Lum v. Dr. Coby Cragg Inc., 2015 FCA 293

By way of Summary Trial, the Federal Court (FC) refused to strike the Defendant's trademark OCEAN PARK from the register on the grounds that it was not registrable pursuant to s. 12(1)(b) and invalid pursuant to ss. 18(1)(a) and (b) of the Act. The FC held that the Plaintiffs had not met the two-part test applicable to determine whether the trademark is descriptive of the place of origin of the Defendant's services, pursuant to s. 12(1)(b). With respect to the Plaintiffs' second allegation of invalidity under s. 18(1)(b), the FC held that the Plaintiffs failed to adduce any evidence in order to establish that the trademark prima facie failed to distinguish the Defendant's services from the services of other dentist in Ocean Park (decision here).

On appeal, the Federal Court of Appeal (FCA) set aside the trial judgment and declared that the OCEAN PARK trademark was invalid and should be struck from the Register. The FCA agreed with the Appellants that the FC misunderstood the meaning of s. 12(1)(b) of the Act and made a palpable and overriding error when applying it.

The FCA had previously dealt with a very similar situation in General Motors du Canada v Décarie Motors Inc[2001] 1 FC 665, where the plaintiff had sought expungement of the mark "Décarie" (a well-known boulevard in Montréal), on the basis of paragraphs 18(1)(a) and (b) of the Act. In Décarie, the FCA noted that it was reasonable to say that "prima facie the mark was unregistrable under paragraph 12(1)(b) of the Act due to its geographic descriptiveness ('place of origin')." While the mark could have been registrable if it had become distinctive at the date of filing of the application or when its validity was challenged, the inherent weakness of the mark, as well as its limited use as a stand-alone mark, ultimately established that it had not acquired a secondary meaning at any time. As in the Décarie, the trademark at issue in the present case was never used as a stand-alone mark. The Respondents were unable to distinguish Décarieand the FCA held that this precedent was "on all fours with the matter before us and must therefore be followed".

The FCA also found that the FC made a palpable and overriding error in assessing the validity of the trademark under paragraph 18(1)(b) of the Act. Referring once again to Décarie, the FCA concluded that in the present case, there was enough evidence before the FC to conclude that the trademark was not distinctive of the Respondent's services as of the date upon which the trademark's validity was challenged.