A decision of the Federal Court deals with trademark use for both goods and services and provides an answer to the question raised above. GNR Travel Centre Ltd. v. CWI, Inc. 2023 FC 2
The applicant applied for the mark GNR CAMPING WORLD & Design (Mark) for use in association with recreational vehicles and related parts and accessories and retail sales and related services for recreational vehicles. The application was based on use of the Mark since at least as early as July 24, 2008, in association with the goods, and since at least as early as May 3, 2007, in association with the services.
The application was opposed on the basis that the applicant had not used the Mark with each good and service listed in the application as of the claimed dates of first use. In addition, it was alleged the mark was confusing with the registered trademark CAMPING WORLD DESIGN owned by the opponent.
The opponent’s evidence included an affidavit relating to searches of the Internet archive known as the Wayback Machine. Archived versions of the applicant’s website at the relevant dates disclosed no evidence of the display of the Mark. The Hearing Officer found this evidence was sufficient to meet the opponent’s evidentiary burden, particularly where the goods or services were offered online.
The applicant’s evidence concerning the use of its Mark in association with goods was that it created “stickers” bearing the Mark and its employees attached the stickers to the goods before their sale. The applicant is not the original manufacturer of the goods, but each item, when sold, has a sticker on it bearing the Mark. The goods, or many of them, also bear the trademark of the manufacturer or distributor.
The applicant’s evidence concerning the use in association with services consisted of a bald statement it had done so but provided no examples of the display of the Mark on or before the claimed date of first use. There were examples of such displays, but they related to the period from February 2012 to May 2016.
The Hearing Officer concluded that the applicant had used the Mark in association with the goods since the claimed date of July 24, 2008. The Officer said the weight of existing authority suggested that such display does constitute use of a trademark in association with goods. In addition, it was concluded the applicant failed to show it used the Mark in association with the services since the claimed date of May 3, 2007.
The Hearing Officer was not convinced there was a likelihood of confusion between the respective marks. The application was allowed for goods and refused for the services.
Both parties appealed to the Federal Court. No additional evidence was filed by either of them. The issues relating to trademark use raised in this case were agreed by the Judge and counsel for the parties to be questions of law to which the standard of correctness applied.
The Opponent’s Appeal
The opponent pleaded that the Mark had not been used by the applicant as a trademark to distinguish its goods from those of others since the applicant did not sell its own brand of recreational vehicles, related parts, or accessories. Any sale of goods by the applicant did not constitute the use of the Mark as required by the Trademarks Act.
The Judge reviewed the decisions that the Hearing Officer had referred to and agreed with the Officer’s conclusion. Using hang tags not permanently affixed to the goods might not constitute trademark use but that was not the case here as the evidence showed the Mark was permanently affixed to the goods.
There is no prohibition on there being more than one trademark on a good. For example, the application of a decal on used cars manufactured by another (and presumably still showing the manufacturer’s trademark) constituted use of the trademark in association with those goods. This is consistent with the basic purpose of trademarks, which is to distinguish one’s goods in the marketplace, and to protect consumers by communicating what they are purchasing and from whom.
Manufacturing is no less a service than distributing or selling goods. A sign with a trademark on a manufacturer’s factory may be evidence of the use of the trademark with the service of manufacturing. Just as a sign with a trademark on a retail store may be evidence of the use of that trademark with the service of selling. However, when either the manufacturer or seller affixes its trademark to the goods being manufactured or sold, that is evidence of the use of that trademark in association with goods.
The Judge concluded the Hearing Officer was correct and the appeal was dismissed.
The Applicant’s Appeal
The applicant argued that the Hearing Officer erred in relying on the archived webpages from the Wayback Machine and that the opponent had meet met its evidentiary burden.
The Judge referred to previous decisions of the Opposition Board that had concluded the absence of an applicant’s trademark from a website as of the date of first use claimed, as demonstrated by archived versions from the Wayback Machine, was sufficient to meet an opponent’s evidentiary burden particularly where the goods or services were offered online. In addition, the Internet archive system Wayback Machine has been accepted by the Federal Court as a reliable source for evidence as to the state of websites in the past.
Given that the Services provided by the applicant were services that could be expected to be provided online, the Hearing Officer made no error in relying on the archived webpages from the Wayback Machine. Nor was it an error to conclude that the opponent had met its initial evidentiary burden.
In addition, the Hearing Officer did not err in rejecting the application for the Mark in relation to services. The applicant failed to provide sufficient evidence to show it first used the Mark in relation to services on or before May 3, 2007. The applicant also provided no new or additional evidence on this issue on the appeal.
Under the current version of the Trademarks Act there is no requirement to specify a date of first use and no ground of opposition based on the assertion the applicant had not used the mark with each good or service listed in the application as of the claimed dates of first use. However, an opponent has other potential grounds of opposition available which require filing of evidence to show trademark use by both parties. The principles relating to trademark use and evidence discussed above will continue to be applicable.
Toronto, January 2023
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These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Lawyer’s Daily published by LexisNexis Canada Inc.