Trademark Variants Must Retain Distinctive Features to Show Use of the Registered Mark

Trademark Variants Must Retain Distinctive Features to Show Use of the Registered Mark

CWI, Inc v Thompson Dorfman Sweatman LLT, 2018 FC 941 

In this decision, the Federal Court (“FC”) confirms that the use of a variant of a trademark which does not retain the distinctive features of the original Mark cannot help to establish use of the original Mark in association with the registered goods and services.

 The FC upheld the Trade-marks Registrar’s (“Registrar”) decision to expunge CWI Inc’s (“CWI”) trademark (Trademark registration No. TMA 245,252). The FC held that the Registrar reasonably applied the relevant legal tests. [17] CWI’s use of a variant Mark without the distinctive feature of the registered Mark was unable to demonstrate use of the registered Mark in association with the registered services. CWI’s appeal of the Registrar’s decision was therefore dismissed. [1]

Background

At the request of Thompson Dorfman Sweatman LLP, the Registrar issued a notice under s. 45 of the Trade-marks Act to the Applicant, CWI with respect to CWI’s trademark, “CAMPING WORLD”, depicted below:

The notice required CWI to provide evidence establishing use of the Mark in Canada in association with the registered services “Installation, repair and maintenance of camping equipment and recreational vehicles” and “retail store services and retail mail order services in the field of camping equipment and supplies and recreational vehicles and supplies” at any time within the three years immediately preceding the notice (“the Relevant Period”). [3-5]

CWI’s Chief Marketing Officer Tamara Ward’s Affidavit (“Ward Affidavit”) was the only evidence before the Registrar. The Ward Affidavit stated that although the Mark evolved overtime, it maintains its distinctive feature and pronunciation, “CAMPING WORLD”, and that customers would consider all variations of the Mark to be one and the same. Furthermore, the Ward Affidavit contended that CWI operated a Canadian website to “advertise and provide its retail, installation, repair, and maintenance services directly to Canadian consumers”. Evidence in the form of website printouts were provided, which demonstrated the use of the variations of the Mark during the Relevant Period. Canadian customers were able to order products by mail or telephone, and goods were shipped to Canada. [6-9]

The Registrar held that the evidence demonstrated advertising and performance of the registered services “retail store services and retail mail order services in the field of camping equipment and supplies and recreational vehicles and supplies” within the Relevant Period. However, the Registrar expressed doubt about the registered services “installation, repair and maintenance” because of the absence of facilities in Canada. [10]

The main issue before the Registrar was whether the “CAMPING WORLD” Mark used by the Applicant constituted display of the Mark as registered. The Registrar found that the distinctive feature of the registered Mark is not simply the words “CAMPING WORLD”, but also the “O” which is depicted as a globe. CWI did not use the design with the distinctive globe during the Relevant Period and did not appear to have any plans to use the design. Therefore, the Registrar was not satisfied that the Mark had been used in association with the registered services within the Relevant Period. [11-12]

Missing Distinctive Feature of the Design Mark

In the appeal, the FC had to determine whether the Registrar erred in ordering the expungement of CWI’s Mark. [15] The FC found that the Registrar’s findings in regards to “retail store services and retail mail-order services in the field of camping equipment and supplies and recreational vehicles and supplies” and “installation, repair and maintenance” were reasonable and in accordance with the jurisprudence, such as Dollar General Corporation v 2900319 Canada Inc2018 FC 778 (PCK Reporter summary available here). [24-25]

As for the determinative issue of whether the registered services were offered or performed in association with the Mark as registered, CWI argued the variants of the Mark used did not detract from the identity of the registered Mark. [26] The FC agreed with the Registrar’s finding that the replacement of the “O” with a globe in the word “world” is what made the Mark unique. The FC added that “[t]he replacement of the letter “O” with a globe, clearly a play on the word “world”, is the most dominant and unique part of the design mark.” Since there was no evidence of use of the Mark with the distinctive globe during the Relevant Period, it was open for the Registrar to find that there was no evidence of use of the Mark in association with the registered services within the meaning of ss. 4 and 45 of the Trade-marks Act. [28-29] The FC concluded that the Registrar applied the appropriate legal test for the variation of the Mark and stated that “[u]sing a mark without a dominant feature does not constitute use of the mark.” [36] Having found the Registrar’s decision to expunge the Mark was reasonable, the FC upheld the Registrar’s decision and dismissed CWI’s appeal. [37]

Commentary

In this decision, the FC remarks that a trademark owner cannot try to convert a design Mark into a word Mark in an attempt to show use of the registered Mark. [32] This decision serves as a reminder for trademark owners that in order to show use of a trademark in association with the good and services registered, one must use the registered trademark as is; or if a variant is used, that the variant maintains the distinctive and dominant features of the registered Mark. Trademark owners should consult their trademark agents or IP lawyers to obtain advice on protecting their Mark.

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