Docket: T-2036-14
Citation: 2015 FC 1259
Ottawa, Ontario, November 6, 2015
PRESENT: The Honourable Madam Justice Heneghan
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BETWEEN:
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SUPERSHUTTLE
INTERNATIONAL, INC.
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Applicant
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and
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FETHERSTONHAUGH
& CO.
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Respondent
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JUDGMENT
AND REASONS
I.
INTRODUCTION
[1]
Supershuttle International, Inc. (the
“Applicant”) appeals from a decision of Hearing Officer Andrew Bene (the
“Officer”) of the Trade-marks Opposition Board (the “Board”) on behalf of the
Registrar of Trade-marks (the “Registrar”), dated July 30, 2014.
II.
BACKGROUND
[2]
The Applicant is a body corporate. It provides
ground transportation services to and from airports in various cities outside
Canada. Through its website, “www.supershuttle.com”, individuals in Canada can
make reservations and purchase tickets to use these shuttle services which are
provided outside the country.
[3]
On March 14, 1995, the Applicant applied to
register the trade-mark SUPERSHUTTLE (the “Mark”), based on proposed use in
Canada, as well as upon foreign use and registration in the United States of
America, in association with the services “Airport passenger ground
transportation services”.
[4]
The Registrar first rejected the application on
the ground that the Mark was clearly descriptive or deceptively misdescriptive.
That decision was reversed on appeal in Supershuttle International, Inc. v.
Canada (Registrar of Trade-marks) (2002), 218 F.T.R. 306, when the
Court ordered that the Mark should proceed to publication. After a declaration
of use was filed on November 21, 2003, the Mark was registered on December 15,
2003, as TMA597571.
[5]
On February 14, 2012, at the request of
Fetherstonhaugh & Co. (the “Respondent”), the Registrar issued a notice
under section 45 of the Trade-marks Act, R.S.C., 1985, c. T-13 (the
“Act”), requiring the Applicant to file evidence demonstrating use of the Mark
in Canada at any time within the three-year period preceding the date of the
notice.
[6]
In his decision, the Officer concluded that the
Applicant had not utilized the Mark in Canada with the registered services,
within the meaning of sections 4 and 45 of the Act. The Officer was not
satisfied that the Applicant performed the registered “airport passenger ground
transportation services” in Canada and consequently decided that the Mark
should be expunged from the trademarks register.
[7]
The Officer outlined that the Applicant was
required to show use of the Mark in association with the services specified in
the registration, that is “airport passenger ground transportation services”,
between February 14, 2009 and February 14, 2012 while the threshold in a
section 45 proceeding is relatively low, the Officer noted that sufficient
facts must be presented to show use in Canada, with the registered services.
[8]
In response to the section 45 notice, the
Applicant submitted the affidavit of Ms. Judy Robinson, Vice-President of
Regulatory Affairs, sworn August 10, 2012. For the purposes of the present
application for judicial review, the relevant parts of Ms. Robertson’s
affidavit established the following:
•
Supershuttle provides approximately 8 million
airline passengers worldwide with ground transportation to and from airports in
the United States and France;
•
Supershuttle did not operate vans in Canada
during the relevant period;
•
Approximately 1,200 vans in the United States display
the Mark;
•
Approximately 19 million Canadians visited
Supershuttle’s website during the relevant period;
•
At least 61,000 Canadians made reservations for
transportation services during the relevant period;
•
Canadian tour operators utilize Supershuttle as
part of their tour packages offered to Canadians by providing over pre-paid
vouchers to over 10,000 individuals; and
•
Supershuttle’s service was advertised in US
Airways magazine, and on the travel websites Expedia and Orbitz.
[9]
On the basis of Ms. Robinson’s evidence, the
Officer concluded that the Applicant did not have “wheels on the ground” in
Canada during the relevant period. However, the service was advertised in
Canada and used by Canadians. The question for the Officer was whether this was
sufficient to constitute use of the Mark within the meaning of sections 4 and
45 of the Act.
[10]
The Officer, relying on Federal Court
jurisprudence, found that advertising in Canada without a service being
available for performance in Canada was insufficient to demonstrate use. The
Applicant did not operate airport shuttle vans in Canada during the relevant
period and argued that the Hearing Officer should give a broad interpretation
to “airport passenger ground transportation services” and accept that the
registered service should include “airport passenger ground transportation
reservations and ticketing services”, since Canadians have the ability to make
reservations.
