GNR Travel Centre Ltd. v. CWI, Inc.

GNR Travel Centre Ltd. v. CWI, Inc.
Court (s) Database
Federal Court Decisions
Date
2023-01-04
Neutral citation
2023 FC 2
File numbers
T-1561-20, T-1575-20
Decision Content
Date: 20230104
Docket: T-1561-20
T-1575-20
Citation: 2023 FC 2
Ottawa, Ontario, January 4, 2023
PRESENT: The Honourable Mr. Justice Zinn
BETWEEN:
G N R TRAVEL CENTRE LTD.
Applicant/Respondent
and
CWI, INC.
Respondent/Applicant
JUDGMENT AND REASONS
[1] Before the Court are two consolidated proceedings; each is an appeal pursuant to section 56 of the Trademarks Act, RSC 1985, c T-13, of the decision of the Registrar of Trademarks dated October 26, 2020, and amended on December 23, 2020. For the following reasons, both appeals will be dismissed.
[2] The Opposition Board considered Trademark Application 1,635,725 [the Application] for the registration of the trademark GNR CAMPING WORLD & Design [the Mark] depicted below:
1. The Trademark Application and Result
[3] The Application by GNR Travel Centre Ltd. [GNR] was for the Mark in association with the following goods and services:
Goods
Recreational vehicles, namely, campers, trailers, motor homes, fifth wheels, ford down trailers, camping vans, truck campers, and their parts and accessories
[the Goods].
Services
recreational vehicle dealership services;
sales services relating to recreational vehicles, namely, campers, trailers, motor homes, fifth wheels, fold down trailers, camping vans, truck campers, and their parts and accessories;
wholesale and retail services relating to recreational vehicles, namely, campers, trailers, motor homes, fifth wheels, fold down trailers, camping vans, truck campers, and their parts and accessories;
online sales of recreational vehicles, namely, campers, trailers, motor homes, fifth wheels, fold down trailers, camping vans, truck campers, and their parts and accessories;
financing services relating to recreational vehicles, namely, campers, trailers, motor homes, fifth wheels, fold down trailers, camping vans, truck campers, and their parts and accessories;
operation and maintenance of an internet website containing information relating to the above noted wares and services; and
storage, service, repair and maintenance services relating to recreational vehicles, namely, campers, trailers, motor homes, fifth wheels, fold down trailers, camping vans, truck campers, and their parts and accessories
[the Services]
[4] The Application was based on the stated use of the Mark in Canada since at least as early as July 24, 2008, in association with the Goods, and use of the Mark in Canada since at least as early as May 3, 2007, in association with the Services.
[5] On June 15, 2016, CWI, Inc. [CWI] filed a statement of opposition against the Application raising grounds of opposition based on registrability under paragraph 12(1)(d), entitlement under paragraphs 16(l)(a) and (b), distinctiveness under section 2, and non-compliance with paragraph 30(b) of the Act.
[6] CWI in its statement of opposition set out its grounds of opposition, as follows:
a) Section 38(2)(a); Section 30(b):
Pursuant to Section 38(2)(a) of the Act, the Application does not comply with Section 30(b) of the Act, in that the Applicant, by itself or through a licensee, or by itself and through a licensee, had not used the Trademark in Canada with each of the goods and services listed in the Application as of the claimed dates of first use, namely since at least as early as July 24, 2008 (goods) and since at least as early as May 3, 2007 (services).
Specifically, the Applicant does not sell its own brand of recreational vehicles, related parts or accessories. Any sale of goods by the Applicant does not constitute use of the Trademark as defined in Sections 2 and 4 of the Act.
