March 27, 2023
Goldman Sloan Nash & Haber LLP
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A federal court decision addresses the use of trademarks for goods and services and provides an answer to the question posed above.GNR Travel Center Ltd. gegen CWI, Inc.2023 FC2
The applicant applied for the GNR CAMPING WORLD & Design trademark (registered trademark) for use on recreational vehicles and related parts and accessories and related retail sales and services for recreational vehicles. The claim was based on use of the mark since at least July 24, 2008 in relation to goods and since at least May 3, 2007 in relation to services.
The application was denied because the applicant had not used the mark with all of the goods and services listed in the application by the alleged dates of first use. It was also alleged that the mark was confused with the opponent's mark CAMPING WORLD DESIGN.
the opposition dies
The opponent's evidence included an affidavit of research on the internet archive known as the Wayback Machine. Archived versions of the applicant's website at the relevant dates did not reveal any evidence that the mark was displayed. The Hearing Officer considered that this evidence was sufficient to meet the opponent's burden of proof, in particular when the products or services were offered online.
Plaintiff's evidence regarding the use of its mark in connection with the products was that it manufactured "stickers" using the mark and that its employees affixed the stickers to the products before they were sold. The applicant is not the original manufacturer of the products, but each item has a brand tag when sold. The products, or many of them, also carry the manufacturer's or distributor's brand.
Applicant's proof of use in connection with the services consisted of a strong statement that it had done so, but did not provide examples of the mark being displayed on or before the claimed date of first use. There were examples of such announcements, but they covered the period from February 2012 to May 2016.
The Hearing Officer concluded that the claimant had used the mark in connection with the goods since the claimed date, 24 July 2008. The officer said that the weight of existing powers suggested that such display constituted use of a mark in connection with the goods. Furthermore, it was found that the applicant had failed to prove that he had used the mark in connection with the services since the alleged date, May 3, 2007.
The Hearing Officer was not convinced of the existence of a risk of confusion between the respective marks. The order was approved for goods and denied for services.
Both parties appealed to the Federal Court of Justice. None of them provided additional evidence. The judge and counsel for the parties recognized the trademark issues raised in this case as legal issues subject to the standard of equity.
The opponent claimed that the applicant did not use the mark as a brand to distinguish its products from others, since the applicant did not market recreational vehicles, related parts or private label accessories. Any sale of goods by the applicant did not constitute use of the mark as required by thetrademark law.
The judge reviewed the decisions cited by the auditor and agreed with the auditor's conclusion. The use of non-permanent hang tags on products may not constitute use of the brand, but this was not the case in this case, as tests showed that the brand was permanently attached to the products.
There is no prohibition on having more than one mark on an item. For example, affixing a decal to another manufacturer's used cars (and presumably still bearing the manufacturer's trademark) constitutes use of the mark in relation to those products. This is consistent with the fundamental purpose of trademarks, to differentiate a person's products in the marketplace and to protect consumers by informing them of what they are buying and from whom.
Manufacturing is no less a service than the distribution or sale of goods. A sign bearing a trademark at a manufacturer's factory may be evidence of use of the trademark with the manufacturing service. Just as a brand sign in a retail store can be evidence of the use of that brand with the retail service. However, if the manufacturer or seller places its trademark on the goods manufactured or sold, this is evidence of the use of that mark in relation to the goods.
The judge concluded that the auditor was correct and the appeal was dismissed.
The claimant's claim
The Complainant argued that the Auditor had wrongly relied on archived Wayback Machine web pages and that the Adversary had fulfilled its burden of proof.
The judge referred to previous Appeals Chamber rulings which concluded that the absence of a plaintiff's mark on a website at the time of first claimed use, as evidenced by archived versions of the Wayback Machine, was sufficient to shift the burden of liability of an opponent. proof of compliance, especially if the products or services are offered online. In addition, the Internet Wayback Machine's filing system has been recognized by the Federal Court of Justice as a reliable source of evidence about the state of websites in the past.
Since the services provided by the applicant were services expected to be provided online, the Auditor was not wrong to rely on WaybackMachine's archived web pages. It is also not wrong to conclude that the opponent has met his initial burden of proof.
Furthermore, the Auditor Counselor did not err in denying the registration of the trademark relating to the services. Plaintiff has failed to provide sufficient evidence that it first used the Mark in connection with the Services on or before May 3, 2007. Nor has the Claimant provided any new or additional evidence on the matter in the Complaint.
In the current version oftrademark lawthere is no need to state the date of first use and there is no ground for objection based on the claim that the applicant has not used the mark with any goods or services listed in the application on the alleged date of first use. However, there are other potential grounds of objection available to an opponent, which require the submission of evidence to prove use of the mark by both parties. The principles discussed above regarding the use of marks and certifications still apply.
A version of this article originally appeared in TheLawyer's Daily, published by LexisNexis Canada Inc.
The content of this article is intended to provide a general guide on the subject. Regarding your specific circumstances, you should seek expert advice.
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