Date: 20070302
Docket: T-142-05
Citation: 2007 FC 243
Ottawa, Ontario, March 2, 2007
PRESENT: The Honourable Barry Strayer
BETWEEN:
EMALL.CA INC. and EMALL.CA
INC.,
carrying on business as CHEAPTICKETS.CA
Applicants
and
CHEAP TICKETS AND TRAVEL INC.
Respondent
REASONS FOR ORDER
INTRODUCTION
[1]
This
is an application for expungement of the Respondent’s trade-mark CHEAP TICKETS,
No. 564,905 and CHEAP TICKETS AND TRAVEL & DESIGN, No. 564,432 on the
grounds that when registered the trade-marks were descriptive or misdescriptive,
or that they do not now distinguish the Respondent’s services.
[2]
Both
trade-marks are registered in respect of the same services: “Travel agency; travel
information; travel tours and charters; ticket agency services in the field of transportation,
travel, theatre and sports events.” The trade-mark CHEAP TICKETS was registered
on July 18, 2002 with a disclaimer to the exclusive use of the word TICKETS.
The mark CHEAP TICKETS AND TRAVEL & DESIGN was registered on July 8, 2002
with a disclaimer of the words TICKETS and TRAVEL.
FACTS
[3]
The
Respondent’s predecessor business was named Far & Away, which by 1997 was
operating as a retail travel agency in Victoria, British
Columbia.
It started using the term “Cheap Tickets” in occasional advertising. It became
incorporated as a British Columbia corporation in May, 1998 under the name of
Cheap Tickets and Travel. The name Far & Away was phased out of its
operations. It was subsequently incorporated as a federal corporation, Cheap
Tickets and Travel, Inc., said to be in order to facilitate registering a
domain name on the Internet. In October, 1998 it applied for a trade-mark for
“Cheap Tickets and Travel & Design” and in May, 1999 it applied for a trade-mark
for “Cheap Tickets”, in both cases on the basis of existing use. Registration
was obtained as noted above. In December, 1999 Far & Away assigned to it all
business operations and assets. After some substantial correspondence with the
Canadian Intellectual Property Office over the question of whether these trade-marks
were “clearly descriptive” of the services they cover, registration was
effected in July, 2002 as noted above.
[4]
According
to the affidavit of the President of the Applicant, it is “the registrant of
numerous similarly generic or descriptive Canadian domain names”. Its
“principal website, EMALL.ca, is considered an ‘on-line shopping mall’ or ‘portal’
that enables Internet users to visit a wide variety of on-line businesses”. On
September 9, 1999, it registered “CheapTickets.ca” as a domain name with the
Canadian Internet Registration Authority (CIRA).
[5]
In
December, 2004 the Respondent commenced an action in the Supreme Court of
British Columbia against the Applicant alleging infringement of its trade-marks.
As a result, the Applicant commenced this proceeding in the Federal Court for
expungement of those trade-marks.
ISSUES
[6]
The
parties agree that the remaining issues before me are as to whether the
Respondent’s trade-marks are invalid because:
a)
the
trade-marks were not registrable at the date of registration because they were
clearly descriptive of the character or quality of the services in association
with which they were allegedly used; and
b)
the
trade-marks were not distinctive at the time this Application was commenced
because they do not actually distinguish, not are they adapted to distinguish,
the services of the Respondent from the services of all others, including the
services of the Applicant.
ANALYSIS
[7]
Paragraph
12 (1)(b) of the Trade-marks Act, R.S.C. 1985, c. T-13 provides
as follows:
|
12. (1) Subject to section 13, a trade-mark is
registrable if it is not
…
(b) whether depicted, written or sounded, either clearly
descriptive or deceptively misdescriptive in the English or French language
of the character or quality of the wares or services in association with
which it is used or proposed to be used or of the conditions of or the
persons employed in their production or of their place of origin;
|
12.
(1) Sous réserve de l’article 13, une marque de
commerce est enregistrable sauf dans l’un ou l’autre des cas suivants :
…
b) qu’elle soit
sous forme graphique, écrite ou sonore, elle donne une description claire ou
donne une description fausse et trompeuse, en langue française ou anglaise,
de la nature ou de la qualité des marchandises ou services en liaison avec
lesquels elle est employée, ou à l’égard desquels on projette de l’employer,
ou des conditions de leur production, ou des personnes qui les produisent, ou
du lieu d’origine de ces marchandises ou services;
|
[8]
Section
18(1)(b) of that 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, or
|
18.
(1) L’enregistrement d’une marque de commerce est
invalide dans les cas suivants :
…
b) la marque de
commerce n’est pas distinctive à l’époque où sont entamées les procédures
contestant la validité de l’enregistrement;
|
Are the trade-marks
descriptive?
[9]
As
was noted above, both trade-marks are in respect of services only, as described
in the identical language for both as quoted.
[10]
To
be clearly descriptive of services or wares, a trade-mark must be “easy to
understand, sufficient or plain” rather than necessarily accurate:
…it is not proper to analyse carefully
and critically the word or words as to what might be their various alternative
implications, but rather it is the immediate impression conveyed that is to be
considered.
See Hughes on Trade-Marks ( 2nd
edition), s. 30 and authorities cited therein.
