Terrace (City) et al. v. Urban Distilleries Inc., (2014) 462 F.T.R. 178 (FC)

• Judge: Martineau, J.
• Court: Federal Court (Canada)
• Case Date: August 11, 2014
• Jurisdiction: Canada (Federal)
• Citations: (2014), 462 F.T.R. 178 (FC);2014 FC 833

Terrace v. Urban Distilleries Inc. (2014), 462 F.T.R. 178 (FC)

MLB headnote and full text

[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2014] F.T.R. TBEd. SE.012

City of Terrace and Kitasoo Band Council (plaintiffs/defendants by counterclaim) v. Urban Distilleries Inc. (defendant/plaintiff by counterclaim)

(T-700-13; 2014 FC 833; 2014 CF 833)

Indexed As: Terrace (City) et al. v. Urban Distilleries Inc.

Federal Court

Martineau, J.

September 2, 2014.

Summary:

The City of Terrace and Kitasoo Band Council asserted ownership under s. 9(1)(n)(iii) of the Trade-marks Act over the published official mark SPIRIT BEAR as a word-mark. Urban Distilleries Inc. manufactured spirits under the unregistered trademarks SPIRIT BEAR VODKA, SPIRIT BEAR GIN, and SPIRIT BEAR ESPRESSO INFUSED VODKA. The City of Terrace and the Kitasoo Band Council commenced an action for an injunction against Urban Distilleries. Urban Distilleries filed a statement of defence and counterclaim, alleging, inter alia, that the SPIRIT BEAR official marks were unenforceable as there was no adoption and use prior to public notice. The City of Terrace and Kitasoo Band Council filed a motion for summary judgment.

The Federal Court refused the declarations and orders sought by the City of Terrace and Kitasoo Band Council in their motion for summary judgment and allowed the counterclaim made by Urban Distilleries.

Trademarks, Names and Designs - Topic 4002

Trademarks - Prohibited marks - Marks adopted or used by public authority (official marks) - The City of Terrace and Kitasoo Band Council asserted ownership under s. 9(1)(n)(iii) of the Trade-marks Act over the published official mark SPIRIT BEAR as a word-mark - Urban Distilleries Inc. manufactured spirits under the unregistered trademarks SPIRIT BEAR VODKA, SPIRIT BEAR GIN, and SPIRIT BEAR ESPRESSO INFUSED VODKA - The City of Terrace and the Kitasoo Band Council commenced an action for an injunction against Urban Distilleries - Urban Distilleries filed a statement of defence and counterclaim, alleging, inter alia, that the SPIRIT BEAR official marks were unenforceable as there was no adoption and use prior to public notice - The City of Terrace and Kitasoo Band Council filed a motion for summary judgment -The Federal Court refused the declarations and orders sought by the City of Terrace and Kitasoo Band Council in their motion for summary judgment and allowed the counterclaim made by Urban Distilleries - The court stated that "Mere advertising of wares or services in association with the mark on a public website is acceptable. However, it must be apparent that the mark is in fact being used as an official mark-not just a section of a letter with a collection of bear names, as in the case of the City, or as part of a tour name, as in the case of the tour brochure of Klemtu Tourism Ltd. ... I find that the City of Terrace and Kitasoo Band Council have not provided evidence of 'use' of the mark in association with wares or services as of the relevant dates".

Cases Noticed:

Collins v. Canada, [2014] F.T.R. Uned. 156; 2014 FC 307, refd to. [para. 7].

Rude Native Inc. et al. v. Tyrone T. Resto Lounge et al., [2010] F.T.R. Uned. 836; 2010 FC 1278, refd to. [para. 7].

FileNet Corp. v. Registrar of Trademarks et al., [2002] 1 F.C. 266; 209 F.T.R. 195 (T.D.), refd to. [para. 8].

Piscitelli v. Liquor Control Board (Ont.) et al., [2002] 1 F.C. 247; 209 F.T.R. 247 (T.D.), refd to. [para. 8].

Sullivan Entertainment Inc. v. Anne of Green Gables Licensing Authority Inc. et al. (2000), 195 F.T.R. 199 (T.D.), refd to. [para. 9].

Princess Group Inc. et al. v. Canadian Standards Association (2009), 359 F.T.R. 177; 2009 FC 926, refd to. [para. 9].

Cable Control Systems Inc. v. Electrical Safety Authority (2012), 420 F.T.R. 239; 2012 FC 1272, refd to. [para. 11].

See You In - Canadian Athletes Fund Corp. v. Canadian Olympic Committee (2007), 311 F.T.R. 245; 2007 FC 406, affd. (2008), 378 N.R. 261; 2008 FCA 124, refd to. [para. 11].

FileNET Corp. v. Registrar of Trademarks (2002), 297 N.R. 178; 2002 FCA 418, refd to. [para. 11].

Statutes Noticed:

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 9(1)(n)(iii) [para. 10].

Counsel:

Douglas B. Thompson, for the plaintiffs/defendants by counterclaim;

James J.D. Wagner, for the defendant/plaintiff by counterclaim.

Solicitors of Record:

Thompson Cooper LLP, Victoria, British Columbia, for the plaintiffs/defendants by counterclaim;

Magellan Law Group LLP, Langley, British Columbia, for the defendant/plaintiff by counterclaim.

This motion was heard on August 11, 2014, at Vancouver, British Columbia, before Martineau, J., of the Federal Court, who delivered the following decision on September 2, 2014.