Sim & McBurney v. Parry, (2010) 362 F.T.R. 130 (FC)

• Judge: Mainville, J.
• Court: Federal Court (Canada)
• Case Date: February 04, 2010
• Jurisdiction: Canada (Federal)
• Citations: (2010), 362 F.T.R. 130 (FC);2010 FC 118

Sim & McBurney v. Parry (2010), 362 F.T.R. 130 (FC)

MLB headnote and full text

Temp. Cite: [2010] F.T.R. TBEd. FE.024

Sim & McBurney (applicant) v. Malcolm Parry (respondent)

(T-1055-09; 2010 FC 118)

Indexed As: Sim & McBurney v. Parry

Federal Court

Mainville, J.

February 4, 2010.

Summary:

The Registrar of Trademarks made a decision pursuant to s. 45 of the Trade-marks Act which maintained the respondent's registration for the trademark VANCOUVER LIFE in part in association with "editorial/advertising inserts into publications and periodicals". The Registrar found that sufficient facts were provided to reach a conclusion of use of the mark by the respondent in association with "editorial/advertising inserts into publications and periodicals" during the relevant period. The applicant appealed from the Registrar's decision.

The Federal Court allowed the appeal and ordered that the respondent's trademark registration be expunged in compliance with ss. 45(3) and (5) of the Act.

Trademarks, Names and Designs - Topic 889

Trademarks - Registration - Expungement of mark - Grounds - Lack of use or abandonment - The Registrar of Trademarks made a decision pursuant to s. 45 of the Trade-marks Act which maintained the respondent's registration for the trademark VANCOUVER LIFE in part in association with "editorial/advertising inserts into publications and periodicals" - The Registrar found that the respondent was the author of a column of editorial content bearing the title VANCOUVER LIFE, which was regularly published in Vancouver magazine during the three year period prior to the notice given pursuant to s. 45(1) of the Act - The Registrar concluded that sufficient facts were provided to reach a conclusion of use of the mark by the respondent in association with "editorial/advertising inserts into publications and periodicals" during the relevant period - The Federal Court allowed an appeal from the Registrar's decision and ordered that the respondent's trademark registration be expunged - It was not reasonable for the Registrar to assume that the wares "editorial/advertising inserts into publications and periodicals" included a column of editorial content published in a magazine - The noun "insert" referred to a type of publication which was loose in form and which was inserted in a magazine, most often than not for advertisement or promotional purposes - The expression "editorial/advertising inserts into publications and periodicals" could not reasonably be understood as extending to "editorials inserted into publications and periodicals" - See paragraphs 33 to 41.

Trademarks, Names and Designs - Topic 889

Trademarks - Registration - Expungement of mark - Grounds - Lack of use or abandonment - [See Trademarks, Names and Designs - Topic 889.1 ].

Trademarks, Names and Designs - Topic 889.1

Trademarks - Registration - Expungement of mark - Grounds - Loss of distinctiveness (incl. non-distinctiveness) - The Registrar of Trademarks made a decision pursuant to s. 45 of the Trade-marks Act which maintained the respondent's registration for the trademark VANCOUVER LIFE in part in association with "editorial/advertising inserts into publications and periodicals" - The Registrar found that sufficient facts were provided to reach a conclusion of use of the mark by the respondent in association with "editorial/advertising inserts into publications and periodicals" during the relevant period - The applicant appealed from the Registrar's decision - The Federal Court held that the Registrar did not err in refusing to embark on a review of the distinctiveness or validity of the mark - It was not through a proceeding under s. 45 of the Act that issues such as the distinctiveness or invalidity of a trademark were to be dealt with - See paragraphs 30 to 32.

Words and Phrases

Insert - The Federal Court considered the meaning of the word "insert" in the context of a trademark registration issued in relation to "editorial/advertising inserts into publications and periodicals" - See paragraphs 35 to 41.

Cases Noticed:

Sim & McBurney v. Majdell Manufacturing Co. and Registrar of Trademarks (1986), 7 F.T.R. 54; 11 C.P.R.(3d) 306 (T.D.), refd to. [para. 16].

Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1980] 2 F.C. 338; 45 C.P.R.(2d) 194 (T.D.), affd. [1981] 1 F.C. 679; 34 N.R. 39 (F.C.A.), refd to. [para. 16].

Mattel Inc. v. 3894207 Canada Inc. et al., [2006] 1 S.C.R. 772; 348 N.R. 340; 49 C.P.R.(4th) 321; 2006 SCC 22, refd to. [para. 24].

Molson Breweries, A Partnership v. Labatt (John) Ltd. et al., [2000] 3 F.C. 145; 252 N.R. 91; 5 C.P.R.(4th) 180 (F.C.A.), refd to. [para. 24].

United Grain Growers Ltd. v. Lang Michener, [2001] 3 F.C. 102; 269 N.R. 385; 12 C.P.R.(4th) 89; 2001 FCA 66, consd. [para. 25].

Marks & Clerk v. Sparkles Photo Ltd., [2005] F.T.R. Uned. A47; 45 C.P.R.(4th) 236; 2005 FC 1012, refd to. [para. 25].

Société Nationale des Chemins de Fer Francais SNCF v. Venice Simplon-Orient-Express Inc. et al., [2000] F.T.R. Uned. 623; 9 C.P.R.(4th) 443 (T.D.), refd to. [para. 25].

Ridout & Maybee LLP v. Omega SA (Omega AG) (Omega Ltd.) et al. (2004), 266 F.T.R. 174; 39 C.P.R.(4th) 261; 2004 FC 1703, refd to. [para. 25].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 26].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 45 [para. 1].

Counsel:

Kenneth D. MacKay, for the applicant;

Teresa Tomchak, for the respondent.

Solicitors of Record:

Sim, Lowman, Ashton, & McKay, LLP, Toronto, Ontario, for the applicant;

Farris, Vaughan, Wills & Murphy, LLP, Vancouver, British Columbia, for the respondent.

This appeal was heard by videoconference, at Ottawa, Ontario, by Mainville, J., of the Federal Court, who delivered the following decision on February 4, 2010.