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Canadian Federal Court of Appeal expunges trademark on words "Boston Chicken" from its registry for lack of distinctiveness acquired by usage in Canada but upholds registration of corresponding logo.

Boston Pizza International, Inc. (Boston Pizza or plaintiff), applied to a British Columbia federal court to have it expunge the registration of the trade-marks "Boston Chicken" (registration number TMA398,700) and "Boston Chicken" design (registration number TMA396,282). Defendant, Boston Chicken, Inc. objected, persuading the judge to dismiss the application.

He held that there was no likelihood of confusion between the "Boston Chicken" design and plaintiff's trade-mark "Boston Pizza" and therefore confined his analysis to the "Boston Chicken" trade- mark. Plaintiff's appeal to the B. C. Federal Court of Appeal followed.

The Court rules that, having regard to the learned trial judge's conclusion that the [defendant's] 'Boston Chicken' mark lacked inherent distinctiveness, and considering the scant evidence of the mark's use in Canada, the [defendant's] registration was invalid.

Subsection 18(1)(b) of the Trade-Marks Act, R.S.C. 1985 c. T-13 (the Act) provides : "18. (1) The registration of a trade-mark is invalid if ... (b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, ...." [ 2]

Plaintiff contended that the "Boston Chicken" mark was not inherently distinctive and had not acquired distinctiveness through use. Defendant, however, claimed that it can show distinctiveness without use in Canada. It relied on the terms of Section 2 of the Act: "'distinctive,' in relation to a trade-mark, means a trade- mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;..." [ 4]

The Court rejects this argument. To show that defendant's mark "actually distinguishes" itself from other marks, it must acquire distinctiveness through use in Canada. "But the evidence of use is very scant, consisting of very general statements about spill-over advertising and use of the mark at one local event in the Windsor area after the expungement application was filed. ..."

"The evidence as to spill-over advertising consists of little more than an assertion that the [defendant] did some advertising on American television stations whose coverage area extended into Canada. There is no evidence as to the nature or amount of such advertising, nor any evidence as to its effect. ..."

"Before this Court, the [defendant] conceded that, for purposes of this appeal, there was no evidence of use of the 'Boston Chicken' trade-mark. I am satisfied the 'Boston Chicken' mark has not acquired distinctiveness as a result of its use in Canada." [ 5]

The Court then examines whether defendant's mark is adapted to distinguish its services from those of others. Although defendant maintains that its mark is so adapted, the Appellate Court approves the finding of the trial judge. "Nadon J.'s finding that the 'Boston Chicken' mark lacked inherent distinctiveness amounts to a finding that the mark is not adapted to distinguish the [defendant's] services from those of other traders. Consequently, since the mark does not actually distinguish the [defendant's] services from those of other traders, and is not adapted to do so, its registration is invalid because of its lack of distinctiveness." [ 8]

Boston Chicken also argued that acquired distinctiveness can arise from substantial use outside of Canada. Moreover, if a party cannot achieve distinctiveness by foreign use of its mark, then foreign trade-marks will have significant difficulty in achieving or maintaining registration in Canada.

On the contrary, the Court finds that this argument ignores the conditions for registration of foreign registered trade-marks found in Section 14 of the Act. "The effect of section 14 is that a foreign registered trade-mark must still satisfy certain threshold conditions in order to be eligible for registration in Canada. One of those conditions is that the trade-mark must have a 'distinctive character'. This is a less demanding test than distinctiveness but it still requires some evidence of use in Canada." [ 11]

Explaining the term "distinctive character," the Court further notes that "[w]hile there may be some difference between distinctive character and the distinctiveness of a mark, the jurisprudence is consistently to the effect that distinctiveness can only be acquired by use in Canada. It is not obvious why the demonstration of 'distinctive character' should not be subject to the same condition." [ 13] The Court concludes that the "Boston Chicken mark is neither inherently distinctive nor has it acquired distinctiveness through use in Canada. It is therefore liable to be expunged from the register."

"The result is that foreign registered trade-marks which are not inherently distinctive may well see their registration in Canada at risk in expungement proceedings unless they can show some degree of acquired distinctiveness through use in Canada."

"Since the date at which distinctiveness is to be assessed for purposes of section 18 is the date at which expungement proceedings are begun, delay in using the marks following registration works against the registrant. In this case, there is a gap of some three years between the date of registration and the date of expungement proceedings. It may well have been possible for the 'Boston Chicken' mark to acquire distinctiveness had it been used in Canada in that period of time."

"The respondent has failed to satisfy me that its 'Boston Chicken' mark is either inherently distinctive, or has acquired distinctiveness by virtue of its use in Canada. For those reasons, it is to be expunged from the register.

In contrast, the registration of the "Boston Chicken" design, registration number TMA396,282, is not subject to the same challenge. "[The lower court's] finding that the 'Boston Chicken' mark was not inherently distinctive was restricted to the words 'Boston Chicken' alone."

"He made no such findings with respect to the 'Boston Chicken' logo or design. The onus is on the [plaintiff] to demonstrate that the design is not distinctive. There was no argument in this Court directed to whether the logo was adapted to distinguish. Consequently, there is no basis upon which the 'Boston Chicken' design or logo should be expunged." [ 14-17]

The Court allows the appeal in part. It orders that the registration for "Boston Chicken" number TMA398,700 be expunged from the register.

Citation: Boston Pizza International, Inc. v. Boston Chicken Inc., 2003 F.C.A. 120 (Fed. Ct. App., B.C. March 7).
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Publication:International Law Update
Geographic Code:1USA
Date:Jun 1, 2003
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