The recent decision of the Opposition Board in Gowling Lafleur Henderson LLP v. Banks DIH Ltd1 highlights the importance of carefully describing goods and services to reflect only those goods that the trademark owners uses, or intends to use, in association with its trademark.
In Banks, a notice under section 45 of the Trade-marks Act was issued to the owner of the BANKS registration, covering “Beer, ale and lager”. Section 45 requires the registered owner to show that the trademark has been in use in Canada in association with “each” of goods/services listed in the registration during the three year period preceding the notice date. To show “use” with goods, the registrant must show that “at the time of the transfer of the property in or possession of the goods, in the normal course of trade, [the trademark] is marked on the goods themselves or on the packages in which they are distributed or 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.”2
The registrant’s evidence showed that it produced three types of beverage products: BANKS Caribbean Lager; BANKS Shandy, and BANKS Malta. However, only BANKS Caribbean Lager was sold in Canada during the relevant period, with sales amounting to in excess of $156,000.
The Owner argued that the terms “beer”, “lager” and “ale” are interchangeable, and that the registration should be maintained in its entirety. The Opposition Board, acting for the Registrar, disagreed:
Here, the issue is not whether the evidenced "lager" product falls within the scope of "beer" or even "ale". The issue here is that, having distinguished "beer" and "ale" from "lager" in its registration, the Owner is obligated to provide some evidence with respect to each of the listed goods accordingly … However, as noted above, the only product shown in the evidence is "BANKS Caribbean Lager" and Mr. Seepaul clearly states in his affidavit that only this lager product was sold in Canada during the relevant period.3
The BANKS decision aligns with a much earlier Federal Court of Appeal decision in a section 45 proceeding regarding a trademark registration for goods that included a variety of brewed alcoholic beverage products. In the lower court decision, the judge relied on dictionary definitions and concluded that the wares were all related, i.e., they belong to a single family of brewery products, and held that the registration ought not to be amended. However, the Federal Court of Appeal disagreed:
Specification of the wares other than beer suggest, in the absence of proof to the contrary, that each is indeed different in some degree from the others and from "beer" itself, as otherwise the words "ale, porter, stout, malt beverages, malt syrup and malt extracts" are superfluous.
… In this case, the respondent has … shown only that the mark is in use with respect to "beer". The fact that the other wares specified fall within a group of wares that are in some way related to beer is not sufficient, in my view, to preserve the registration intact. That could only be done if the respondent had also shown that the trade mark is in use in Canada with respect to each of these other wares. Such use is required in order to sustain all of the rights in the trade mark.4
Other decisions by the Opposition Board have taken a similarly narrow and specific approach to the statement of goods and/or services, such as finding that:
- Evidence of sales of “jackets” is insufficient to maintain a registration for “ladies jackets and all weather jackets, . . . men’s jackets and all weather jackets”, where the Registrar specifically commented that “[w]hile the term “jackets” could be said to include “ladies jackets,” “men’s jackets,” and “all weather jackets,” it is unclear, in view of the specificity of the wares in the registration, if the jackets sold on the receipts [entered into evidence] were men’s jackets, ladies’ jackets, men’s all weather jackets, or ladies all weather jackets”5;
- Sales of “wind jackets, sleeveless jackets and jackets” did not amount to use of “winter parkas, ski jackets”6;
- Sales of pants did not amount to use of “jeans”, because “[j]eans certainly are a type of pants but the pants introduced into evidence are not what are typically thought of as jeans. It would have been a simple matter to have [the affiant] refer to these pants as jeans, if in fact that is what he considers them to be”7;
In contrast, the Opposition Board has, from time to time, adopted a broader approach to the definition of goods and services, such as finding that:
- use of a trademark on tennis shoes amounted to use of the registered goods “jogging type shoes”8;
- use of a trademark with cigars and cigarillos amounts to use of the registered goods “leaf tobacco, manufactured tobacco for smoking and chewing, snuff and cigarettes”9;
The goal of any new application should be to provide clear protection for goods/services now used, or intended to be used, keeping in mind three key points. First, the statement of goods/services must meet the requirements of “ordinary commercial terms” set by the Trade-marks Act. That means that broad terms like “beverages”, “pharmaceuticals” or “clothing” are not permissible. Second, at least for now, registrations cannot issue without actual use. If there is no use on all general classes of goods/services before advertisement, that raises potential opposition or expungement challenges. Finally, all registrations are vulnerable to a non-use attack 3 years after registration. Overly detailed descriptions of goods/services are just as problematic as broad claims of use that cannot be substantiated, and may result in limitations to the goods/services. Just as Goldilocks struggled with the right fit, so too must brand owners if they want to be assured of valid and enforceable trademark registrations.