A recent decision of the Trade-mark Opposition Board illustrates copyright can be relevant in a trade mark opposition.

The Facts

Ace Café, Inc. filed an application to register the trade mark Ace Café Toronto & Design as shown below in association with a lengthy list of wares and services.

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Ace Café London Limited (the opponent) opposed the application on a number of grounds typical to trade mark oppositions. One of the grounds of opposition was that contrary to subsection 30(i) of the Trade-Marks Act the applicant could not have been and could be satisfied of its entitlement to use the trade mark in Canada in association with the applied for wares and services.

The Decision

The hearing officer was prepared, after looking at the statement of opposition and the evidence of record, to accept that this was in effect an allegation based on the fact that use of the applied for mark infringed in the opponents’ copyright in the design set out below:

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When the hearing office considered the evidence filed in the case, he was satisfied that the opponent has made out a prima facie case of copyright infringement and therefore this ground of opposition succeeded.

Comment

For those involved with trade mark oppositions, particularly when designs are in issue, this potential ground of opposition can be very helpful and should not be lost sight of.