The Federal Court recently issued its decision in Sim & McBurney v. Malcolm Parry. This case was an appeal by Sim & McBurney from a decision of the Trade-marks Opposition Board, relating to Sim & McBurney’s Section 45 challenge to society columnist Malcolm Parry’s trade-mark VANCOUVER LIFE. Toronto Life Publishing Company Limited (represented by Sim & McBurney) has a pending application to register VANCOUVER LIFE for similar wares and services.
Under Section 45 of the Trade-marks Act, at the request of a third party, the Registrar may require a trade-mark owner to show that the registered mark has been used in association with the wares or services specified in the registration within the past three years. The Registrar found that there had been no use of the trade-mark VANCOUVER LIFE in association with the specified services and most of the specified wares, but maintained the registration in part, finding there had been use of the trade-mark in association with “editorial/advertising inserts into publications and periodicals”. Sim & McBurney appealed this decision and sought to have the trade-mark expunged in association with all registered wares.
In the appeal, Sim & McBurney alleged that (1) the Registrar had erred in not reviewing the distinctiveness or validity of the VANCOUVER LIFE mark, and (2) the Registrar had erred in finding that use of the mark VANCOUVER LIFE had been shown in association with “editorial/advertising inserts into publications and periodicals” during the relevant three year period.
The Federal Court dismissed the first allegation, finding that “Section 45 of the Act provides for a simplified and expeditious procedure to expunge from the register those trade-marks which are no longer in use, and to restrict the types of wares and services associated with a registered trade-mark to those for which the trade-mark is actually used”, and was not intended to provide a backdoor approach to challenge a registered trade-mark based on distinctiveness or invalidity.
In dealing with the second allegation, the Federal Court was willing to accept the Registrar’s conclusion that, as Mr. Parry was the author of an editorial column bearing the title “Vancouver Life” which was regularly published in Vancouver magazine, there had been use of the trade-mark by Mr. Parry during the relevant period: either personally or through the publisher of Vancouver magazine (despite the lack of evidence of a license under Section 50(1) of the Trade-marks Act). However, the Federal Court found it was not reasonable of the Registrar to assume the editorial articles published in a magazine constituted “editorial/advertising inserts into publications and periodicals”, since while the verb “inserts” could refer to material inserted into a magazine by way of a column, the noun “inserts” referred to “a type of publication which is loose in form and which is inserted in a magazine”. Consequently, the Federal Court found that there had been no use of the trade-mark in association with “editorial/advertising inserts into publications and periodicals” and ordered that the trade-mark be expunged from the register.
The Federal Court acknowledged that Section 41(1)(c) of the Trade-marks Act could allow amendment of the statement of wares, but found that such amendment was outside the ambit of a Section 45 proceeding. Although Mr. Parry could not avoid the Section 45 expungement, he could conceivably bring a new application, which would be subject to examination, advertisement and possible opposition. In such case, how he describes the wares and services will likely determine whether Sim & McBurney’s client would oppose such application. On the other hand, rather than roll out the red carpet for his trade-mark, Mr. Parry may just allow it to fade into obscurity.