Even if the Trademark had been used since the dates of first use contained in the application and even if such use was in compliance with Sections 2 and 4 of the Act, none of which is admitted and is expressed denied, any such use is not in compliance with Section 30(b) of the Act, given that:
i. use has not been continuous;
ii. use did not relate to the Trademark as applied-for in the Application;
iii. the Trademark was not used by, or accrue to the benefit of, the Applicant, G N R Travel Centre Ltd.;
b) Section 38(2)(b); Section 12(l)(d):
Pursuant to Section 38(2)(b) of the Act, the Trademark is not registrable in that, contrary to Section 12(l)(d) of the Act, the Trademark was, at all material times, confusing with the registered trademark CAMPING WORLD DESIGN (Registration No. TMA245,25) owned by the Opponent. The Opponent's registration had not been abandoned as of April 15, 2015.
c) Section 38(2)(c), Section 16(l)(a):
Pursuant to Section 38(2)(c) of the Act, the Application does not comply with Section 16(l)(a) of the Act in that at the date of filing of the Application the Trademark was confusing with the Opponent's trademarks listed in Attachment A, which had been previously used by the Opponent and/or its predecessor in title, in Canada in association with the Opponent's Services. The Opponent's trademarks listed in Attachment A continue to be in use and were not abandoned as of July 18, 2013 or April 15, 2015.
d) Section 38(2)(c), Section 16(l)(b):
Pursuant to Section 38(2)(c) of the Act, the Application does not comply with Section 16(l)(b) of the Act in that at the date of filing of the Application the Trademark was confusing with the following applications owned by the Opponent in Canada:
i. CAMPING WORLD - Application No. 1635827;
ii. CAMPING WORLD & Horizontal Design - Application No. 1635828;
iii. CAMPING WORLD & Vertical Design - Application No. 1635829;
The Opponent's applications listed above were filed with a priority date of July 17, 2013 and were not abandoned as of July 18, 2013 or April 15, 2015.
e) Section 38(2)(d); Section 2:
Pursuant to Section 38(2)(d) of the Act, the Trademark is not distinctive within the meaning of Section 2 of the Act, in that the Trademark neither distinguishes the goods and services listed in the Application from those of others, including the Opponent's Services, nor is the Trademark adapted to distinguish the goods and services of the Applicant from the goods and services of others, including the Opponent's Services, nor is the Trademark capable of being distinctive of the Applicant.
[7] The Opposition Board found on the balance of probabilities that GNR had established that it had used the Mark in association with the Goods since the claimed date of July 24, 2008. On the other hand, it found on the balance of probabilities that GNR had failed to establish that it had used the Mark in association with the Services since the claimed date of May 3, 2007. In short, it found that CWI’s opposition succeeded with respect to the Services but not with respect to the Goods.
[8] The Opposition Board rejected the confusion-based ground of opposition, finding that GNR had met its burden to show that there was no likelihood of confusion between the Mark and CWI’s CAMPING WORLD trademarks.
[9] As a result, the Opposition Board issued a split decision, and refused the Application with respect to the Services but allowed it with respect to the Goods.
2. Issues on Appeal
[10] There are three issues on these appeals:
Did the Opposition Board err in granting the Application with respect to the Goods?
Did the Opposition Board err in refusing the Application with respect to the Services?
Did the Opposition Board err in its analysis of confusion?
3. Standard of Review
[11] In a statutory appeal from a decision of the Opposition Board under subsection 56(1) of the Act, in the absence of material new evidence being filed on appeal pursuant to subsection 56(5), the Supreme Court of Canada’s appellate standard of review applies: see Canada (Minister of Citizenship and Immigration) v Vavilov, 2019 SCC 65 at para 36. For questions of law or extricable questions of law, the standard of correctness applies. For questions of fact and mixed fact and law (except for extricable questions of law), the “palpable and overriding error” standard applies: see Clorox Company of Canada, Ltd v Chloretec S.E.C., 2020 FCA 76 at para 22-23.
[12] The palpable and overriding error standard of review is highly deferential: Mahjoub v Canada (Citizenship and Immigration), 2017 FCA 157 at para 61 [Mahjoub]. “Palpable” means an obvious error and “overriding” means that the obvious error affects the outcome of the case: see Mahjoub at paras 62-64.
