Case information
Conduct a refined search of the Supreme Court of Canada database to obtain details on the status of a matter before the Court.
30839
Mattel, Inc. v. 3894207 Canada Inc.
(Federal) (Civil) (By Leave)
Docket
Judgments on applications for leave to appeal are rendered by the Court, but are not necessarily unanimous.
| Date | Proceeding | Filed By (if applicable) |
|---|---|---|
| 2006-07-26 | Record returned to the Registrar of the Court of Appeal | |
| 2006-07-18 | Appeal closed | |
| 2006-07-18 | Correspondence (sent by the Court) to, Henry S. Brown, Q.C. in response to his letter dated June 30/06 | |
| 2006-07-06 | Correspondence received from, Henry S. Brown, Q.C. dated July 6/06 in reply to Ms. Picard's letter | Mattel, Inc. |
| 2006-07-04 | Correspondence received from, Sophie Picard dated July 4/06 in response to Mr. Brown's letter of June 30/06 | 3894207 Canada Inc. |
| 2006-06-30 | Correspondence received from, H. Brown dated June 30, 2006 re: editorial revision | Mattel, Inc. |
| 2006-06-16 | Formal judgment sent to the registrar of the court of appeal and all parties | |
| 2006-06-16 | Judgment on appeal and notice of deposit of judgment sent to all parties | |
| 2006-06-02 |
Judgment on the appeal rendered, CJ Ma Ba Bi LeB De F Abe Cha, The appeal from the judgment of the Federal Court of Appeal, Number A-199-04, 2005 FCA 13, dated January 12, 2005, heard on October 18, 2005, is dismissed with costs. * Major J. took no part in the judgment. Dismissed, with costs |
|
| 2005-10-27 | Correspondence received from, Paul D. Blanchard dated October 27, 2005. Re: Response to the letter of the respondent (sent to the judges Oct. 28/05) | Mattel, Inc. |
| 2005-10-26 | Correspondence received from, Henry S. Brown, Q.C. dated October 26, 2005. Re: Response coming soon | Mattel, Inc. |
| 2005-10-26 | Supplemental document, written reply of the appellant to the respondent's oral argument - as per Chief Justice (24 copies - sent to the judges Oct. 26/05) | Mattel, Inc. |
| 2005-10-25 | Correspondence received from, Sophie Picard dated October 25, 2005. Re: Hearing of October 18, 2005 (sent to the judges Oct. 28/05) | 3894207 Canada Inc. |
| 2005-10-20 | Transcript received, 57 pages (French transcript included) | |
| 2005-10-18 | Judgment reserved OR rendered with reasons to follow | |
| 2005-10-18 | Appellant's condensed book, Submitted in Court (14 copies) | Mattel, Inc. |
| 2005-10-18 | Acknowledgement and consent for video taping of proceedings, From all parties | |
| 2005-10-18 |
Hearing of the appeal, 2005-10-18, CJ Ma Ba Bi LeB De F Abe Cha Judgment reserved |
|
| 2005-10-07 | Reply factum on appeal, CD rec'd Oct. 12/05, Completed on: 2005-10-07 | Mattel, Inc. |
| 2005-10-05 | Order on motion to file a reply factum on appeal | |
| 2005-10-05 |
Decision on the motion to file a reply factum on appeal, of the appellant (4 pages), Ma Granted |
|
| 2005-10-04 | Submission of motion to file a reply factum on appeal, Ma | |
| 2005-09-29 | Response to motion to file a reply factum on appeal, (Letter Form), from S. E. Roussel (by fax), Completed on: 2005-09-29 | 3894207 Canada Inc. |
| 2005-09-26 | Notice of appearance, Sophie Picard will be present at the hearing. | 3894207 Canada Inc. |
| 2005-09-23 | Motion to file a reply factum on appeal, (of 4 pages) - book form, Completed on: 2005-09-23 | Mattel, Inc. |
| 2005-09-14 | Notice of appearance, Paul D. Blanchard, Henry S. Brown, Q.C. and Lisa R. W. Vatch will be present at the hearing. | Mattel, Inc. |
| 2005-09-12 | Appeal perfected for hearing | |
| 2005-09-08 | Respondent's book of authorities, Completed on: 2005-09-08 | 3894207 Canada Inc. |
| 2005-09-08 | Respondent's factum, Completed on: 2005-09-08 | 3894207 Canada Inc. |
