Alibi Roadhouse Inc. v. Grandma Lee's International Holdings Ltd.
T-245-96
Teitelbaum J.
10/10/97
14 pp.
Application for order entry on register of trademarks of Registration No. 446,742 in name of Grandma Lee's International Holdings Limited be struck-Applicant owner of restaurant, bar in London, Ontario-Bar operating under name "Alibi Roadhouse" since October 1988-Applicant applying to register word "Alibi" as trade-mark in respect of restaurant, bar services-Trade-marks Office Examiner refusing applicant's trade-mark as confusing with respondent's pending trade-mark application-On August 3, 1994, respondent applied for trade-mark registration of drawing containing words "Alibi Bar & Grill" in diamond design with words "Bar" and "Grill" disclaimed-Respondent's trade-mark eventually registered on August 25, 1995-Applicant claiming respondent's trade-mark not distinctive, respondent not entitled to register trademark-Under Trade-marks Act, ss. 16, 17, applicant must prove: (1) it did not abandon trade-mark as of date of advertisement of respondent's application for registration; (2) at date on which respondent first used trade-mark, it was confusing with trade-mark previously used in Canada by applicant-Question of distinctiveness determined as of date proceedings bringing validity of registration into question commenced-Trade-mark must be distinctive to all probable users of service including ultimate consumer-Critical factor message given to public-Respondent first used trade-mark, as registered, on January 28, 1994-Whether all elements of particular trade-mark prominent, must be present to permit finding of use question of fact to be determined on case-bycase basis-Actual mark used by Alibi bar in 1986 word "Alibi" in large type with bold underline-Despite differences between designs of old, new marks, dominant element in both marks word "Alibi"-Words "Bar", "Grill" disclaimed, insignificant feature of mark-Deviations neither causing injury, deception to public nor affecting "commercial impression"-Respondent entitled to register "Alibi" trade-mark-No evidence in support of applicant's argument respondent's trade-mark not distinctive at commencement of proceedings-Applicant's business in London, Ontario while respondent's business in Ottawa-Applicant has not satisfied onus upon it to prove respondent's trade-mark not distinctive-No evidence to indicate extent of use of applicant's "Alibi" mark, reputation in Canada-Finding of, at least, local distinctiveness appropriate without presence of evidence to contrary-Application dismissed-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 16, 17.