4. The Legislation
[13] As the Application was advertised prior to June 17, 2019, the Act as it read immediately prior to the coming into force of certain amendments on June 17, 2019, applies with reference to the grounds of opposition. The provisions relevant to this appeal are the following:
2 In this Act,
2 Les définitions qui suivent s’appliquent à la présente loi.
…
[…]
confusing, when applied as an adjective to a trademark or trade name, means, except in sections 11.13 and 11.21, a trademark or trade name the use of which would cause confusion in the manner and circumstances described in section 6; (créant de la confusion)
créant de la confusion Sauf aux articles 11.13 et 11.21, s’entend au sens de l’article 6 lorsque employé à l’égard d’une marque de commerce ou d’un nom commercial. (confusing)
…
[…]
distinctive, in relation to a trademark, describes a trademark that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them; (distinctive)
distinctive Se dit de la marque de commerce qui distingue véritablement les produits ou services en liaison avec lesquels elle est employée par son propriétaire de ceux d’autres personnes, ou qui est adaptée à les distinguer ainsi. (distinctive)
…
[…]
4 (1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
4 (1) Une marque de commerce est réputée employée en liaison avec des produits si, lors du transfert de la propriété ou de la possession de ces produits, dans la pratique normale du commerce, elle est apposée sur les produits mêmes ou sur les emballages dans lesquels ces produits sont distribués, ou si elle est, de toute autre manière, liée aux produits à tel point qu’avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée.
(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
(2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l’exécution ou l’annonce de ces services.
…
[…]
6 (2) The use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would be likely to lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class or appear in the same class of the Nice Classification.
6 (2) L’emploi d’une marque de commerce crée de la confusion avec une autre marque de commerce lorsque l’emploi des deux marques de commerce dans la même région serait susceptible de faire conclure que les produits liés à ces marques de commerce sont fabriqués, vendus, donnés à bail ou loués, ou que les services liés à ces marques sont loués ou exécutés, par la même personne, que ces produits ou services soient ou non de la même catégorie générale ou figurent ou non dans la même classe de la classification de Nice.
…
[…]
(5) In determining whether trademarks or trade names are confusing, the court or the Registrar, as the case may be, shall have regard to all the surrounding circumstances including
(5) En décidant si des marques de commerce ou des noms commerciaux créent de la confusion, le tribunal ou le registraire, selon le cas, tient compte de toutes les circonstances de l’espèce, y compris :
(a) the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;
a) le caractère distinctif inhérent des marques de commerce ou noms commerciaux, et la mesure dans laquelle ils sont devenus connus;
(b) the length of time the trademarks or trade names have been in use;
b) la période pendant laquelle les marques de commerce ou noms commerciaux ont été en usage;
(c) the nature of the goods, services or business;
c) le genre de produits, services ou entreprises;
(d) the nature of the trade; and
d) la nature du commerce;
(e) the degree of resemblance between the trademarks or trade names, including in appearance or sound or in the ideas suggested by them.
e) le degré de ressemblance entre les marques de commerce ou les noms commerciaux, notamment dans la présentation ou le son, ou dans les idées qu’ils suggèrent.
…
[…]
30 An applicant for the registration of a trade-mark shall file with the Registrar an application containing
30 Quiconque sollicite l’enregistrement d’une marque de commerce produit au bureau du registraire une demande renfermant :
…
[…]
(b) in the case of a trade-mark that has been used in Canada, the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of goods or services described in the application;
b) dans le cas d’une marque de commerce qui a été employée au Canada, la date à compter de laquelle le requérant ou ses prédécesseurs en titre désignés, le cas échéant, ont ainsi employé la marque de commerce en liaison avec chacune des catégories générales de produits ou services décrites dans la demande;
…
[…]
38 (2) A statement of opposition may be based on any of the following grounds:
38 (2) Cette opposition peut être fondée sur l’un des motifs suivants :
(a) that the application does not conform to the requirements of subsection 30(2), without taking into account if it meets the requirement in subsection 30(3);
a) la demande ne satisfait pas aux exigences du paragraphe 30(2), compte non tenu de la conformité au paragraphe 30(3) de l’état que contient celle-ci;
(a.1) that the application was filed in bad faith;
a.1) la demande a été produite de mauvaise foi;
(b) that the trademark is not registrable;
b) la marque de commerce n’est pas enregistrable;
(c) that the applicant is not the person entitled to registration of the trademark;
c) le requérant n’est pas la personne ayant droit à l’enregistrement;
(d) that the trademark is not distinctive;
d) la marque de commerce n’est pas distinctive;
5. Evidence of CWI
[14] CWI filed the affidavit of Tamara Ward sworn February 22, 2017, and the affidavit of Jo‑Anne McConnery sworn February 22, 2017. Neither affiant was cross-examined. CWI also filed certified copies of its three Canadian trademark applications and one registration. The Court notes that each was with respect only to services; none sought or obtained registration with respect to goods.
