Date: 20180926

Docket: T-81-18

Citation: 2018 FC 941

Ottawa, Ontario, September 26 2018

PRESENT:  The Honourable Mr. Justice Mosley

BETWEEN:

CWI, INC.

Applicant

and

THOMPSON DORFMAN SWEATMAN LLP and THE REGISTRAR OF TRADE-MARKS

Respondents

JUDGMENT AND REASONS

I.  Introduction

[1]  The Applicant appeals under section 56 of the Trade-marks Act, RSC, 1985 c T-13, as amended (the Act), a decision of the Trade-marks Registrar (the Registrar) dated November 15, 2017. This decision expunged Canadian Trade-Mark Registration No. TMA 245,252 for the trade-mark CAMPING WORLD & Design.

[2]  For the reasons that follow, the appeal is dismissed.

II.  Background

[3]  The Trade-mark was filed on May 23, 1980. As registered, it is:

[4]  At the Respondent’s request, on August 31, 2015, the Registrar issued a notice under section 45 of the Act to the Applicant, the registered owner of the Trade-mark. The notice requested the Applicant furnish evidence establishing it used the Trade-mark in Canada in association with the registered services at any time during the three years immediately preceding the date of the notice, namely, between August 31, 2012 and August 31, 2015 (the Relevant Period).

[5]  The Trade-mark is registered for use in association with: “Installation, repair and maintenance of camping equipment and recreational vehicles” and “retail store services and retail mail order services in the field of camping equipment and supplies and recreational vehicles and supplies”.

[6]  In response to the notice, the Applicant filed the affidavit of Tamara Ward, its Chief Marketing Officer, sworn on March 30, 2016 (the Ward Affidavit) and Exhibits A to E in support thereof. Both the Applicant and Respondent filed written arguments. On October 23, 2017, both parties submitted oral arguments at a hearing.

[7]  The evidence before the Registrar consisted solely of the Ward Affidavit. Ms. Ward states although the trade-mark has evolved over time, it does not differ substantially from the registered trade-mark. Specifically, the trade-mark has always maintained its distinctive feature and its pronunciation, namely CAMPING WORLD. Ms. Ward states all variations of the mark point to the Applicant and the Applicant’s customers would consider it to be one and the same.

[8]  Ms. Ward further states the Applicant operates a Canadian website to advertise and provide its retail, installation, repair, and maintenance services directly to Canadian consumers. Canadians may also make purchases via the Applicant’s Canadian website located at www.campingworld.ca. In addition, the Applicant distributes catalogs to consumers in Canada, which list for sale a range of products including recreational vehicles, parts and accessories, camping equipment, and related goods and services.

[9]  Website printouts and catalog copies displaying the variations of the trade-mark used during the Relevant Period were attached as exhibits to Ms. Ward’s affidavit. Consumers in Canada can order products by mail or telephone. They can place an order by filling out an order form provided in the catalogs, or, by calling a 1-800 telephone number. The goods then ship to Canada. A sample order form was attached as an exhibit, as were documents described as representative invoices from customers in Canada. Ms. Ward states Canadians can mail previously purchased camping equipment and supplies to the Applicant for repair and maintenance services.

[10]  In the November 15, 2017 decision, the Registrar held the evidence demonstrated advertising and performance of the registered services of “retail store services and retail mail order services in the field of camping equipment and supplies and recreational vehicles and supplies” in Canada during the Relevant Period. The Registrar noted that Canadians could mail or otherwise forward products to the Applicant to have such products repaired in the United States. The repaired or refurbished products would then be returned to the Canadian consumer. The Registrar expressed doubt the Applicant performed the registered “installation, repair and maintenance” services in Canada absent facilities in Canada.

[11]  The Registrar held the determinative issue was whether the CAMPING WORLD Trade-Mark used by the Applicant constituted display of the Mark as registered. The Registrar found the dominant feature of the registered Mark is not simply the words CAMPING WORLD but includes the particular globe design replacing the letter “O”. The Registrar held the Applicant was attempting to change its registration for a design mark to a registration for a word mark. The evidence showed the Applicant did not use the distinctive globe design at all during the Relevant Period; nor did it appear to have any plans to use this design.

[12]  In view of these findings, the Registrar was not satisfied the Applicant had demonstrated use of the Mark as registered in association with the registered services within the meaning of sections 4 and 45 of the Act. Furthermore, the Registrar found there was no evidence of special circumstances excusing such non-use.

[13]  On appeal to this Court, no new material evidence was introduced.

III.  Relevant Legislation

[14]  The Act sections 4, 45, and 56 read as follows:

IV.  ISSUES

[15]  The parties raise the following issues:

• a) What is the appropriate Standard of Review?

• b) Did the Registrar err in ordering the Trade-mark expunged?

