Court Supports a Narrow Interpretation of Wares Listed in Association With a Mark for Section 45 Proceedings
Sim & McBurney v. Parry, 2010 FC 118 (Mainville, J.)

February 4, 2010

Kenneth D. MacKay for the Applicant, Sim & McBurney
Teresa Tomchak for the Respondent, Malcolm Parry

The Applicant appealed a Section 45 decision of the Registrar of Trade-marks to maintain the registration of the trade-mark VANCOUVER LIFE.  The owner of the mark, the Respondent, was the author of a column in Vancouver magazine entitled VANCOUVER LIFE.

The Registrar had found that although there was insufficient evidence to show use of the mark in relation to most wares listed in association with the mark, there were sufficient facts to show use of the mark in association with “editorial/advertising inserts into publications and periodicals”.

On considering the first ground of appeal, the Federal Court upheld the Registrar’s refusal to evaluate the distinctiveness and validity of the mark, finding that it is not appropriate to do so in a Section 45 proceeding. Justice Mainville cited United Grain Growers Ltd. v. Lang Michener, where the Court had affirmed that it was not appropriate to use Section 45 as an alternative to other inter partes attacks on a trade-mark.

Justice Mainville went on to confirm that there was evidence that use of the mark had occurred through a column of editorial content. He found, however, that it was not reasonable for the Registrar to assume that such a column constitutes an “editorial/advertising insert into publications and periodicals”. The description of the wares referred to an “insert” as a noun, and not to editorials “inserted” into a magazine.  The Respondent was held not to be permitted to transform an expression of wares such that it corresponds to the actual use of the mark. Such a transformation would have the effect of an amendment of the application for registration of the mark, and is not appropriate for a Section 45 proceeding.

The Applicant’s appeal was therefore granted.

By: Sue Diaz, Deeth Williams Wall LLP