Terrace (City) v. Urban Distilleries Inc., 2014 FC 833

The City of Terrace and Kitasoo Band Council moved for summary judgment against Urban Distilleries for infringement of the published official mark SPIRIT BEAR. Public notice of the official mark was given before Urban Distilleries started manufacturing spirits under the unregistered trade-marks SPIRIT BEAR VODKA, SPIRIT BEAR GIN, and SPIRIT BEAR ESPRESSO INFUSED VODKA. Urban Distillers had previously sought to register the trade-mark SPIRIT BEAR VODKA but abandoned the application when the City of Terrace and Kitasoo Band Council opposed. The moving parties subsequently sought an injunction against Urban Distilleries and moved for summary judgment.

Of the many issues argued, one was determinative. The Court found that The City of Terrace or Kitasoo Band Council were not shown to have adopted and used the official marks as of the date of publication. The requirement for adoption flows from subparagraph 9(1)(n)(iii) of the Trade-marks Act. The jurisprudence provides that the use cannot be in the abstract; it must be associated with a particular ware or service, and a connection must be made with the ware or service and the mark.

The evidence from the City of Terrace was not found to prove use as an official mark for the city. It either was not used as a mark, or it was only used internally. Kitasoo Band Council provided a diary entry of the Chief, but it was found to be hearsay. While the Court noted that the spirit bear is important in the Kitasoo culture, this was not enough to raise it to the level of use on wares or services as contemplated for an official mark.

On the whole, the Court found that the two official marks were unenforceable and the motion for summary judgment was refused.