Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P., (2008) 332 F.T.R. 74 (FC)

• Judge: Gibson, J.
• Court: Federal Court (Canada)
• Case Date: July 21, 2008
• Jurisdiction: Canada (Federal)
• Citations: (2008), 332 F.T.R. 74 (FC);2008 FC 876

Fairmont Resort v. Fairmont Hotel Mgt. (2008), 332 F.T.R. 74 (FC)

MLB headnote and full text

Temp. Cite: [2008] F.T.R. TBEd. JL.016

Fairmont Resort Properties Ltd. (applicant) v. Fairmont Hotel Management, L.P. (respondent)

(T-1041-05; 2008 FC 876)

Indexed As: Fairmont Resort Properties Ltd. v. Fairmont Hotel Management, L.P.

Federal Court

Gibson, J.

July 21, 2008.

Summary:

The applicant, Fairmont Resort Properties Ltd., owned and operated timeshare resort properties in, or in proximity to, Fairmont, or Fairmont Hot Springs, British Columbia, in association with the unregistered trademarks "Fairmont Villas" and "Fairmont Vacation Villas" and the trade name "Fairmont Resort Properties Ltd.". The applicant applied pursuant to s. 57(1) of the Trade-marks Act to strike three registrations from the Trade-marks Register (the Hotel Marks), which used the word "Fairmont" and were originally registered to the respondent, Fairmont Hotel Management, L.P., in respect of "hotel services associated with a chain of luxury hotels".

The Federal Court dismissed the application on the ground that the applicant was not a "person interested" and therefore did not have standing to bring the application under s. 57(1) of the Act. The court further held that if its decision was appealed and its determination regarding "person interested" was reversed, the registration of the Hotel Marks was maintained. None of the trademarks were confusing, at the date of registration, with the unregistered trademarks and trade name of the applicant and the marks were distinctive of the services in association with which they were registered by the respondent at the time the application was commenced. The respondent was also the person entitled to secure the registration of those marks.

Trademarks, Names and Designs - Topic 269

Trademarks - What trademarks registrable - Registration of marks registered abroad - The applicant applied pursuant to s. 57(1) of the Trade-marks Act to strike three registrations from the Trade-marks Register (the Hotel Marks), which used the word "Fairmont" and were originally registered to the respondent, Fairmont Hotel Management, L.P., in respect of "hotel services associated with a chain of luxury hotels" - The respondent relied on, inter alia, s. 14(1)(b) of the Act, which provided that a trademark of a person such as the respondent, that the respondent or its predecessor in title had caused to be duly registered in and for the country of origin of such person, was registrable in Canada, notwithstanding s. 12 of the Act, if "it is not without distinctive character, having regard to all the circumstances of the case including the length of time during which it has been used in any country" - The Federal Court stated that "the test 'not without distinctive character' establishes a very low threshold ... I am satisfied that the applicant simply has not discharged its burden to establish that the Hotel Marks had not been caused to be duly registered 'in or for the country of origin' of the respondent by its predecessor in title and that those marks are simply void of distinctive character" - In the result, by virtue of s. 14(1)(b) of the Act, the applicant could not succeed on the ground that the Hotel Marks were not registrable at their respective dates of registration - See paragraphs 68 to 79.

Trademarks, Names and Designs - Topic 701.1

Trademarks - Registration - General - Persons entitled - The applicant, Fairmont Resort Properties Ltd., owned and operated timeshare resort properties in, or in proximity to, Fairmont, or Fairmont Hot Springs, British Columbia, in association with the unregistered trademarks "Fairmont Villas" and "Fairmont Vacation Villas" and the trade name "Fairmont Resort Properties Ltd." - The applicant applied pursuant to s. 57(1) of the Trade-marks Act to strike three registrations from the Trade-marks Register (the Hotel Marks), which used the word "Fairmont" and were originally registered to the respondent, Fairmont Hotel Management, L.P., in respect of "hotel services associated with a chain of luxury hotels" - The applicant argued that the respondent was not the person entitled to registration of the Hotel Marks as the applicant's marks and trade name were confusing with the Hotel Marks and had been previously used in Canada or made known in Canada by the applicant - The Federal Court held that the respondent was the person entitled to secure the registration of the Hotel Marks - The Hotel Marks were not confusing with the applicant's trademarks and trade name - In any event, the respondent was, through its predecessor in title, the first user of "Fairmont" in Canada, as between itself and the applicant - See paragraphs 93 to 98.

