TRADE MARKS |
Expungement |
Boston Pizza International Inc. v. Boston Chicken Inc.
A-605-01
2003 FCA 120, Pelletier J.A.
7/3/03
8 pp.
Boston Pizza International Inc. (appellant) appeals from dismissal of application for expungement of registration of trade-marks "Boston Chicken", registration number TMA398,700 and "Boston Chicken design" (BCD), registration number TMA396,282, decision reported at; (2001) 15 C.P.R. (4th) 345--Nadon J. dismissed application after concluding no likelihood of confusion between "Boston Chicken" marks (BCM) and Boston Pizza's trade-mark "Boston Pizza" (BP)--Trial Judge decided out of hand no possibility of confusion between appellant's marks and BCD, so analysis limited to BCM--Whether, having regard to Trial Judge's conclusion respondent's BCM lacked inherent distinctiveness, and considering scant evidence of use of mark in Canada, respondent's registration therefore invalid by reason of Trade-marks Act, s. 18(1)(b)--Trade-mark distinctive if "actually distinguishes" or if trade mark "adapted so to distinguish them"--To establish BCM "actually distinguishes", must demonstrate BCM acquired distinctiveness through use--Respondent conceded that no evidence of use of BCM--BCM has not acquired distinctiveness as result of use in Canada--Question becomes whether mark adapted to distinguish respondent's services from those of others--Nadon J.'s finding BCM lacked inherent distinctiveness amounts to finding mark not adapted to distinguish respondent's services from those of other traders--Consequently, registration invalid because of lack of distinctiveness--Respondent attempts to avoid this result by arguing acquired distinctiveness can arise from use of mark outside Canada--Poor argument as ignoring conditions for registration of foreign registered trade-marks found in Act, s. 14--S. 14 imposing foreign registered trade-mark must still satisfy certain threshold conditions in order to be eligible for registration in Canada--Relying on Supershuttle International, Inc. v. Registrar of Trade-marks (2002), 19 C.P.R. (4th) 34 (F.C.A.), distinctiveness can only be acquired by use in Canada--Foreign registered trade-marks not inherently distinctive may well see registration in Canada at risk in expungement proceedings unless showing some degree of acquired distinctiveness through use in Canada-- Respondent failed to demonstrate BCM either inherently distinctive, or has acquired distinctiveness by virtue of use in Canada--Accordingly, respondent's trade-mark liable to be expunged from register--Appeal allowed in part--"Boston Chicken" registration ordered expunged from register--Trade-marks Act, R.S.C., 1985 c. T-13, ss. 14 (as am. by S.C. 1994, c. 47, s. 194), 18(1)(b).