Date: 20101130
Docket: T-104-10
Citation 2010 FC 1207
Ottawa, Ontario, November 30, 2010
PRESENT: The Honourable Mr. Justice Zinn
BETWEEN:
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VANCOUVER ASSOCIATION FOR
INJURED MOTORCYCLISTS
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Applicant
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and
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ALLIANCE FOR INJURED MOTORCYCLISTS CANADA
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Respondent
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REASONS FOR JUDGMENT AND
JUDGMENT
[1]
This is an application by the
Vancouver Association for Injured Motorcyclists (AIM) seeking an order striking
out from the Register of Trade-marks Trade-mark Registration No. TMA 631,011
(the impugned registration), which is held by the Alliance for
Injured Motorcyclists Canada (AIMCan).
[2]
AIM is an organization dedicated
to assisting injured motorcyclists and promoting road safety for motorcyclists,
and is a not-for-profit society under the British
Columbia Society Act, R.S.B.C.
1996, c. 433, and is a registered charity under the federal Income
Tax Act, R.S.C. 1985, c. 1. AIM has been in continuous operation since
1983, and provides assistance to motorcycle accident victims through vocational
assistance, rehabilitation, moral support, legal referrals and public awareness
campaigns. AIM has used the following trade-mark in association with the
services it provides since 1983:
[3]
AIM has used the trade-mark in its
publications and on a variety of paraphernalia, including bumper stickers,
pins, clothing and pens. AIM has a number of chapters throughout British Columbia
and it has permitted them to use the trade-mark.
[4]
In or around 1996, members of AIM
and the AIM Chapters began discussing the potential for a national organization
which would coordinate the provision of services across Canada. To
this end, AIMCan was incorporated on September 20, 2002. Around this time,
AIMCan adopted the following trade-mark logo:
[5]
AIMCan applied for registration of
the AIMCan trade-mark (the impugned registration) and it was registered to
AIMCan on January 25, 2005.
[6]
AIM brought this application on
January 22, 2010, alleging that the impugned registration was invalid on the
grounds that:
1.
the impugned registration is invalid under s. 18(1) of the Trade-marks
Act because on the date of first use of the impugned trade-mark, it was
confusing with the AIM trade-mark, which had been previously used in Canada by
AIM, and accordingly AIMCan was not entitled to use the impugned trade-mark as
per s. 16(1)(a) of the Trade-marks Act; and
2.
the impugned registration is invalid under s. 18(1)(b) of the Trade-marks
Act because at the time the application was brought, the impugned
trade-mark did not distinguish the wares and services in association with which
it was used by AIMCan from the wares and services of AIM, and the impugned
trade-mark was not adapted so as to distinguish them.
[7]
On March 17, 2010,
Prothonotary Lafrenière dismissed AIMCan’s motion for leave of the Court to
allow its officers to represent the corporation without counsel. Prothonotary
Lafrenière’s Order was appealed, and Justice Gauthier dismissed the appeal on
April 30, 2010. AIMCan was not represented in this application and other than
filing a Notice of Appearance, it has not filed any responding materials.
[8]
The applicant sets out three
issues in its Memorandum of Fact and Law:
1. Whether AIM is a “person interested” under s. 57(1) of
the Trade-marks Act, and thus whether AIM has standing to bring the
application;
2. When AIMCan or its predecessor first used the AIMCan
trade-mark; and
3. Whether the impugned registration should be struck out
from the Register of Trade-Marks under s. 57 of the Trade-marks Act
because it does not accurately express or define the rights of AIMCan.
[9]
AIM submits that
where an applicant for expungement claims that a trade-mark registered by
another is confusing with a trade-mark previously used by the applicant, that
applicant is a “person interested” within the meaning of s. 2 of the Trade-marks Act, R.S.C. 1985, c. T-13.
AIM submits that it used the AIM trade-mark before the use of the AIMCan
trade-mark, that the AIMCan trade-mark is confusing with the AIM trade-mark,
that the continued registration of the AIMCan trade-mark will likely prevent
registration of the AIM trade-mark, and that the use and registration of the
AIMCan trade-mark may erode the distinctiveness of the AIM trade-mark and
depreciate the goodwill and reputation of the AIM trade-mark.