[11]
The Officer rejected this argument and the
Applicant’s reliance on Venice Simplon-Orient-Express Inc. v. Société
Nationale des Chemins de Fer Français SNCF (2000), 9 C.P.R. (4th)
443.
[12]
In Orient Express, supra, Justice
McEwan dismissed an appeal of the Registrar where it was found that “travel
services, namely railway passenger services” encompassed services such as
“train ticketing and to train reservations”. The Officer was not persuaded that
Orient Express overturned Marineland Inc. v. Marine Wonderland &
Animal Park Ltd., [1974] 2 F.C. 558 and Motel 6, Inc. v. No. 6 Motel
Limited, (1982) 127 D.L.R. (3d) 267, with respect to performance of
services in Canada. He expressed the view that in Orient Express, the
Court simply upheld the Registrar’s conclusion of a particular description of
services in the context of specific evidence of use, as reasonable.
[13]
The Officer quoted from the decision in Motel
6, supra at page 278 that “… receiving and
confirming reservations for motel accommodation in the U.S.A. does not
constitute use of the mark in Canada in association with motel services”
as being consistent with the concept of “use” in Canadian trade-mark law.
[14]
The Officer distinguished Orient Express,
supra finding that, in that case, the registered services began with the
broad “travel services”. Since the Applicant in this case did not operate an
“airplane transportation passenger ground transportation” service in Canada and
only allowed Canadians to book that service, the registered service was not
performed in Canada. The Officer did not regard airport shuttle transportation
services as analogous to retail store services, the latter being a service that
an individual can use without leaving his or her home.
[15]
Since “reservation services” were not the
registered services, the Officer concluded that the Mark should not be
maintained by virtue of the reservations services actually being
available in Canada. While the Mark may have been advertised and known in
Canada, this did not constitute use of the Mark in Canada with respect to the
registered services; the Applicant did not offer ground transportation services
in Canada.
[16]
In light of this analysis and pursuant to
section 63(3) of the Act, the Officer concluded the Mark’s registration should
be expunged.
III.
DISCUSSION AND DISPOSITION
[17]
The Applicant raises two issues. First, did
the Officer err by interpreting the meaning of “use”, pursuant to section 4 of
the Act such that the Applicant’s activities in Canada during the relevant
period, February 14, 2009 through February 14, 2012, did not constitute
use of the Mark with the services covered by the registration. Second, is a
trademark “used” in Canada with a service if an essential step in the
performance of the service, including the provision of a benefit to consumers,
happens in Canada.
[18]
The Respondent frames the issue by reference to
the standard of review and submits that if the correct standard of review was
applied, the Officer’s decision should not be disturbed.
[19]
The Applicant submits that the question whether
a trademark is “used” in Canada with a service, is an essential step in the
delivery of the service occurs in Canada, is a question of law that can be
separated from the facts of this case and is therefore, reviewable on the
standard of correctness. The Applicant relies on the decisions in Suzuki
Motor Corp. v. Hayabusa Fightwear Inc. (2014), 122 C.P.R. (4th) 1 at
paragraphs 25 and 39; Canadian Council of Professional Engineers v. REM
Chemicals Inc.(2014), 125 C.P.R. (4th) 245 at paragraph 22 and Ministry
of Commerce, Industry & Tourism (Republic of Cyprus) v. Producteurs
Laitiers du Canada et al. (2010), 393 F.T.R. 1 at paragraph 29.
[20]
Alternatively, the Applicant argues that if the
standard is reasonableness, the decision is unreasonable.
[21]
For its part, the Respondent submits that the
jurisprudence had established that, absent new evidence on appeal, the standard
of review from a decision of the Registrar is reasonableness. It argues that
this is the appropriate standard in light of the Registrar’s expertise in
determining “use” of a trademark in section 45 proceedings and the fact that
this application raises a question of mixed fact and law. The Respondent relies
on the decisions in Molson Breweries v. John Labatt Ltd. (C.A.), [2000]
3 F.C.R. 145 at paragraph 51; Mattel, Inc. v. 3894207 Canada Inc.,
[2006] 1 S.C.R. 772 at paragraph 40; Rogers Communications Inc. v. Society
of Composers, Authors and Music Publishers of Canada, [2012] 2 S.C.R. 283
at paragraph 71; Alliance Laundry Systems LLC v. Whirlpool Canada LP
(2014), 129 C.P.R. (4th) 416 at paragraph 13; and Spirits International B.V.
v. BCF S.E.N.C.R.L. et al. (2012), 432 N.R. 319 at paragraph 10.