V.  ANALYSIS

A.  Standard of Review

[16]  As the parties did not file additional evidence with this Court, the generally accepted standard of review on an appeal from a decision of the Registrar is reasonableness, whether the issue is one of fact or mixed fact and law: Vêtement Multi-Wear Inc v Riches, McKenzie & Hebert LLP, 2008 FC 1237, 73 CPR (4th) 3. The question is whether the Registrar’s decision is supported by reasons that can withstand “a somewhat probing” examination and is not “clearly wrong”: Mattel Inc v 3894207 Canada Inc, 2006 SCC 22 at para 40, [2006] 1 SCR 772. The decision is entitled to considerable deference: Ridout & Maybee LLP v HJ Heinz Company Australia Ltd, 2014 FC 442 at para 28, 122 CPR (4th) 208. In order for the court to intervene, it must conclude that no reasonable interpretation can lead to that of the decision-maker: ibid.

[17]  The Applicant submits the standard of review on the issue of deviation ought to be correctness as the Registrar failed to apply a mandatory element of the legal test. The Applicant argues the Registrar failed to consider all manners of use of the Applicant’s mark or marks as not differing substantially from the mark as registered. The Applicant submits this should be characterized as an error of law subject to the correctness standard.

[18]  In the alternative, the Applicant submits the alleged error would make the decision unreasonable: Canadian Council of Professional Engineers v REM Chemicals Inc, 2014 FC 644 at paras 22–23, 27, 58, 125 CPR (4th) 245.

[19]  As I will discuss below, I do not find that the Registrar erred in applying the test for deviation. Applying either standard of review, I would uphold the Registrar’s decision.

B.  Did the Registrar err in ordering the Trade-mark Expunged?

[20]  The purpose of section 45 of the Act is to provide a simple, summary, and expeditious procedure for removing marks that have fallen into disuse from the Register. This has been described as the procedure for removing “deadwood” from the Register: Phillip Morris Inc v Imperial Tobacco et al (1987), 13 CPR 3d 289 at 293, 8 FTR 310 (FCTD).

[21]  In response to a section 45 notice from the Trade-marks Office, a registered owner must provide evidence showing each of the following conditions were present:

• a) The trade-mark was in use in Canada;

• b) In association with the goods and/or services covered in the registration;

• c) At any time during the three year period immediately preceding the date of the notice.

[22]  According to section 4 (2) of the Act, a trade-mark is deemed to be used in association with services if it is used or displayed in performing or advertising those services. The Registrar should be satisfied by a relatively low threshold of use and need only consider whether the registrant has provided some evidence of use of its trade-mark during the Relevant Period: Gesco Industries Inc v Sim & McBurney et al (1997), 76 CPR (3d) 289 at 294, 138 FTR 130 (FCTD).

[23]  As the Registrar stated, mere assertions of use, such as those in Ms. Ward’s affidavit, are not sufficient. The registered owner must provide factual evidence to permit the Registrar to conclude the mark was used in association with each of the services specified in the registration during the Relevant Period. This must be evidence not only stating but showing the use being made of the trade mark: Aerosol Fillers Inc v Plough (Canada) Ltd (1980), 53 CPR (2d) 62 at 66, [1981] 1 FC 679 (FCAD).

[24]  One of the questions before the Registrar was whether the owner of the mark advertised and was able to perform the registered services in Canada during the Relevant Period. The Registrar held the evidence demonstrated advertising and performance of the registered services of “retail store services and retail mail-order services in the field of camping equipment and supplies and recreational vehicles and supplies” in Canada during the Relevant Period. The Registrar’s finding in this regard is in keeping with jurisprudence holding that, in the absence of brick-and-mortar stores in Canada, whether “retail store services” are performed in Canada depends on whether a company makes deliveries in Canada (see for example: Dollar General Corporation v 2900319 Canada Inc, 2018 FC 778 at para 21). There was evidence to that effect although I note that Exhibit “D”, a catalogue order form, indicates that standard delivery is limited to the 48 contiguous States. While a 1-800 number is provided for placing orders, international customers are directed to call a non-1-800 number for availability and delivery charges.

[25]  The Registrar stated that it was unclear how the registered “installation, repair and maintenance” services could be performed in Canada in the absence of facilities in Canada. The exhibits did not clearly demonstrate repairs were available in Canada. A Canadian, for example, who sought to have his or her recreational vehicle repaired would have to take it to a U.S. location for such services to be performed or have the necessary parts shipped north and do the work themselves or have it done by someone else in this country.

[26]  The determinative issue was whether the registered services were offered or performed in association with the mark as registered. There was no evidence of this during the Relevant Period. At best, the Applicant offered evidence of variations that featured the use of the words “Camping World” either alone or with a mountain design. These, the Applicant argued, were simply acceptable deviations from the mark which did not detract from its identity.

[27]  The Registrar cited the test for deviation in paragraphs 27 to 29 of the decision:

The test for deviation, as articulated by the Federal Court of Appeal, is as follows:

The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin. [Canada (Registrar of Trade-Marks) v Compagnie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 (FCA) at 525]

As the Court of Appeal noted, “That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used.”[at 525]

In deciding this issue, one must look to see if the “dominant features” of the trade-mark have been preserved [Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)]. The assessment as to which elements are the dominant features and whether the deviation is minor enough permit a finding of use of the trade-mark as registered is a question of fact to be determined on a case-by-case basis.