[10]
The applicant is
clearly a “person interested.” In my view, it has provided strong reasons why
it is affected by the registration of the AIMCan trade-mark. I agree with the
applicant that John Labatt Ltd. v. Carling Breweries Ltd. (1974), 18
C.P.R. (2d) 15 (F.C.T.D.), provides that the term “person interested” is very
broad. Further, support for the ease with which the threshold of “person
interested” can be met is provided by Justice Phelan’s recent interpretation of
John Labatt Ltd. as setting out a “de minimis” threshold for
standing: CIBC World Markets Inc. v. Stenner Financial Services Ltd.,
2010 FC 397.
[11]
The impugned
registration claims the use of the AIMCan trade-mark since May 24, 1996, and
June 1, 1999, in respect of the various wares and services it provides. AIM
submits that AIMCan could not have been using the trade-mark since those dates
since AIMCan was not even incorporated until 2002. Further, there is no
evidence before the Court that there was a predecessor in title to AIMCan that
first used the impugned trade-mark. I agree with the applicant that as there
is no evidence of any use of the impugned trade-mark prior to AIMCan’s
incorporation in 2002, the date of incorporation should be the relevant date of
use.
[12]
The applicant has presented evidence
that it has used the AIM trade-mark in Canada since at least 1983, this includes evidence relating
to:
·
use on the AIM website since June
2003, and statistics tracking visits to the site;
·
goods bearing the AIM trade-mark,
including pins and bumper stickers since 1985;
·
printed publications such as
newsletters distributed to the public since 1984;
·
brochures, calendars and
membership cards distributed since 1984, trip logs since 2008 or 2009, and
recovery journals since 2009;
·
details of expenditures on
printing the various materials;
·
events organized by AIM to raise
funds and awareness, at which the AIM trade-mark is prominently displayed,
since 1983; and
·
in-person hospital visitations to
motorcycle accident victims since the early 1980s, during which time materials
bearing the AIM trade-mark were distributed.
This evidence satisfies the Court that AIM
used the AIM trade-mark in Canada well before AIMCan used the AIMCan trade-mark.
[13]
The
applicant also provides significant evidence of the use of the AIM trade-mark
by chapters of AIM established by AIM or with its agreement. Because AIM has
satisfied the Court that its own use of the trade-mark pre-dates the use by
AIMCan of the AIMCan trade-mark, it is unnecessary to consider this additional
evidence.
[14]
The Court finds that AIM has
gained reputation and goodwill, especially in British Columbia. In order to
support its operation AIM recruits members who contribute membership fees and
donations and receive newsletters and membership cards bearing the AIM
trade-mark. AIM has received public recognition and been the subject of media
reports.
[15]
I find that AIMCan
makes use of the AIMCan trade-mark in the same area as the AIM trade-mark,
which would likely lead to the inference that the associated services are
performed by the same person. Accordingly, the AIMCan trade-mark is confusing
within the meaning of ss. 2 and 6(2) of the Trade-marks Act.
[16]
Considering
the factors set out in s. 6(5) of the Trade-marks
Act, I find the marks to be confusing because:
(i)
both trade-marks have similar
degrees of inherent distinctiveness, but the AIM trade-mark has become known to
a significantly greater extent;
(ii)
AIM has used its trade-mark for a
much longer period of time than AIMCan has (nearly 20 years longer);
(iii)
the wares and services of AIM are
effectively the same as the wares and services described in the impugned
registration and travel through identical channels of trade; and
(iv)
the two trade-marks have a high
degree of similarity in appearance, sound, and ideas suggested, since they are
both round, both include the words “injured motorcyclists” surrounding the
acronym AIM, and since “alliance” and “association” both suggest the same idea.
[17]
The applicant is entitled to have
the impugned trade-mark struck out from the register. The respondent was not
entitled to register the AIMCan trade-mark by virtue of s. 16(1)(a) of the Trade-marks
Act because it was confusing with a trade-mark already in use in Canada.
Furthermore and for many of the same reasons, the impugned trade-mark is not
distinctive and is thus invalid under s. 18(1)(b) of the Act. Considering the
similarities of the trade-marks, the products, and the audience being targeted,
it has been established that the AIMCan trade-mark is confusing with the AIM
trade-mark.
[18]
For these reasons the Court grants
a declaration that the impugned registration is invalid and, under s. 57 of the
Trade-marks Act, orders the impugned registration struck from the
Register of Trade-marks.
[19]
The
applicant is entitled to its costs, which are fixed at $3,000.00 inclusive of
fees, disbursements and taxes.
JUDGMENT
THIS
COURT’S JUDGMENT IS that:
1.
This application is granted;
2.
The Registrar of Trade Marks is to expunge registration number TMA 631,011; and
3.
The applicant is awarded costs,
fixed at $3,000.00 inclusive of fees, disbursements and taxes.
“Russel W. Zinn”
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