The Ward Affidavit
[15] Ms. Ward is the Chief Marketing Officer of CWI, a company based in Illinois, USA. She attests that it is one of North America’s largest RV retailer and services providers. It operates RV centres that offer RV maintenance and repair services, the sale of RV parts and supplies and the installation thereof, the sale of new and used RVs, and the sale of camping equipment and related goods.
[16] She attests that CWI’s websites display the trademark CAMPING WORLD. Customers can learn about RVs, research new and used RVs for sale, purchase RVs and camping equipment from the websites.
[17] She says that there are 123 CAMPING WORLD RV centre locations. Each displays the trademark CAMPING WORLD on interior and exterior signage. All are located in the United States. Ms. Ward indicates Canadian consumers regularly attend CAMPING WORLD RV centres for purchases. Sales to Canadian consumers between 2007 and 2016 amounted to more than $150,000,000 USD. From 2007-2016, more than 730,000 catalogues were mailed to Canadian consumers. Canadians have made more than 50,000 purchases via CWI’s websites or catalogue.
The McConnery Affidavit
[18] Ms. McConnery is a legal assistant employed by CWI’s trademark agent. Her affidavit includes the results of various searches by her of the Canadian Intellectual Property Office online trademarks database, as well as other internet searches and searches of the internet archive known as the Wayback Machine. Specifically, she retrieved archived versions of the website www.gnrcw.com from April 12, 2006, February 20, 2007, April 9, 2007, and August 17, 2008; none of which displayed the Mark. CWI submits that the GNR website featured different trademarks, such as the following:
6. Evidence of GNR
[19] GNR filed the affidavit of Kevin Betzold sworn on June 21, 2017. He was cross-examined on his affidavit.
The Betzold Affidavit
[20] Mr. Betzold is the General Manager and Vice President of Finance and Administration of GNR, which is located in Winnipeg, Manitoba.
[21] He attests that GNR and its predecessors have operated a business selling and servicing RVs and RV accessories since 1973, and since that time, they have used trademarks that prominently include the term “GNR CAMPING WORLD” in association with the operation of the business. GNR has clients across Canada.
[22] He says that since at least as early as July 24, 2008, GNR has been using the Mark in association with the Goods listed in the Application and that GNR sold the Goods with stickers attached that display the Mark. Between February 2013 and February 2015, GNR offered for sale a private label line of RVs under the trademark SERENITY, to which stickers bearing the Mark were applied.
[23] He further attests that since at least as early as May 3, 2007, GNR has used the Mark in association with the Services. He includes examples of the display of the Mark in association with the Services, such as purchase agreements from July 12, 2008, the display of the Mark at a trade show in March 2008, and the display of the Mark in print advertisements from July 2007 to October 2007.
[24] Since 2007, GNR sales are in excess of $9,000,000 CAD per year and it spends in excess of $2,100,000 CAD in advertising the Goods and Services in association with the Mark.
7. The Opposition Board Reasons and Decision
[25] The approach to decision making in opposition proceedings has two stages as described in Corporativo De Marcas GJB SA DE CV v Bacardi & Company Ltd, 2014 FC 323, at paragraph 31:
…At the first stage, the opponent must satisfy its evidential burden with respect to its ground of opposition under section 38 of the Act. If that is satisfied, then the analysis proceeds to the second stage, at which point the applicant must satisfy its legal burden with respect to the compliance of its application under section 30 of the Act (Roger T. Hughes, Hughes on Trade Marks, loose-leaf (consulted on 27 March 2014), (Markham, Ont: LexisNexis, 2005), ch 43 at 719).
[26] The Opposition Board observed that an opponent’s initial evidentiary burden under the Act is light and may be met by reference not only to the opponent’s evidence but also to the applicant’s evidence.
[27] With respect to Goods, the Opposition Board noted that GNR relied only on its display of the Mark on stickers affixed to Goods. The Board also noted that the Goods sold as of July 24, 2008, were all goods of third parties, some or all branded with their own separate trademarks. The Opposition Board found that CWI met its initial burden of opposition.
