Cross-Canada Auto Body Supply (Windsor) Ltd. et al. v. Hyundai Auto Canada, 2007 FC 580

• Judge: Tremblay-Lamer, J.
• Court: Federal Court (Canada)
• Case Date: April 24, 2007
• Jurisdiction: Canada (Federal)
• Citations: 2007 FC 580;(2007), 313 F.T.R. 278 (FC)

Cross-Can. Auto Body v. Hyundai (2007), 313 F.T.R. 278 (FC)

MLB headnote and full text

Temp. Cite: [2007] F.T.R. TBEd. JN.020

Cross-Canada Auto Body Supply (Windsor) Limited, Cross-Canada Auto Body Supply (West) Limited and At Pac West Auto Parts Enterprise Ltd. (applicants) v. Hyundai Auto Canada, A Division of Hyundai Motor America (respondent)

(T-1005-05; 2007 FC 580)

Indexed As: Cross-Canada Auto Body Supply (Windsor) Ltd. et al. v. Hyundai Auto Canada

Federal Court

Tremblay-Lamer, J.

June 1, 2007.

Summary:

Hyundai Auto Canada (HAC) was the registered owner of five trademarks that were assigned to it from its predecessor, Hyundai Auto Canada Inc. The applicants, resellers of automotive parts and accessories, who were also defendants in a trademark infringement action brought by HAC, sought to expunge the trademark registrations, asserting invalidity due to lack of distinctiveness and, regarding three of the trademarks, abandonment.

The Federal Court ordered one of the trademarks struck from the register due to abandonment. The challenge to the registrations on the basis of non-distinctiveness failed.

Trademarks, Names and Designs - Topic 889

Trademarks - Registration - Expungement of mark - Grounds - Lack of use or abandonment - Hyundai Auto Canada (HAC) was the registered owner of five trademarks that were assigned to it from its predecessor, Hyundai Auto Canada Inc. - The applicants, resellers of automotive parts and accessories, who were also defendants in a trademark infringement action brought by HAC, sought to expunge three of the trademark registrations on the basis that the trademarks had not been used for at least 15 years - The Federal Court ordered one of the trademarks struck from the register - In order to establish abandonment, the applicants had to prove that the trademark was no longer in use in Canada and an intention to abandon the mark - HAC successfully established that two of the trademarks were still in use - Regarding the third, the court rejected HAC's assertion, based on its regular renewal of the registration, that it had made no deliberate decision to abandon the trademark - It was uncontested that there had been no use of that trademark for a long period of time and no evidence of a plan to use it - The court was satisfied that HAC had abandoned that trademark - See paragraphs 45 to 54.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - Hyundai Auto Canada (HAC) was the registered owner of five trademarks that were assigned to it from its predecessor, Hyundai Auto Canada Inc. (HACI) - The applicants, resellers of automotive parts and accessories, who were also defendants in a trademark infringement action brought by HAC, sought to expunge the trademark registrations, asserting, inter alia, invalidity due to lack of distinctiveness - The Federal Court held that the challenge to the registrations on the basis of non-distinctiveness failed - The court rejected the applicants' argument that confusion as to the source of the goods associated with the trademarks arose from the change of ownership of the trademarks from the Hyundai Motor Company of Korea to HACI to HAC - HAC, through its network of franchised dealerships and its extensive advertising, was the uninterrupted face to the public and therefore the proper "source" for the purposes of this matter - The purchasing public was not confused as to the products' source - The public perception was generally that the dealer was responsible for selling and leasing, as well as for addressing consumer issues - Therefore, the HAC's dealers were viewed as the source of the products - See paragraphs 11 to 42.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - Hyundai Auto Canada (HAC) was the registered owner of five trademarks that were assigned to it from its predecessor - The applicants, resellers of automotive parts and accessories, who were also defendants in a trademark infringement action brought by HAC, sought to expunge the trademark registrations, asserting, inter alia, invalidity due to lack of distinctiveness - The Federal Court held that the challenge to the registrations on the basis of non-distinctiveness failed - The court rejected the applicants' argument that confusion as to the source of the goods associated with the trademarks arose from a significant delay (nearly 20 years in the case of three of the trademarks) in registering the assignment of the trademarks - HAC, through its network of franchised dealerships and its extensive advertising, was the uninterrupted face to the public and therefore the proper "source" for the purposes of this matter - The source of the products associated with the trademarks had not changed - Any reputation acquired by the products as coming from a particular source had not been called into question by the failure to register the assignment of the trademarks to HAC until relatively recently - See paragraphs 41 to 44.

Trademarks, Names and Designs - Topic 889.5

Trademarks - Registration - Expungement of mark - Grounds - Confusion - [See both Trademarks, Names and Designs - Topic 889.1 ].