[22]
It is well established that the standard of
review of an appeal pursuant to section 56 of the Act, where no new evidence is
filed, is reasonableness. I refer to the decisions in Gouverneur Inc. v. The
One Group LLC, 2015 FC 128 at para 18; Ridout & Maybee LLP v. HJ
Heinz Co. Australia Ltd. (2014), 454 F.T.R. 135 at paragraphs 27-28; and
Alliance Laundry, supra at paragraph 13.
[23]
In Dunsmuir v. New Brunswick, [2008] 1
S.C.R. 190 the Court discussed the concept of reasonableness and said the
following at paragraph 47:
… In judicial
review, reasonableness is concerned mostly with the existence of justification,
transparency and intelligibility within the decision-making process. But it is
also concerned with whether the decision falls within a range of possible,
acceptable outcomes which are defensible in respect of the facts and law.
[24]
Further, the Court described deference at
paragraph 48 as follows:
… Deference is
both an attitude of the court and a requirement of the law of judicial review.
It does not mean that courts are subservient to the determinations of decision
makers, or that courts must show blind reverence to their interpretations, or
that they may be content to pay lip service to the concept of reasonableness
review while in fact imposing their own view. Rather, deference imports respect
for the decision-making process of adjudicative bodies with regard to both the
facts and the law.
[25]
In my opinion, the Officer’s review of the
evidence of “use”, his interpretation of the services covered by the
registration and the application of the facts to the law to decide whether the
mark was “used” in Canada in association with the registered services, are all
entitled to deference. The issues in a section 45 proceedings, including “use”
pursuant to section 4(2), are well within the expertise of the Officer.
[26]
The Applicant submits that by performing
reservation and booking services in Canada, the Mark was “used” in Canada. It
points out that the Mark was displayed on its website when Canadians reserved
airport transportation services in the United States and Europe. In its view,
advance reservations provide a benefit to Canadian consumers and are an
essential aspect of the services that it offers.
[27]
In light of the conclusion in Orient Express,
supra, that booking and reservation services performed in Canada
for trains operating in Europe constitute a performance of “travel services,
namely railway and passenger service” in Canada, the Applicant argues it was an
error for the Officer to conclude its Mark was not used in Canada for “airport
passenger ground transportation services”. As well, the Applicant refers to the
Registrar’s decision in Advantage Car & Truck Rentals v. Advantage
Rent-A-Car, Inc. (2003), 27 C.P.R. (4th) 342 at 345 (TMOB) where the
Court’s decision in Orient Express, supra was cited and marks
relating to rental car operations exclusively in the United States were found
to be used in Canada with “automobile rental service and automobile leasing
services”.
[28]
The Applicant also argues that the
Officer erroneously interpreted the Mark’s services narrowly and required the
presence of airport shuttles in Canada. It submits that the Officer ignored
jurisprudence that states “services” should be given a liberal interpretation and
a service only requires that Canadian consumers receive a benefit from an
activity. This activity may be ancillary to the registered services.
[29]
The Applicant contends that since the purpose of
section 45 proceedings is to remove “deadwood” from the register and the
Mark was not deadwood, the narrow interpretation of the services led to an
unreasonable result.
[30]
Finally, the Applicant submits that the Officer
erred by relying on Motel 6, supra and submits that the case is
distinguishable. It notes that the Officer abbreviated the quotation to remove
important context regarding the nature of the reservation being by telephone in
that case. As well, the owner of the mark in that case had no agents or place
of business in Canada, nor any reservation facilities or services; customers
were required to write or call the specific Motel 6 location for a reservation.
It also argues that the plaintiff, in that case, sought to expunge the mark
based on prior rights, rather than pursuant to a section 45 proceeding where the
only issue is whether the mark is “deadwood”.
[31]
The Applicant submits that unlike Motel 6,
supra its method of reservations involves Canadian customers viewing the
Mark, in Canada, on its website.
[32]
The Respondent argues that the decision meets
the standard of reasonableness, that it is transparent, intelligible and within
defensible outcomes in respect of the facts and the law. In its view, the
Officer did not err in his detailed analysis of the jurisprudence and
conclusion that Canadians cannot enjoy ground transportation services without
leaving Canada. Further, it submits that the Applicant has not met its burden
to overturn the decision under any standard of review, including correctness.