[28]  The Registrar concluded the dominant feature of the registered trade-mark is not simply the words CAMPING WORLD but includes the particular globe design replacing the letter “O” in WORLD. This conclusion was, in my view, reasonable. The element CAMPING in the mark describes the services and as such would not be a dominant feature of the mark. The replacement of the letter “O” with a globe, clearly a play on the word “world”, is the most dominant and unique part of the design mark.

[29]  There was no evidence the Applicant used this distinctive globe design at all during the Relevant Period. As such, it was open for the Registrar to find there was no evidence of use of the mark as registered in association with the registered services within the meaning of sections 4 and 45 of the Act.

[30]  The Registrar’s application of the test for deviation was, in my view, also reasonable. If necessary, applying the standard of review urged by the Applicant, I would find it correct in law.

[31]  The onus, albeit low, was on the mark’s owner to show use. The Applicant was the only party permitted to file evidence and that evidence could not be tested on cross-examination. It was incumbent on the Applicant to file clear evidence of use and it was reasonable for the Registrar to find the evidence was insufficient.

[32]  The evidence submitted showed a substantial deviation from the registered design. Since this was a design mark, the visual essence was critical to the Registrar’s analysis on deviation. As the Registrar noted, the Applicant appeared to be trying to convert a design mark into a word mark. The exhibits attached to Ms. Ward’s affidavit demonstrated substantial deviations from the design elements of the mark as registered.

[33]  The use of additional design material, such as the mountains that appear in some of the exhibits, would not constitute a deviation if the trade-mark actually used was not substantially different and preserved the dominant feature – the globe design replacing the letter “O”. The modified mark as it appears in the several different forms in the exhibits retained nothing from the registered design except for the words CAMPING WORLD. In most instances those words appear in line, not stacked. In the one instance in which they are stacked, they appear with the mountain design but not the globe design. It is not clear that they represent the same brand as the registered mark. The differences are such that they could confuse or deceive an unaware purchaser.

[34]  The Applicant relied on this Court’s decision in Alibi Roadhouse Inc v Grandma Lee’s International Holdings Ltd (1997), 76 CPR (3d) 327, 136 FTR 66 (FC), to support their assertion the modified mark is not substantially different. In Alibi, however, Justice Teitelbaum found the design features at issue were not dominant features of the mark (Alibi, supra at 340). In the case at bar, the hearing officer found the stylized globe was a dominant feature of the CAMPING WORLD mark. As discussed above, this decision was reasonable. As such, Alibi cannot help the Applicant in this regard.

[35]  The applicant also relied on a series of Trade-mark Opposition Board Cases for the same point. Two of these cases included marks registered without design elements but deemed used with the design element: Gowling Lafleur Henderson LLP v Yardley, 2015 TMOB 171; General Hydroponics Inc v Coop fédérée, 2009 CanLII 82136 (TMOB). There is a difference, however, between adding a design feature and removing a design feature.

[36]  On this point, I agree with the Respondent: the case at bar is similar to Osler, Hoskin & Harcourt v Sears Canada Inc (2001), 11 CPR (4th) 272 (TMOB). In Sears, the Trade-mark Opposition Board expunged a SHOPPER STOPPERS trade-mark because the mark was registered with an octagon-shaped “O”  in STOPPERS but used without this distinctive feature. Using a mark without a dominant feature does not constitute use of the mark.

VI.  Conclusion

[37]  I am satisfied that on the basis of the evidence, the Registrar’s decision to expunge the trade-mark was reasonable. I do not accept that the Registrar erred in law in failing to find the Applicant’s marks did not differ substantially from the mark as registered. Accordingly, the Registrar’s decision is upheld and the appeal is dismissed with costs.

JUDGMENT IN T-81-18

THIS COURT’S JUDGMENT is that:

1. The appeal from the decision of Andrew Bene, Hearing Officer, Trade-marks Opposition Board, for the Registrar of Trade-marks, rendered on November 15, 2017, expunging Canadian Trade-mark Registration No. TMA245.252 for CAMPING WORLD & DESIGN, is dismissed;

2. Costs are awarded to the Respondent in accordance with the Tariff.

“Richard G. Mosley”

FEDERAL COURT

SOLICITORS OF RECORD

DOCKET:	t-81-18
STYLE OF CAUSE:	CWI, INC. V THOMPSON DORFMAN SWEATMAN LLT and THE REGISTRAR OF TRADE-MARKS
PLACE OF HEARING:	OTTAWA, ONTARIO
DATE OF HEARING:	JULY 10, 2018
JUDGMENT AND REASONS:	mosley, J.
DATED:	september 26, 2018

APPEARANCES:

Sameha Omer	For The APPLICANT
Lynda K. Troup	For The RESPONDENTS

SOLICITORS OF RECORD:

Jensen & Company Ottawa, Ontario	For The APPLICANT
Thompson Dorfman Sweatman LLP Winnipeg, Manitoba	For The RESPONDENTS