[28] The Opposition Board concluded that GNR had used the Mark in association with the Goods for the purposes of subsection 4(1) of the Act since the claimed date of July 24, 2008. This conclusion was reached considering the evidence and because the “weight of existing legal authority suggests that such display does constitute use of a trademark in association with goods pursuant to section 4(1).” In so finding, the Board references Mcdowell v Laverana GmbH & Co KG, 2016 FC 1276 [Mcdowell] at paras 18 and 19; Riches, McKenzie & Herbert LLP v Park Pontiac Buick GMC Ltd (2005), 50 CPR (4th) 391 (TMOB) [Park Pontiac Buick] at para 9; and Stevenson Hood Thornton Beaubier LLP v. Deedee Bodnar, 2010 TMOB 144 [Bodnar] at para 8.
[29] With respect to the Services, the Opposition Board noted that the Betzold affidavit claimed: “GNR has advertised the Services in association with the [Mark] continuously on its website http://www/gnrcw.com since at least as early as May 3, 2007 and continuing to date in Canada.” The Opposition Board noted that GNR filed no examples of the display of the Mark on or before the claimed date and that the only evidence offered of GNR’s website were from the Wayback Machine from February 2012 to May 2016, “well after the date of use claimed in the Application.”
[30] If the date of first use in Canada claimed in an application is earlier than the applicant’s actual date of first use, then opposition under paragraph 30(b) of the Act will succeed, and the application will be refused.
[31] The Opposition Board found that the evidence of GNR regarding its first use of the Mark on the Services was “called into question” by the exhibits from the Wayback Machine attached to the McConnery affidavit. It was found that CWI had met its “initial evidential burden” for the purposes of paragraph 30(b) opposition with respect to Services and that GNR had failed to establish on the balance of probabilities that it used the Mark in association with the Services since the claimed date of May 3, 2007. Accordingly, this ground of opposition to the registration of the Mark with regard to the Services was successful.
[32] In assessing confusion, the Opposition Board applied the test set out in subsection 6(2) of the Act, which requires consideration of all relevant surrounding circumstances including the factors set out in subsection 6(5) of the Act.
[33] First, the Opposition Board recognized that the Mark had a higher degree of inherent distinctiveness than CWI’s CAMPING WORLD trademarks. Second, it also recognized the parties’ goods and services overlapped and that both parties’ businesses related to the sale and servicing of RVs and RV accessories. Third, the Opposition Board recognized that the term CAMPING WORLD alone was insufficient to give rise to a high degree of resemblance, “the marks as a whole are sufficiently different.” The Opposition Board agreed that GNR had met its burden of demonstrating on a balance of probabilities that there was no likelihood of confusion.
8. Analysis
A. The Goods
[34] Subsection 4(1) defines when a trademark is used in association with goods. That use must be examined at the time the goods are transferred to another, in the normal course of trade. At that point in time, the trademark is used in association with the goods if (i) it is “marked on the goods themselves or on the packages in which they were distributed,” or (ii) “it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.”
[35] Determining the meaning of the word “use” for the purposes of the Act is a question of law and subject to review on the correctness standard: see Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134 at para 81; Cosmetic Warriors Limited v Riches, McKenzie & Herbert LLP, 2019 FCA 48 at para 17.
[36] In its Statement of Opposition CWI pled that the Mark had not been used by GNR as a trademark for the purpose of distinguishing or so as to distinguish GNR’s goods from those of others:
Specifically, the Applicant does not sell its own brand of recreational vehicles, related parts or accessories. Any sale of goods by the Applicant does not constitute the use of the Trademark as defined in Sections 2 and 4 of the Act.
[37] In light of this ground of opposition, the Court agrees with CWI that the question which the Opposition Board was required to address is whether the application of a retailer’s trademark in the manner done by GNR to goods manufactured by a third party constitutes “use” of the retailer’s trademark on the Goods within the meaning of the Act.
[38] The Court further agrees with the parties that this is a question of law reviewable on the standard of correctness.
