Federal Court Refuses to Consider Results of On-line Survey as to Trademark Confusion Analysis

The Federal Court recently handed a decision on an appeal of a trademark opposition, in the context of which a party unsuccessfully sought to introduce into evidence the results of
an on-line survey, in Tokai of Canada Ltd. v. Kingsford Products Company, LLC (2021
FC 782).

Though surveys may sometimes be used in trademark cases, for example, to help judges reach conclusions as to the likelihood of confusion between marks (i.e. as to the initial
impressions of typical consumers), the court in this case rejected the survey altogether, for a number of reasons.

For example, the very content of the questions asked by that survey was an issue that warranted against accepting the results of the survey as valid, as were certain data manipulations upon analysis the results and producing the final report. The way the survey was held was also a problem for the court, as the survey allowed participants unlimited time to answer, something that was simply not conducive to obtaining “initial impressions” of those who responded. At the other end of the spectrum, the survey’s results were also tweaked by arbitrarily rejecting questionnaires filled too quickly by certain participants. In short, the court found the survey essentially asked the wrong question, in the wrong manner.

As to this last point and the format of the survey, the court objected to the holding of the survey on-line, by having participants simply fill a questionnaire on-screen, at their leisure, without sufficiently timing their responses to attempt at obtaining an idea of what their initial impressions were, when presented with certain trademarks. On that point, the court also held that the very format of such an online questionnaire was ill-suited to presenting participants with an adequate simulation of the kinds of circumstances where they might meet the trademarks at issue, for example on products, on store shelves, in actual stores.

All in all, the Federal Court held in Tokai that on-line surveys may be problematic when attempting to ascertain the likelihood of confusion between trademarks, especially when the goods or services at issue are provided or sold in brick-and-mortar establishments.

CIPO Ends Regional Courier Services Counters

The Canadian Intellectual Property Office (“CIPO“) recently elected to abandon its practice of allowing third parties, such as applicants and agents, to send correspondence and documents through regional counters, considered until now as “Designated Establishments”.

This change will be effective August 16, 2021.

Until now, those who needed to exchange with CIPO otherwise than by fax or electronically, could avoid having to resort to mailing stuff, by visiting a counter in certain major Canadian cities (e.g. Toronto, Calgary, Vancouver, etc.), in order to hand-in their documents. This will no longer be possible, once this change comes into effect.

This may happen, for example, to documents and evidence to be submitted in opposition or Section 45 proceedings which may not be sent by fax, due to the limitations of this antiquated technology. From now, if it gets to that, CIPO will expect use of registered mail or the like to send-in your documents.

On the bright side, CIPO is providing us with more and more links and forms which may now be used to communicate electronically and, hopefully, having to resort to obsolete means such as the fax and the mail.

Canadian Trademarks Office Updates Rules on Refusing Extensions of Delays

According to a new practice notice published by CIPO this week, the Trademarks Office (the “TMO“) will no longer grant extensions, as a matter of course, when an applicant needs more than 6 months to respond to an examination report.

As you may remember, until now, the TMO allowed applicants to request one (1) extension of delay, without having to show cause or provide any sort of real explanation. This allowed applicants to get 12 months to respond to the report of an examiner who objected to the registration of the mark at issue. From now, however, the TMO will require applicants to show the existence of “exceptional circumstances” if they want to obtain such an extension. No more of those quasi-automatic extensions, if you will.

No doubt tired of being stuck with average registration delays that we can’t seem to get under control, CIPO basically decided to opt for the homework approach: if the teacher gives you until Friday, you have until Friday -or the dog better really have eaten your homework.

The notice repeats some previously published typical examples of what may be considered “exceptional circumstances”, adding that the concept will apply not only to responding to office actions from an examiner, but also to cases where the TMO is asking a registrant to classify the goods/services associated with his/her/its trademark according to the Nice classification.

Interestingly, the notice also explains (as a similar notice did last year) that, due to a technicality, applicants should note that no governmental fees will generally be payable to request an extension to respond to an examiner report, as the delays at issue are not technically provided by the statute or its regulation. Good to know.