[11]
An
application for expungement is not an appeal under section 56 of the Trade-Marks
Act for which a standard of review should be identified. Rather, it is a
proceeding under section 57 of the Act for an order that an entry in the
register be struck out. This is the exercise by this Court of an “exclusive
original jurisdiction”, according to subsection 57(1). This application has
proceeded on the basis of mostly new evidence. It is not clear to me what
material the Canadian Intellectual Property Office had before it in granting
these registrations. The material which has been brought to my attention
consisted of correspondence between an examiner at the CIPO and a
representative of the Respondent. That correspondence shows that initially the
examiner was strongly of the impression that these trade-marks were clearly
descriptive of the services offered by the Respondent. Later that objection was
withdrawn for no stated reason. In the present proceedings, I have been
provided with evidence on how the trade-marks have been used as well as
extensive cross-examination of the parties on their respective affidavits.
[12]
My
first impression, like that of the trade-marks examiner, is that these
trade-marks are clearly descriptive of the travel agency services provided by
the Respondent. The Respondent argues that many things it does do not involve
the sale of things normally called “Tickets”. A trade-mark, as noted above,
does not become other than descriptive by virtue of the fact that it may be
somewhat inaccurate. It is sufficient if it gives the impression of the nature
or function of the goods or services in connection with which it is used: see e.g.
S.C. Johnson & Son, Ltd. v. Marketing International Ltd., [1980] 1
S.C.R. 99; Thomson Research Associates Ltd. v. Registrar of Trade-Marks
(1982), 67 C.P.R. (2nd) 205 (F.C.T.D.). The impression these
trade-marks give is that the Respondent provides access to travel services at
normally advantageous rates. I do not think it particularly relevant that the
Respondent provides other services such as responding to inquiries about
tourism or the booking of hotel accommodation or car rentals, which may or may
not involve anything that could be called a “Ticket”.
[13]
It
is apparent that the Respondent itself has regarded the phrase “Cheap Tickets”
to be descriptive of its business. When it operated under the agency name Far
& Away it placed some newspaper ads which, apart from bearing the name of
the agency, included the expression “Cheap Tickets” to indicate that it offered
lower priced airfares to various destinations. On September 2, 1998 after the
name of the agency had been changed, it headed its advertisements with the
words “Cheap Tickets and Travel”, usually in conjunction with indications of
lower priced airfares.
[14]
Normand
Schafer, the Director and owner of the Respondent, was cross-examined on his
affidavit concerning such matters. He responded at questions 103 and 110 that
Far & Away used the words “Cheap Tickets” in their ads descriptively, to
suggest that they had low fares. At questions 110, 115-117, and at 127-137 he
admitted that the use of the terms “Cheap Tickets and Travel” by the Respondent
in its ads was in part to convey the impression that it had lower-priced travel
services to offer. He confirmed this again at question 317. At question 136, he
agreed that “Cheap” in the sense of “inexpensive” is a complimentary term.
[15]
It
was held by the Supreme Court of Canada in Canada (Registrar of Trade-Marks)
v. GA Hardie & Co., [1949] S.C.R. 483, that a trade-mark “SUPER-WEAVE”
implied superior quality and therefore was descriptive of the goods with which
it was associated. Similarly, the term “Cheap Tickets and Travel”, I believe,
on first impression conveys that the services offered by the Respondent will
frequently or generally make possible more economical travel. Just as in the
present case, in Canadian Shredded Wheat Co. v. Kellogg Co., [1938] 2
D.L.R. 145, the Judicial Committee of the Privy Council held that the term
“Shredded Wheat” was descriptive of the plaintiffs product because in its
advertising it had used that terminology generically to describe what it
produced. In the present case, the Respondent has admitted that it used “Cheap
Tickets” and “Cheap Tickets and Travel” as descriptive of the services it
provided. While with respect to the “CHEAP TICKETS” trade-mark, the Respondent
has disclaimed the word “TICKETS”, and in respect of the “CHEAP TICKETS AND
TRAVEL & DESIGN” it disclaimed both “TICKETS AND TRAVEL”, this is only with
respect to the use of those individual words by others. As long as these
trade-marks exist, the Respondent can challenge the use by others of the
combinations “CHEAP TICKETS” or “CHEAP TICKETS AND TRAVEL”. In effect these
combinations are withdrawn from use in the commercial world in Canada by anyone
other than the Respondent. I do not believe this should be permitted because I
am satisfied that these trade-marks are clearly descriptive.
Are the
trade-marks distinctive?
[16]
Having
included that the trade-marks are descriptive and therefore should never have
been registered, it is unnecessary for me to consider whether they had a
distinctiveness by the time this application was brought. Were I obliged to
consider this question, I would be hampered by the lack of evidence from the
Applicant as to whether these trade-marks had lost their distinctiveness by the
time of this application. It would appear to me that, the trade-marks being
registered, there is a presumption of their validity which the Applicant would
have to overcome in showing that they had lost their distinctiveness between
the date of registration and the date of the application being brought.
DISPOSITION
[17]
I
will therefore order that the trade-mark “CHEAP TICKETS”, registration number
564,905 and the trade-mark “CHEAP TICKETS AND TRAVEL & DESIGN”,
registration number 564,432 be struck from the trade-marks register. Costs will
be awarded to the Applicant.
ORDER
THIS COURT ORDERS THAT:
1.
The
trade-mark “CHEAP TICKETS”, registration number 564,905 be struck from the
trade-marks register;
2.
The
trade-mark “CHEAP TICKETS AND TRAVEL & DESIGN”, registration number 564,432
be struck from the trade-marks register;
3.
Costs
be awarded to the Applicant.
“B.
L. Strayer”
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