Lawyer Monthly - June 2022

o begin with, can you give us a brief overview of the Bombay Frankie trademark dispute and its background? The term “frankie” refers to a common street food in India which has been in use since the 1930s, and denotes a wrap that can be filled with many things. The plaintiff, 2788610 Ontario Inc., applied to register a trademark on October 2020 for BOMBAY FRANKIES designating, inter alia “restaurant services” and “delivery of food by restaurants”. After filing the trademark application, the plaintiff invested time and money in developing a franchise system for a network of restaurants called Bombay Frankies, including franchising, trademark, leasing, menu and marketing efforts. Prior to 2021, the defendants operated several restaurants in the Greater Toronto Area (GTA) in Canada and used the term “Bombay Frankie” in menus to identify a product or food. In 2021, the defendants began using the name “Bombay Frankie” as the name of a restaurant, having incorporated and opened two restaurants under that name, and applied to register a trademark for the name. The plaintiff sought to enforce trademark rights on the basis of its still pending first-filed trademark application, arguing that a trademark will be registrable when it is intended to be used, but not yet in use. The plaintiff further argued that the defendant’s use of Bombay Frankie on menu items does not constitute use sufficient to permit the defendant to take issue with the plaintiff’s trademark application on the basis of prior use. The plaintiff argued that Cautionary Tales from theCanadian Trademark Landscape Over the course of a rich career in intellectual property law, Marks & Clerk partner Catherine Lovrics has encountered several cases that have come to influence the trajectory of Canadian IP law. In this feature, she recounts the Bombay Frankies and Milano Pizza cases – recent decisions which have significant potential implications for Canada’s IP scene. What lessons can be learned from these cautionary tales? T EXPERT INSIGHT

RkJQdWJsaXNoZXIy Mjk3Mzkz