[33]
The Respondent argues that the decision in Orient
Express, supra did not address an inextricable question of law but
was decided on the specific facts of that section 45 proceeding. Further, it
points to the differences between the services at issue in that case, that is
“travel services, namely railway passenger services” and the services involved
in the present case, that is “airport passenger ground transportation
services”. The present services do not just say “airport passenger services”
but include “ground transportation”.
[34]
The Respondent further submits that despite dicta
from this Court in Kraft Ltd. v. Registrar of Trade Marks (1984), 1
C.P.R. (3d) 457 (F.C.T.D) suggesting that there is no distinction between
primary, incidental or ancillary services, that case did not address a
trademark that will be used in services ancillary or incidental to the services
described, where those services are not offered in Canada.
[35]
The Respondent further argues that the decisions
which discuss the ancillary services principle, including Kraft, Orient
Express and TSA Stores, Inc. v. Canada (Registrar of Trade-Marks)
(2011), 91 C.P.R. (4th) 324 at paragraph 17, were expressly and reasonably
addressed by the Officer.
[36]
In the present case, the Respondent notes the
lack of evidence about marketing or advertising directly to Canadians, and the
absence of any real activity in Canada beyond the acceptance of reservations
for services provided elsewhere. It submits that that upon the evidence
presented, the Officer reasonably concluded that the services must be available
in Canada.
[37]
Recently, in Alliance Laundry, supra,
Justice Bédard reviewed the applicable principles involved in a section 45
proceedings and an appeal from such a decision. Section 45 proceedings are
summary and administrative in nature, meant to clear “deadwood” from the
register in an efficient manner; see the decision in Philip Morris Inc. v.
Imperial Tobacco Ltd. et al. (1987), 13 C.P.R. (3d) 289 at 293 (F.C.T.D.).
[38]
A registrant does not carry a heavy burden in
such proceedings and an affidavit that provides sufficient evidence will
usually meet the evidentiary requirement of use during the three-year period at
issue; see the decisions in Phillip Morris, supra and HJ Heinz,
supra.
[39]
Section 45 requires a registrant to demonstrate
use of a trademark in Canada, at any time during the three years preceding the
date of the notice, with respect to each of the goods or services specified in
the registration. As “services” are not defined in the Act, generally, they are
to be given a liberal interpretation and there is to be no distinction between
primary, incidental or ancillary services so long as Canadians receive a
benefit from the activity; see the decision in TSA Stores, supra
at paras 16-17. At the same time, however, that liberal interpretation is not
unlimited.
[40]
While the observation of a trademark by
individuals on computers in Canada may demonstrate use of a mark, the
registered services must still be offered in Canada; UNICAST SA v. South
Asian Broadcasting Corporation Inc., 2014 FC 295 at paragraphs 44-48; Express
File Inc. v. HRB Royalty Inc.(2005), 39 C.P.R. (4th) 59 at paragraph 20.
[41]
Most importantly, as stated by the Court in Express
File, supra at paragraph 23, “it is well
recognized that the use of a trade-mark in relation with the service must be
decided on a case-by-case basis.”
[42]
As noted above, the reasonableness standard
requires that a decision meet the norms of transparency, justification and
intelligibility. These elements are to be measured against the evidence
submitted and the applicable legal tests and jurisprudence.
[43]
A decision is not unreasonable just because
there may be another outcome was available; I refer to the decision in Khosa
v. Canada (Minister of Citizenship & Immigration), [2009] 1 S.C.R. 339
where the Supreme Court of Canada said the following at paragraph 59:
… Reviewing courts
cannot substitute their own appreciation of the appropriate solution, but must
rather determine if the outcome falls within “a range of possible, acceptable
outcomes which are defensible in respect of the facts and law” (Dunsmuir,
at para. 47). There might be more than one reasonable outcome. However, as
long as the process and the outcome fit comfortably with the principles of
justification, transparency and intelligibility, it is not open to a reviewing
court to substitute its own view of a preferable outcome.
[44]
In my opinion, the conclusion of the Officer was
reasonable, in light of the evidence before him. He applied the relevant
jurisprudence. There is no basis for judicial intervention. This appeal is
dismissed with costs to the Respondent.
JUDGMENT
THIS COURT’S JUDGMENT is that this appeal is dismissed with costs to the Respondent.
"E. Heneghan"
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