[39] I begin by examining the three precedent decisions relied on by the Opposition Board respecting the meaning of the term “use” when associated with goods made by another. Each is a decision arising under section 45 of the Act, which requires a trademark owner to show that the trademark is in use in Canada with respect to the listed goods and services within the preceding three years.
[40] The Federal Court decision, Mcdowell, involved the use of the trademark HONEY. It was registered with respect to several goods, which may be generally described as clothing, footwear, headwear, jewellery, fashion accessories, cosmetics, and giftware. It was an appeal of a decision arising under section 45 of the Act: Laverana GmbH & Co KG v McDowell, 2015 TMOB 125. Ms. McDowell was required to furnish evidence showing that the HONEY mark was used in Canada in association with each of the goods and services specified in the registrations.
[41] With respect to evidence of association with the specified goods, Ms. McDowell provided evidence of sales but did not provide any breakdown of sales with respect to the registered goods. She also attested that the HONEY mark was displayed on hangtags or stickers attached to the goods, and by placing the goods in shopping bags or boxes displaying the Honey mark.
[42] One issue addressed by the Opposition Board was described at paragraph 19 as “whether the manner of display of the Marks constitutes use in association with any of the goods sold in HONEY stores, rather than in association with retail store services only.”
[43] With respect to the hang tags attached to the goods, the Opposition Board concluded at paragraphs 39 and 40 that this was not evidence of use in association with goods but rather relates to the services of the retail store:
With respect to the HONEY hangtags, I agree with the Requesting Party that the hangtags appear to be price tags which are only affixed to third-party goods when they are offered for sale in the HONEY retail stores. The Registrar has previously held that merely attaching a store’s price tags to a third-party good does not constitute use of a trade-mark pursuant to section 4(1) of the Act [see Coastal Trade-mark Services v Edward Chapman Ladies’ Shop Limited, 2014 TMOB 80, 2014 CarswellNat 1825]. Where a retailer’s trade-mark appears only on a price tag affixed by the retailer, it does not distinguish the goods but, rather, it distinguishes the retailer’s services from those of other retailers.
As the Requesting Party aptly put it: “A CANADA GOOSE® jacket purchased at a HONEY store does not become a HONEY jacket.” As such, I find that the display of the Marks on the evidenced hangtags does not give the requisite notice of association pursuant to section 4(1) of the Act.
[emphasis added]
[44] On appeal, Justice Fothergill specifically addressed this finding, stating at paragraph 21: “[H]ang tags and labels attached to goods would ordinarily be sufficient to demonstrate that a trade-mark was displayed in association with the goods during the relevant period (see, for example, Sim & McBurney v Garbo Group Inc, 2013 TMOB 141 at para 10).” The referenced paragraph reads as follows:
At the oral hearing, the Requesting Party submitted that Exhibit F fails to “show” use of the Mark with any particular ware as the hang tags filed in the exhibit do not have any jewelry attached. However, in his affidavit Mr. Grundman clearly attests that the hang tags and labels are representative of those attached to the Wares sold by the Registrant during the relevant period. In my view, given the nature of the Wares and the exhibited tags and labels, this is sufficient to “show” how the Mark was displayed in association with the Wares during the relevant period.
[emphasis added]
[45] Park Pontiac Buick is a decision of the Opposition Board. As part of its evidence submitted to establish use of the trademark in association with cars and trucks, the registrant provided a decal and attested that decals are attached to the cars and trucks sold by the registrant and delivered to its customers. In finding that this was sufficient evidence of use with respect to these goods, the Opposition Board stated at paragraph 9, as follows:
In the circumstances of this case, I am satisfied that the registrant has shown that the mark is associated with automobiles and trucks in accordance with s. 4(1) of the Act in the normal course of its trade and that such use has continued over a number of years including the material three-year time frame. Automobiles and trucks will therefore be maintained in the registration.
[46] Bodnar is also an Opposition Board decision. The trademark at issue is registered for use in association with “used motor vehicles namely consumer trucks and cars used for transportation on land.” The affidavit of the registered owner attested that the trademark was “prominently displayed on stickers and licence plate holders affixed to the vehicles available for sale” and remained on them at the time of purchase and transfer to the new owner. The Opposition Board concluded that “the evidence also shows that the Wares were sold to customers in Canada during the Relevant Period, and that the Mark was associated with the Wares in the manner required by s. 4(1) of the Act.”
