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 FRANÇAIS  

February 2014

Are you mixing cigars and alcohol?

In Empresa Cubana Del Tabaco v. Tequila Cuervo, S.A. Dec. V.,1 the Federal Court recently ruled that the trade-marks COHIBA for cigars and other tobacco products and LAZARO COHIBA for rum were confusing.

The judgment came following an appeal against a decision rendered by the Trade-marks Opposition Board rejecting the opposition filed by Empresa Cubana against Tequila Cuervo’s trade-mark application for LAZARO COHIBA. One of the reasons set forth by Empresa Cubana in support of its opposition was confusion with its COHIBA marks.

Specifically, the marks at issue were:

 

Empresa Cubana trade-marks

Wares

COHIBA

TMA277,250

Leaf tobacco, manufactured tobacco for smoking and chewing, snuff and cigarettes.

TMA373,446

Raw tobacco, cigars, cigarillos, cigarettes, cut tobacco, rappee, manufactured tobacco of all kinds, matches, tobacco pipes, pipe holders, ashtrays, match boxes, cigar cases and humidors.

Tequila Cuervo trade-mark

Wares

 

LAZARO COHIBA

804,663

 

Alcoholic beverages, namely rum. 

In deciding that the trade-marks in question did not cause confusion, the Trade-marks Opposition Board cited the differences between the wares covered and the absence of evidence attesting to the reputation acquired in Canada by the COHIBA trade-mark.

In its appeal, Empresa Cubana corrected this lack by producing new evidence, including affidavits pointing to its brand identity, illustrating how tobacco and alcohol consumers habitually use these products and explaining how they could be available from the same points of sale.

The Court reckoned that the new evidence presented addressed the gaps noted by the Trade-marks Opposition Board and would have significantly influenced its decision.

In light of the new evidence presented, Justice Snider was persuaded that COHIBA is a well-known mark in Canada, that it is an “iconic”2 brand the use of which “demonstrate[d] knowledge of the product outside the sphere of regular purchasers […].”3

According to the Court, this new evidence also showed that although tobacco and hard liquor are two different products, they are sometimes available through the same channels of trade.

In its analysis, the Court also examined the relationship between smoking and alcohol. To illustrate how the two relate, Justice Snider even used an example from the television show Sex and the City. In paragraph 43 of the judgment, she states:

“The interplay between cigars and hard spirits is enhanced through the media. Where permitted, advertising often shows a male (almost never female) with a cigar in one hand [and] a glass of spirits in the other. As reflected in the media references that form part of the record before me, cigars and alcohol are consistently paired. While smoking a COHIBA cigar, Mr. Big was holding a glass of hard liquor. […]”

The Court attached little importance to the impact that the presence of the term LAZARO would have on the likelihood of confusion.

The appeal accordingly succeeded, and the application for the LAZARO COHIBA trade-mark was refused.

1 2013 FC 1010 (2013-10-04).

2 Idem, paragraphs 36, 37.

3 Idem, paragraph 23.

IP News: House of Commons to Deal with 5 Treaties

We have recently been informed, through IPIC (Intellectual Property Institute of Canada) of very interesting news in the field of Intellectual Property and more specifically with respect to trade-marks.1

On Monday, January 27th, 2014 five important IP treaties were tabled in the House of Commons by the Parliamentary Secretary to the Minister of Foreign Affairs, more specifically:

1.      The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”),

2.      The Singapore Treaty on the Law of Trademarks (“Singapore Treaty”),

3.       The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”),

4.      The Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“Hague”), and

5.         The Patent Law Treaty (“PLT”).

We are unaware of the timetable to expect as of yet. This is however the first procedural step towards ratification and implementation.

This is truly an exceptional situation given the number and importance of the said treaties. This sudden interest in them is most likely related to the recent economic agreement between Canada and the European Union (the Comprehensive Economic and Trade Agreement CETA”).