| 2005-08-15 | Notice of hearing sent to parties | |
| 2005-08-11 |
Appeal hearing scheduled, 2005-10-18 Judgment reserved |
|
| 2005-07-21 | Appellant's book of authorities, Vol. I & II, Completed on: 2005-07-21 | Mattel, Inc. |
| 2005-07-21 | Appellant's factum, CD rec'd August 8, 2005, Completed on: 2005-07-21 | Mattel, Inc. |
| 2005-07-21 | Appellant's record, Vol. I to V, Completed on: 2005-07-21 | Mattel, Inc. |
| 2005-07-13 | Correspondence received from, S. E. Roussel re: will act as agent pour the respondent | 3894207 Canada Inc. |
| 2005-06-30 | Appeal court record, (2 boxes - joint with Trial Court record) | |
| 2005-06-28 | Correspondence received from, S. Picard re: consent to Gowlings' request (by fax - original rec'd July 4/05) | 3894207 Canada Inc. |
| 2005-06-28 | Correspondence received from, Gowlings re: requesting Exhibits from Federal Court of Appeal records | Mattel, Inc. |
| 2005-06-01 | Letter advising the parties of tentative hearing date and filing deadlines (Leave granted) | |
| 2005-05-27 | Judgment on leave sent to the parties | |
| 2005-05-26 | Notice of appeal, Completed on: 2005-05-26 | Mattel, Inc. |
| 2005-05-26 |
Judgment of the Court on the application for leave to appeal, The motion to expedite the application for leave to appeal is granted. The application for an extension of time is granted and the application for leave to appeal from the judgment of the Federal Court of Appeal, Number A-199-04, 2005 FCA 13, dated January 12, 2005, is granted with costs to the applicant in any event of the cause. This appeal is to be heard with Veuve Clicquot Ponsardin v. Les Boutiques Cliquot Ltée., et al. (30398) on October 18, 2005, and the schedule for filing and serving material shall be set by the Registrar Granted, with costs to the applicant(s) in any event of the cause |
|
| 2005-05-26 |
Decision on motion to extend time to file and /or serve the leave application, The application for an extension of time is granted. Granted |
|
| 2005-05-26 |
Decision on motion to expedite the application for leave to appeal, The motion to expedite the application for leave to appeal is granted. Granted |
|
| 2005-05-09 | All materials on application for leave submitted to the Judges, CJ Bi Cha | |
| 2005-05-09 | Submission of motion to expedite the application for leave to appeal, CJ Bi Cha | |
| 2005-05-09 | Submission of motion to extend time to file and/ or serve the leave application, CJ Bi Cha | |
| 2005-05-02 | Correspondence received from, H.S. Brown, Q.C. re: to expedite leave to appeal | Mattel, Inc. |
| 2005-04-28 | Applicant's reply to respondent's argument, (service missing - Rec'd April 29, 2005), Completed on: 2005-04-29 | Mattel, Inc. |
| 2005-04-19 | Book of authorities | 3894207 Canada Inc. |
| 2005-04-19 | Respondent's response on the application for leave to appeal, Completed on: 2005-04-18 | 3894207 Canada Inc. |
| 2005-03-30 | Letter acknowledging receipt of a complete application for leave to appeal | |
| 2005-03-21 | Motion to expedite the application for leave to appeal, (included in Leave Application), Completed on: 2005-03-21 | Mattel, Inc. |
| 2005-03-21 | Book of authorities | Mattel, Inc. |
| 2005-03-21 | Motion to extend the time to file and or serve the application for leave to appeal, Included in the Application, Completed on: 2005-03-21 | Mattel, Inc. |
| 2005-03-21 | Application for leave to appeal, Completed on: 2005-03-21 | Mattel, Inc. |
| 2005-03-14 | Notice of application for leave to appeal | Mattel, Inc. |
Parties
Please note that in the case of closed files, the “Status” column reflects the status of the parties at the time of the proceedings. For more information about the proceedings and about the dates when the file was open, please consult the docket of the case in question.
