In an appeal from the Trade-Marks Opposition Board, the Federal Court set aside a decision reached pursuant to Section 45 of the Trade- Marks Act and maintaining in part Malcom Parry’s registration for the trade-mark VANCOUVER LIFE in association with “editorial/advertising inserts into publications and periodicals”.
The Federal Court addressed mainly two issues. The first issue was whether the Registrar was wrong in concluding that in Section 45 proceedings she was not required to decide if use of the mark constituted trade-mark use within the meaning of the Act. The second issue was whether such use was one in association with wares contemplated by the registration.
With regard to the first issue, the Court found that the Registrar had not erred in refusing to embark on a review of the distinctiveness or validity of the mark VANCOUVER LIFE. As established by the Federal Court of Appeal in United Grain Growers Limited v. Lang Mitchener, no words in Section 45 direct the Registrar to re-examine whether the registered trade-mark is used for the purpose of distinguishing or so as to distinguish wares or services. Rather, the Registrar’s duty under Section 45 is only to determine, with respect to wares specified in the registration, whether the trade-mark, as it appears in the register, has been used in the three year period preceding the notice issued by the Registrar. The Federal Court therefore upheld the decision of the Registrar in this respect.
With regard to the second issue, however, the Court came to the conclusion that it was not reasonable for the Registrar to conclude that columns of editorial content published in a magazine constituted “editorial/advertising inserts into publications and periodicals”. In the Court’s opinion, the expression “editorial/advertising inserts into publications and periodicals” found in the statement of wares could not reasonably be understood as extending to “editorials inserted into publications and periodicals”. The trade-mark was expunged. This decision highlights the importance of a carefully drafted description of wares and services in the context of Section 45 proceedings.