Trademarks, Names and Designs - Topic 706

Trademarks - Registration - General - Conditions precedent - Lack of confusion with other marks - [See Trademarks, Names and Designs - Topic 701.1 ].

Trademarks, Names and Designs - Topic 885

Trademarks - Registration - Expungement of mark - Who may apply for expungement - The applicant, Fairmont Resort Properties Ltd., owned and operated timeshare resort properties in, or in proximity to, Fairmont, or Fairmont Hot Springs, British Columbia, in association with the unregistered trademarks "Fairmont Villas" and "Fairmont Vacation Villas" and the trade name "Fairmont Resort Properties Ltd." - The applicant applied pursuant to s. 57(1) of the Trade-marks Act to strike three registrations from the Trade-marks Register (the Hotel Marks), which used the word "Fairmont" and were originally registered to the respondent, Fairmont Hotel Management, L.P., in respect of "hotel services associated with a chain of luxury hotels" - The Federal Court held that the applicant was not a "person interested" and therefore did not have standing to bring the application under s. 57(1) of the Act - The applicant used the word "Fairmont" only as a geographical descriptor, it had never applied for registration of a trademark consisting of or incorporating the word Fairmont, it did not oppose the registration of the Hotel Marks and it waited until almost five years after the registration of the Hotel Marks to commence this proceeding - The court concluded that the applicant had not acted as if it perceived itself to be a person affected, or who reasonably apprehended that it might be affected, by the entry of the Hotel Marks on the register or by the use of "Fairmont" - See paragraphs 45 to 57.

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - The applicant, Fairmont Resort Properties Ltd., owned and operated timeshare resort properties in, or in proximity to, Fairmont, or Fairmont Hot Springs, British Columbia, in association with the unregistered trademarks "Fairmont Villas" and "Fairmont Vacation Villas" and the trade name "Fairmont Resort Properties Ltd." - The applicant applied pursuant to s. 57(1) of the Trade-marks Act to strike three registrations from the Trade-marks Register (the Hotel Marks), which used the word "Fairmont" and were originally registered to the respondent, Fairmont Hotel Management, L.P., in respect of "hotel services associated with a chain of luxury hotels" - The Federal Court held that the applicant failed to negate the distinctiveness of the Hotel Marks as at the date of commencement of the proceeding - The court stated that the evidence that the applicant had never used the word "Fairmont" in a trademark sense, that the applicant never pursued its interest in protecting its alleged interest in that word against Fairmont Hot Springs Resort Ltd., and that the applicant did not oppose the registration of the Hotel Marks and only belatedly commenced this proceeding, was determinative in favour of the respondent - See paragraphs 80 to 92.

Trademarks, Names and Designs - Topic 4407

Trademarks - Practice - Evidence - Affidavits - The applicant applied pursuant to s. 57(1) of the Trade-marks Act to strike three registrations from the Trade-marks Register, originally registered to the respondent in respect of "hotel services associated with a chain of luxury hotels" - The respondent filed an affidavit sworn by Mr. Barlow - Much of Barlow's attestation was on information and belief - In effect, he attested as an expert in the travel agency business - The Federal Court stated "In the absence of the adoption by the respondent of the procedure provided in subsection 59(3) of the Act to qualify Mr. Barlow as an expert with the approval of this court, I regard his information and belief opinions as highly prejudicial, a position at least impliedly adopted by counsel for the applicant. In the circumstances, I reject such evidence outright" - See paragraphs 58 to 64.

Cases Noticed:

Omega Engineering Inc. v. Omega SA (2006), 311 F.T.R. 171; 2006 FC 1472, refd to. [para. 47, footnote 2].

Hartco Enterprises Inc. v. Becterm Inc. (1989), 24 F.T.R. 69; 24 C.P.R.(3d) 223 (T.D.), refd to. [para. 48, footnote 3].