Trademarks, Names and Designs - Topic 890

Trademarks - Registration - Expungement of mark - Evidence and proof - Hyundai Auto Canada (HAC) was the registered owner of five trademarks that were assigned to it from its predecessor - The applicants, resellers of automotive parts and accessories, who were also defendants in a trademark infringement action brought by HAC, sought to expunge the trademark registrations - The applicants asserted that confusion as to the source of the goods associated with the trademarks arose from the change of ownership of the trademarks from the Hyundai Motor Company of Korea (HMC) to HAC's predecessor and, then, to HAC - In support of the argument, the applicants submitted affidavit evidence that vehicles sold at HAC's dealerships had markings which indicated that the source of the equipment was HMC - The affiants were four employees of the applicants' former law firm - The Federal Court held that the evidence deserved little, if any, weight for its lack of objectivity - Further, it was too limited a sample to be representative of the relevant public's perception of the source of the goods associated with the trademarks - See paragraphs 22 to 25.

Cases Noticed:

Nature's Path Foods Inc. v. Quaker Oats Co. of Canada Ltd. (2001), 204 F.T.R. 102 (T.D.), refd to. [para. 10].

Mr. P's Mastertune Ignition Services Ltd. v. Tune Masters (1984), 82 C.P.R.(2d) 128 (F.C.T.D.), refd to. [para. 10].

Golden Happiness Bakery Ltd. v. Goldstone Bakery & Restaurant Ltd. (1994), 76 F.T.R. 52 (T.D.), refd to. [para. 10].

Remo Imports Ltd. v. Jaguar Cars Ltd. et al. (2006), 285 F.T.R. 168; 2006 FC 21, refd to. [para. 10].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340, refd to. [para. 17].

Western Clock Co. v. Oris Watch Co., [1931] Ex. C.R. 64, refd to. [para. 17].

Tommy Hilfiger Licensing Inc. et al. v. Quality Goods I.M.D. Inc. et al. (2005), 267 F.T.R. 259 (F.C.), refd to. [para. 17].

White Consolidated Industries Inc. v. Beam of Canada Inc. (1991), 47 F.T.R. 172; 39 C.P.R.(3d) 94 (T.D.), refd to. [para. 17].

Cross-Canada Auto Body Supply (Windsor) Ltd. et al. v. Hyundai Auto Canada (2006), 352 N.R. 375; 2006 FCA 133, refd to. [para. 23].

McDonald's Corp. et al. v. Coffee Hut Stores Ltd. (1994), 76 F.T.R. 281; 55 C.P.R.(3d) 463 (T.D.), refd to. [para. 31].

Wilkinson Sword (Canada) Ltd. v. Juda (1966), 51 C.P.R. 55 (Ex. Ct.), dist. [para. 33].

Breck's Sporting Goods Co. v. Sportcam Co. and Magder, [1976] 1 S.C.R. 527; 3 N.R. 601, dist. [para. 34].

Havana House Cigar & Tobacco Merchants Ltd. et al. v. Skyway Cigar Store (1998), 147 F.T.R. 54; 81 C.P.R.(3d) 203 (T.D.), varied (1999), 251 N.R. 215 (F.C.A.), refd to. [para. 35].

MacEachern (Gordon A.) Ltd. v. National Rubber Co., [1964] Ex. C.R. 135; 41 C.P.R. 149, refd to. [para. 47].

Patou (Jean) Inc. v. Luxo Laboratories Ltd. (1998), 158 F.T.R. 16 (T.D.), refd to. [para. 47].

Cote (J.A. & M.) ltée v. Goodrich (B.F.) Co. (1949), 14 C.P.R. 33 (Ex. Ct.), refd to. [para. 48].

Promafil Canada ltée v. Munsingwear Inc. (1992), 142 N.R. 230; 44 C.P.R.(3d) 59 (F.C.A.), refd to. [para. 48].

Omega Engineering Inc. v. Omega SA (2006), 311F.T.R. 171; 2006 FC 1472, refd to. [para. 48].

Morris (Philip) Inc. v. Imperial Tobacco Ltd. (1987), 81 N.R. 28; 17 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 49].

Counsel:

François M. Grenier, for the applicants;

Jeffrey Brown, for the respondent.

Solicitors of Record:

Leger Robic Richard, LLP, Montreal, Quebec, for the applicants;

Theall Group LLP, Toronto, Ontario, for the respondent.

This application was heard at Montreal, Quebec, on April 24, 2007, by Tremblay-Lamer, J., of the Federal Court, who delivered the following reasons for judgment on June 1, 2007.