Main parties
| Name | Role | Status |
|---|---|---|
| Mattel, Inc. | Appellant | Active |
v.
| Name | Role | Status |
|---|---|---|
| 3894207 Canada Inc. | Respondent | Active |
Counsel
Party: Mattel, Inc.
Counsel
Lisa R. Vatch
160 Elgin Street
26th Floor
Ottawa, Ontario
K1P 1C3
Telephone: (613) 233-1781
FAX: (613) 563-9869
Agent
2600 - 160 Elgin St
P.O. Box 466, Stn "D"
Ottawa, Ontario
K1P 1C3
Telephone: (613) 233-1781
FAX: (613) 788-3433
Email: henry.brown@gowlings.com
Party: 3894207 Canada Inc.
Counsel
600 de La Gauchetière Street West
Suite 2400
Montreal, Quebec
H3B 4L8
Telephone: (514) 878-5583
FAX: (514) 878-4890
Agent
111, rue Champlain
Gatineau, Quebec
J8X 3R1
Telephone: (819) 771-7393
FAX: (819) 771-5397
Email: s.roussel@noelassocies.com
Summary
Keywords
None.
Summary
Case summaries are prepared by the Office of the Registrar of the Supreme Court of Canada (Law Branch). Please note that summaries are not provided to the Judges of the Court. They are placed on the Court file and website for information purposes only.
Property law - Intellectual property - Trade-marks - Confusion - Famous marks - Opposition proceedings - Whether the courts below erred in holding that there must be a connection between the wares or services of the parties, notwithstanding the broad language of s. 6(2) of the Trade-marks Act, R.S. 1985, c. T-13 and that the famous BARBIE trade-marks are in issue - Whether the courts below erred in relation to the issue of confusion by focusing on the wares or services actually offered by the Respondent rather than the wares or services claimed in the application - Whether the courts below should have considered the fact that the Respondent had no credible basis or justification for using the name BARBIE’S other than to take advantage of Mattel’s famous trade-mark - Whether the courts below erred in completely rejecting the survey evidence demonstrating confusion in the marketplace.
The Appellant owns several famous registered trade-marks for BARBIE and BARBIE’S, used in relation to dolls and various other wares, The Respondent was seeking to register a trade-mark for BARBIE’S & design used in relation to restaurants and catering services. The Appellant opposed the registration.
The Trade-marks Opposition Board and the lower courts found that the Appellant had not proven a likelihood of confusion between their famous trade-marks and the trade-mark the Respondent was applying to register, in part because the marks were for very different wares and services. In so finding, they relied, in part, upon the actual use of the marks. They also found that a survey submitted in evidence by the Appellant was seriously flawed. The Trade-Marks Opposition Board dismissed the opposition, and the Federal Court, Trial Division and the Federal Court of Appeal dismissed the Appellant’s subsequent appeals.
Lower court rulings
Federal Court of Canada, Trial Division
T-717-02, 2004 FC 361
Appeal dismissed; application for judicial review allowed
Federal Court of Appeal
A-199-04, 2005 FCA 13
Appeal against the decision of Rouleau J. dismissed
Memorandums of argument on application for leave to appeal
The memorandums of argument on an application for leave to appeal will be posted here 30 days after leave to appeal has been granted unless they contain personal information, information that is subject to a publication ban, or any other information that is not part of the public record. You may also obtain copies of the memorandum by filing out the Request for Court records form or by contacting the Court’s Records Centre either by email at records-dossiers@scc-csc.ca or by telephone at 613‑996‑7933 or at 1‑888‑551‑1185.
If you have questions about a memorandum of argument or want to use a memorandum of argument, please contact the author of the memorandum of argument directly. Their name appears at the end of the memorandum of argument. The contact information for counsel is found in the “Counsel” tab of this page.
Downloadable PDFs
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Related links
Factums on appeal
The factums of the appellant, the respondent and the intervener will be posted here at least 2 weeks before the hearing unless they contain personal information, information that is subject to a publication ban, or any other information that is not part of the public record. You may also obtain copies of factums by filling out the Request for Court records form or by contacting the Court’s Records Centre either by email at records-dossiers@scc-csc.ca or by telephone at 613‑996‑7933 or at 1‑888‑551‑1185.
If you have questions about a factum or want permission to use a factum, please contact the author of the factum directly. Their contact information appears on the first page of each factum.
Downloadable PDFs
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