Treaties 1 to 4 above-listed are mentioned in CETA in the context of “giving a best endeavours commitment (by Canada) to make all reasonable efforts to comply with international agreements and standards to encourage more effective trademark and industrial design procedures2. Having the above-named five treaties tabled so soon is by all means a “best endeavour”!

We speculate at least two significant changes could be targeted:

 

-       Regarding the Madrid Protocol, this could mean introducing in Canada the option of filing a “multinational” application for registration of a trade-mark, thus covering multiple countries at the same time. Some 91 countries are parties to the Madrid Protocol amongst which the USA, China and India.

-       Regarding the Nice Agreement, this could mean expanding our use of the Nice classification of wares and services to include filing for registration based on a 45 class system and thus simplifying (or at least attempting standardization of) the description criteria. Our current use thereof is limited to trade-mark data base indexation and searching purposes. A large portion of industrial countries are currently members amongst which the USA, China and India.

Of course, a number of modifications will first need to be brought to our Trade-mark Law which, in its current state, is not compatible with changes such as the ones above-mentioned.

For further information on the subject, we invite you to consult the IPIC web site (www.ipic.ca) or contact CRAC’s trade-marks team.

1 See the release titled “Five Treaties” available online at: http://www.ipic.ca/english/news/five-treaties.htm.
Website consulted on 2014-01-29.

2 Technical Summary Of Final Negotiated Outcomes - Canada-European Union Comprehensive Economic And Trade Agreement (p. 20), available online at: http://www.actionplan.gc.ca/sites/default/files/pdfs/ceta-technicalsummary.pdf.
Website consulted on 2014-01-29.

CQLR: New Rules for the Citation of Quebec Laws and Regulations
Patric Besner and Julie Abran-Côté (Besner, Avocats d’affaires)
January 22, 2014

You probably noticed that the Registraire des entreprises du Québec now cites Quebec laws and regulations using the acronym CQLR, without punctuation. For example, the current system (régime courant) and constituting system (régime constitutif) subsections of the information statement (état des renseignements d’une personne morale) now cite Business Corporations Act (CQLR, c. S‑31.1).

What does CQLR mean? What happened to R.S.Q. and R.R.Q.?

Up until very recently, the acronyms R.S.Q. and R.R.Q. – i.e. Revised Statutes of Québec and Revised Regulations of Québec – referred to the official version of laws in effect that was or needed to be revised periodically. However, it would now seem that any political will there might have been to revise Quebec laws has all but disappeared. Since the last revision in 1977, all efforts to clean up laws by removing repealed sections and obsolete terms have been abandoned. In fact, since 1978 laws are no longer revised but simply updated periodically. In general, these updates take place on a monthly basis. There have also been no hard copy edits since 2010. The updated laws are now available on Publications du Québec’s website under the heading “Laws and Regulations” using the “Compilation of Québec Laws and Regulations” hyperlink.

The Compilation of Québec Laws and Regulations (CQLR) represents all official versions of Quebec laws and regulations. Under section 2 of An Act respecting the Compilation of Québec Laws and Regulations,1 the Minister of Justice determines which laws and regulations are included in the compilation and formulates a policy setting out rules for their citation. And so, on January 3, 2013, the Policy Concerning the Compilation of Québec Laws and Regulations (the “Policy”) was published in the Gazette officielle du Québec. A modified version of the Policy is available on Publications du Québec’s website2.

