2011 FC 1338 (November 22, 2011)
Overview
The Federal Court upheld a decision of the Registrar of Trademarks to expunge the trademark LAZIZA & Design pursuant to section 45 of the Trademarks Act on the basis that the use of a modified version of the trademark was insufficient to constitute use of the trademark as registered. This decision is a helpful reminder to trademark owners that in order to avoid possible expungement of their trademark registrations under section 45, the use of the trademark should be in substantially the same form as the trademark registered.
Abstract
Convenience Food Industries (Private) Limited ("CFI") initiated a section 45 proceeding seeking to expunge registration TMA323,215 for the trademark LAZIZA & Design in association with "canned fava beans" owned by Clic International Inc. ("Clic"). Clic filed evidence of product labels bearing the trademark LAZIZA but with the trademark depicted in a different font and without the palm trees in a circle design component of the trademark as registered. The Registrar of Trademarks ("Registrar") held that the design component of the trademark as registered was an essential feature thereof and that Clic's evidence of use of the trademark LAZIZA did not constitute use of the trademark LAZIZA & Design as registered. The registration was therefore expunged for lack of use and the Federal Court upheld the decision of the Registrar.
Case summary
Facts. The present case was an appeal from a decision of the Registrar to expunge trademark registration TMA323,215 for the trademark LAZIZA & Design in association with "canned fava beans," based on lack of use under section 45 of the Trademarks Act ("Act"). The trademark that was the subject of registration TMA323,215 is depicted below:
In response to the section 45 notice initiated by CFI, Clic filed an affidavit including samples of labels that were affixed to cans of fava beans marketed in Canada during the relevant period. An illustration of one such sample label is set out below:
Clic admitted that the actual use of the trademark as depicted on the above label contained certain modifications when compared to the registered version of the trademark, but contended that the modifications were not substantial and should not affect its ability to maintain the registration. In this regard, Clic argued that the only dominant feature of the trademark as registered was the word portion LAZIZA.
However, the Registrar disagreed, holding that the design portion of the registration (i.e. the palm trees in a circle design) was also an "essential feature" and "distinctive element" of the trademark as registered. Therefore, the Registrar concluded that the absence of this essential feature, combined with the variations and additions to the trademark as it appeared on the labels, changed the identity of the trademark in a way that use of the modified version did not constitute use of the trademark as registered.
Clic appealed this decision of the Registrar to the Federal Court.
Analysis. The Federal Court noted that the purpose of section 45 of the Act is to provide a simple, summary and expeditious procedure for clearing the Register of trademarks that are not bona fide claimed by their owners as active trademarks.
In the present case, the standard of review applied by the Federal Court in reviewing the decision of the Registrar was "reasonableness," and the Court held that it was not unreasonable for the Registrar to decide that the palm trees in a circle design was an essential feature of the trademark as registered, and that Clic was therefore not entitled to maintain its registration if the registered mark was no longer in use during the relevant period.
The Federal Court also held that the trademark as depicted on the labels and the trademark as registered differed in "more than petty details" and that the differences were not "unimportant." In particular, the Court noted that not only did the labels not contain the original palm trees in a circle design, but the labels also depicted the word LAZIZA in a very different font from the registered trademark and the labels were also characterized in part by the Arabic characters in an oval design appearing under the word LAZIZA, giving the labels a rather different look than the trademark as registered. The Federal Court therefore dismissed Clic's appeal.
Conclusion
This decision is a useful reminder to trademark owners that in order to avoid expungement of their trademark registrations under section 45, the mark as used should be substantially the same as the registered mark.
Timothy O. Stevenson, Ottawa
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