TRADE MARKS |
Expungement |
Boston Pizza International Inc. v. Boston Chicken Inc.
T-677-95
2001 FCT 1024, Nadon J.
17/9/01
34 pp.
Application pursuant to Trade-marks Act, s. 57(1) for expungement of trade-marks "Boston Chicken" and "Boston Chicken Design" in association with take-out restaurant and catering services on basis registration of trade-marks invalid as not distinctive; trade-marks not registrable as creating confusion with registered trade-mark "Boston Pizza" in association with pizza, spaghetti and restaurant services and franchising restaurant services; respondent not person entitled to secure registration of trade-mark as each trade-mark confusing with applicant's trade-marks which had been used extensively in Canada--Issues what protection, if any, should be afforded to applicant's trade-mark; whether respondent's trade-marks confusing with those of applicant; whether respondent entitled to secure registration of its trade-marks; whether respondent's trade-marks distinctive of respondent's services--Application dismissed--Applicant meeting requirements of Act, s. 50(1) in that applicant exercising control, through licensing agreement, of character or quality of wares and services associated with use of its trade-mark by franchisees--As to issue of confusion, although applicant's "Boston Pizza" mark not inherently distinctive, applicant has satisfied Court that through long use, mark has acquired distinctiveness in connection with chain of franchise restaurants which serve food prepared in "Boston style"--Consequently, mark worthy of protection--As to trade-mark "Boston Chicken", deserves little protection as not much evidence of use in Canada--As to length of time of use, factor favouring applicant's trade-mark--Considerable overlap between services provided by parties--Significant third-party use of word "Boston" within restaurant industry--However, at time of registration of respondent's trade-mark "Boston Chicken" and "Boston Chicken logo", no likelihood of confusion between applicant's trade-mark "Boston Pizza" and respondent's marks--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 50(1) (as am. by S.C. 1993, c. 15, s. 69; c. 44, s. 233, 236(1)(j)), 57(1).