Labatt (John) Ltd. v. Carling Breweries Ltd. (1974), 18 C.P.R.(2d) 15 (F.C.T.D.), refd to. [para. 51, footnote 5].

Mihaljevic v. British Columbia (1990), 116 N.R. 218; 34 C.P.R.(3d) 54 (F.C.A.), refd to. [para. 52, footnote 6].

Unitel Communications Inc. v. Bell Canada (1995), 92 F.T.R. 161; 61 C.P.R.(3d) 12 (T.D.), refd to. [para. 57, footnote 8].

Saputo Groupe Boulangerie v. National Importers Inc. (2005), 275 F.T.R. 207; 44 C.P.R.(4th) 241 (F.C.), refd to. [para. 62, footnote 12].

Compulife Software Inc. v. Compuoffice Software Inc. (2001), 205 F.T.R. 283; 13 C.P.R.(4th) 117 (T.D.), refd to. [para. 66, footnote 66].

Andrés Wines Ltd. v. Vina Concha Y Toro S.A. (2001), 205 F.T.R. 161; 13 C.P.R.(4th) 110 (T.D.), refd to. [para. 67, footnote 14].

Thorold Concrete Products Ltd. v. Registrar of Trademarks (1961), 37 C.P.R. 166 (Ex. Ct.), refd to. [para. 69, footnote 15].

Drackett Co. of Canada v. American Home Products, [1968] 2 Ex. C.R. 89, refd to. [para. 69, footnote 16].

Molson Breweries, A Partnership v. Labatt Brewing Co. (1996), 69 C.P.R.(3d) 274 (T.M. Opp. Bd.), refd to. [para. 71, footnote 17].

Imperial Tobacco Ltd. v. Rothmans, Benson & Hedges Inc. (1992), 58 F.T.R. 106; 45 C.P.R.(3d) 354 (T.D.), affd. (1993), 159 N.R. 399; 51 C.P.R.(3d) 169 (F.C.A.), refd to. [para. 72, footnote 18].

Imperial Tobacco Co. of Canada Ltd. v. Philip Morris Inc. (1976), 27 C.P.R.(2d) 205 (Reg. T.M.), refd to. [para. 77, footnote 19].

Consorzio Del Prosciutto Di Parma v. Maple Leaf Meats Inc., [2001] 2 F.C. 536; 205 F.T.R. 176; 11 C.P.R.(4th) 48 (T.D.), affd. (2002), 297 N.R. 135; 18 C.P.R.(4th) 414 (F.C.A.), refd to. [para. 82, footnote 20].

Tommy Hilfiger Licensing Inc. et al. v. Quality Goods I.M.D. Inc. et al. (2005), 267 F.T.R. 259; 37 C.P.R.(4th) 1; 2005 FC 10, refd to. [para. 85, footnote 21].

Toyota Motor Corp. v. Lexus Foods Inc. (1999), 174 F.T.R. 277; 2 C.P.R.(4th) 62 (T.D.), refd to. [para. 90, footnote 22].

United States Polo Association v. Polo Ralph Lauren Corp. et al. (2001), 286 N.R. 282; 9 C.P.R.(4th) 51 (F.C.A.), refd to. [para. 97, footnote 23].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 14(1)(b) [para. 75]; sect. 16(2) [para. 94]; sect. 18(1)(b) [para. 80]; sect. 57 [para. 44]; sect. 59(3) [para. 59].

Authors and Works Noticed:

Sopinka, John, Lederman, Sidney N., and Bryant, Alan W., The Law of Evidence in Canada (2nd Ed. 1999), p. 609 [para. 61, footnote 11].

Counsel:

James T. Swanson, for the applicant;

Patrick E. Kierans, Josie S. Gravelle and Kristin Wall, for the respondent.

Solicitors of Record:

Burnet, Duckworth & Palmer, Calgary, Alberta, for the applicant;

Ogilvy Reneault, Toronto, Ontario, for the respondent.

This application was heard on June 9-11, 2008, at Calgary, Alberta, before Gibson, J., of the Federal Court, who delivered the following decision on July 21, 2008.