What is different in this version compared to the one published in the Gazette officielle on January 3, 2013, is the two endnotes subsequently added to the text. In the second endnote, the Minister of Justice suggests a new citation rule applicable to laws and regulations contained in the Compilation of Québec Laws and Regulations. More specifically, he recommends that the acronym CQLR (RLRQ in French), without punctuation, be included in any citation appearing in a doctrine, judgment, legal opinion or any other document to establish a direct reference to the Compilation of Québec Laws and Regulations, or in French, the Recueil des lois et des règlements du Québec.3 He also recommends that the words “chapter” and “chapitre” be used in their abbreviated form, “c.”. The Minister’s intervention does not, however, address the use of italics or brackets in a citation. Moreover, the alphanumeric classification system in effect since 1977 continues to apply.4 Here are a few examples of the new rule in application:

Business Corporations Act, CQLR c. S-31.1

An Act Respecting the Legal Publicity of Enterprises, CQLR c. P-44.1

Or

Loi sur les sociétés par actions, RLRQ c. S-31.1

Loi sur la publicité légale des entreprises, RLRQ c. P-44.1

Finally, revisions and, accordingly, the acronyms L.R.Q., R.R.Q. and R.S.Q. will soon be a thing of the past. It should be noted that the second note added to the Policy suggesting the use of the acronym CQLR has not yet been published in the Gazette officielle du Québec and, consequently, is not currently binding. According to the Service de refonte des lois et des règlements du Québec, the note in question and the amendments made to the Policy should be published in the Gazette officielle du Québec in April 2014. Until then, legal documents – and descriptions of the share capital in particular – can validly cite the official versions of laws using the acronyms R.S.Q., R.R.Q. or L.R.Q. in French.

1 CQLR, c. R-2.2.0.0.2.

2 Website consulted on January 10, 2014.

3 It should be noted that the laws and regulations that appear in the Compilation of Québec Laws and Regulations and the Gazette officielle du Québec, i.e. the laws and regulations issued by the legislator himself, are identified solely by their alphanumeric designation. For example, the official version of a law posted on Publications du Québec’s website does not contain the acronym “CQLR.”

4 Statutes are classed according to the first letter of the main subject of the French title of the law, followed by a number denoting the title’s position in the predetermined alphabetical order. For example, the Cadastre Act is designated C-1 and An Act respecting the Caisse de dépôt et placement du Québec is designated C-2. Regulations are identified and classed under the enabling statute. See the Policy Concerning the Compilation of Québec Laws and Regulations, page 1, art. 3.

Portrait of an Employee: Iana Alexova
 

This March Iana will be celebrating four years of service at CRAC, where she has been Manager of the Trade-marks department for almost two years now.

Iana took an interest in trade-marks very early on in her career and has worked in this field since 2004. She joined the CRAC team after cutting her teeth at a firm specializing in intellectual property, first as a paralegal and eventually as an attorney.

A member of the Barreau du Québec and holder of a graduate degree in management, Iana is a registered trade-mark agent with the Canadian Intellectual Property Office. She is also authorized to represent Canadians to file trade-mark applications directly with the United States Patent and Trademark Office. She can oversee the entire registration process in the United States without needing to go through a US agent – which means lower costs for our clients!

In Madeleine Cadieux’s absence (currently on maternity leave), Iana is also in charge of the publication of the Info-CRAC newsletter.

Iana is a great co-worker, known and appreciated for her dedication and attention to detail. She is a great listener and never fails to make us laugh with her surprisingly colourful sense of humour. Clients appreciate her availability and constant attentiveness to their needs.

If you have any questions or would like more information regarding our trade-mark services, please feel free to call Iana at (514) 861-2856 or email her at iana.alexova@dhltd.com

CRAC

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Suite 1717
Montreal (Québec) Canada
H2Z 1S8
Tel: (514) 861-2722
Toll free: 1-800-361-5744
Fax: (514) 861-2751
E-mail: crac@crac.com

Notice:
This newsletter is intended to provide information of general interest only and does not offer nor should it be construed as offering any legal advice about specific situations. Individuals or entities using the information contained or referenced herein should not act upon this information without first seeking legal advice from a qualified lawyer in the particular jurisdiction. Given the changing nature of the law, we do not and cannot warrant or assure that the information herein is complete or accurate. You are advised to seek professional legal counsel in the applicable jurisdiction for your specific situation.

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