denis Livernoche, Samuelle Gadoury, Bianca Sallesse-Somensari, Olivier Nadeau (front), was very happy to participate in this event.