[47] In response, CWI begins by observing that proceedings under section 45 are summary in nature and inter partes. Whereas “an opposition proceeding based on s. 30(b) of the Trademarks Act is not merely an “inter partes” dispute but rather involves a consideration of the public interest.” I am not persuaded that this distinction effects the proper interpretation of “use” in section 4 of the Act.
[48] CWI also raised a question as to whether, in the Mcdowell case, the tags were attached to the registrants’ own goods or those of another. The reasons are ambiguous. Regardless, it is clear in the other two decisions relied on by the Opposition Board that the trademarks were affixed to goods manufactured by others. Unlike Mcdowell, these cases involved a decal, sticker, or licence plate holder that was affixed to the goods, not a hangtag.
[49] Secondly, CWI disputes the assertion in the underlying decision that the “weight of existing legal authority suggests that such display does constitute use of a trademark in association with goods.” CWI points to the following decisions: Lavery, De Billy, LLP v Dimatt Investments Inc, Carrying on Business as Genesis, 2021 TMOB 152 [Genesis]; Moffat & Co v Big Erics Inc, 2015 TMOB 52 [Moffat]; McMillan LLP v April Cornell Holdings Ltd, 2015 TMOB 111; Transport For London v Stiles Clothiers Inc, 2018 TMOB 67 [Stiles Clothiers]; and 6438423 Canada Inc v Consumers Nutrition Center Ltd, 2009 CarswellNat 5047 (TMOB).
[50] I find the fact scenario of each of the above differs from the facts here. It is trite to say that each decision of the Opposition Board will depend on its unique facts.
[51] In Genesis, the goods were men’s clothing, accessories, pens, and watches. Many of the goods sold were not made by the trademark holder. The evidence of a witness was that “he has travelled to Italy on behalf of the Owner and GEN-RAM “to bring Canadian customers the latest men’s clothing, accessories and jewellery from ‘MADE IN ITALY’ quality and fashion” manufactured by a number of third parties [emphasis added].” There was also evidence that they “also make and sell ‘Made To Measure’ and ‘Custom Made’ men’s clothing and accessories.”
[52] The trademark owner provided “photographs of clothing and accessories bearing stitched-on labels or hang tags displaying” the trademark at issue. The Opposition Board held that in order for a trademark to be “marked on the goods themselves” it generally has to be displayed on the goods in a permanent fashion. Accordingly, it considered the trademark at issue to be “marked on the goods themselves” for goods bearing an embossed, engraved, or stitched-on label displaying the trademark even if the trademark at issue was “alongside third party trademarks.”
[53] On other goods bearing a third-party trademark, the applicant had only affixed hang tags bearing its trademark. It was held that “as the Mark has not been permanently affixed to these goods, I am not satisfied that the Owner has demonstrated use of the Mark on the goods themselves or in association in any other manner, within the meaning of the Act.”
[54] In Genesis, it was the permanence of the trademark affixed to the goods that led to a finding of use with respect to those goods. This was so even where another trademark was also affixed to the goods.
[55] The differentiation between permanent and non-permanent placement of trademarks on another’s goods being critical to establishing use of the trademark on goods was also observed in Moffat. There the goods at issue were a variety of products, including sanitation equipment, food service equipment, industrial chemicals, and automotive detailing supplies. At paragraph 29, the Opposition Board describes that permanence is required to find that the mark is displayed on the goods or the original packaging, especially where the goods have a manufacturer’s mark affixed:
Generally, a trade-mark displayed on a good in a permanent fashion (typically by the manufacturer) constitutes that trade-mark being “marked on the goods themselves”. Similarly, the wording in section 4(1) with respect to “on the packages in which they are distributed” will depend upon the particular circumstances and the normal course of trade involved, but generally contemplates the packaging that the goods are distributed in along the entirety of the chain and not just at one stage.
[56] CWI, referencing the decisions in Genesis, Stiles Clothiers, and Positec Group Ltd v Orange Works Kitchen & Home Corp, 2017 TMOB 141 [Positec Group], submits that “McDowell has been read narrowly and repeatedly distinguished on its facts, and has been expressly rejected by subsequent decision-makers as standing for any general proposition that a retailer selling the branded goods of other manufacturers may be considered to be ‘using’ its own mark in association with those goods when it affixes price tags or hang tags bearing its mark to those goods [emphasis added].”
[57] I generally agree with this submission; however, it is with reference to “price tags or hang tags” not to something that is permanently affixed to the goods, which is the case here.
[58] The evidence of GNR is that it has “stickers” bearing the Mark and that its employees attach the stickers to the Goods prior to the sale of the Goods. The Goods are recreational vehicles, and their parts and accessories. GNR is not the original manufacturer of these Goods, but each, when sold, has a sticker on it with the Mark. Examples were provided by GNR. The Goods, or many of them, also have the trademark of the manufacturer or distributor on them.
[59] The fundamental position taken by CWI is that when GNR places its Mark on goods it sells that are manufactured by another and with its trademark attached, the placing of the GNR Mark on it by affixing a sticker to it, does not constitute use of the Mark in association with the Goods. At best, it constitutes use of the Mark with the service of selling the Goods.
[60] I am unable to accept that submission. This Court has found that there is no prohibition on there being more than one trademark on a good. In AW Allen Ltd v Canada (Registrar of Trade Marks), [1985] FCJ No 824 (FCTD), Justice Cullen observed: “The law is also quite clear that there is nothing to prevent two registered trade marks being used at the same time and counsel for the respondent suggested ‘Kellogg's’ and ‘Special K’ as an example.”
[61] In the above example, the two trademarks were both applied by the manufacturer and were its trademarks. However, there is nothing in the Act making this a requirement. In Bodnar, for example, the Opposition Board found that the application of a decal on used cars manufactured by another (and presumably still showing the manufacturer’s trademark) constituted use of the trademark in association with those goods. This is consistent with the basic purpose of trademarks, which is to distinguish one’s wares in the marketplace, and to protect consumers by communicating what they are purchasing and from whom.
[62] The Supreme Court of Canada in Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22, at paragraph 2 observed that this has always been the raison d’être of trademarks, although it has expanded from its original purpose:
Merchandising has come a long way from the days when “marks” were carved on silver goblets or earthenware jugs to identify the wares produced by a certain silversmith or potter. Their traditional role was to create a link in the prospective buyer’s mind between the product and the producer. The power of attraction of trade-marks and other “famous brand names” is now recognized as among the most valuable of business assets. However, whatever their commercial evolution, the legal purpose of trade-marks continues (in terms of s. 2 of the Trade-marks Act, R.S.C. 1985, c. T-13) to be their use by the owner “to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others”. It is a guarantee of origin and inferentially, an assurance to the consumer that the quality will be what he or she has come to associate with a particular trade-mark (as in the case of the mythical “Maytag” repairman). It is, in that sense, consumer protection legislation. [emphasis added]
[63] The position advanced by CWI appears to be that only an original manufacturer of a good can show use of a trademark affixed to those goods; all others in the supply chain are merely providing a service and any trademark they affix to the goods thereby becomes associated only with their service.
[64] In my view, that is too narrow an interpretation of the Act and the protections it affords trademark owners.
[65] Manufacturing is no less a service than distributing or selling goods. A sign with a trademark on a manufacturer’s factory may be evidence of the use of the trademark with the service of manufacturing. Just as a sign with a trademark on a retail store may be evidence of the use of that trademark with the service of selling. However, when each affixes its trademark to the goods being manufactured or sold, that is evidence of the use of that trademark in association with goods.
[66] For these reasons, I find that the Opposition Board’s conclusion with respect to the Mark being used in association with the Goods was correct. The evidence is that the Mark was permanently affixed to the Goods (the recreational vehicles) and to the packages containing the parts. That is evidence of use of the Mark in association with the Goods.
B. The Services
[67] GNR submits that the Opposition Board erred in relying on the archived webpages from the Wayback Machine and says that CWI did not meet its evidentiary burden. GNR also submits that the Opposition Board erred as there is nothing which suggests that GNR websites were the sole means of offering the Services.
[68] In short, they say that the Opposition Board misunderstood or misapplied t