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Trademarks - Distinctiveness. Sea Tow Services International, Inc. v. C-Tow Marine Assistance Ltd.
In Sea Tow Services International, Inc. v. C-Tow Marine Assistance Ltd. (Fed CA, 2026) the Federal Court of Appeal dismissed trademark appeals, these brought against "two decisions of the Federal Court, one decision addressing the substance of a trademark dispute .... and a second decision awarding costs in light of the Trademark Decision ....".
Here the court considered the trademark concept of 'distinctiveness' [TA s.18(1)(b) 'When registration invalid']:VII. Did the Federal Court err in invalidating the registration of the Sea Tow Marks for non-distinctiveness under paragraph 18(1)(b) of the Act?
A. What is the correct test in Canada in an expungement proceeding for invalidating a registered trademark as non-distinctive?
[70] Sea Tow submits that there are different tests for establishing the distinctiveness of a trademark depending on whether the proceeding in question involves an opposition to registration under paragraph 38(2)(d) of the Act or an application for expungement under subsection 57(1) and paragraph 18(1)(b) of the Act. Sea Tow argues that, in the present case, the Federal Court incorrectly applied the less stringent test for distinctiveness in opposition proceedings, as set out in Bojangles, despite the fact that it was tasked with adjudicating an application for expungement.
[71] Sea Tow asserts that the correct test for non-distinctiveness in an expungement proceeding is that formulated in paragraph 99 of A&W Food Services of Canada Inc. v. McDonald’s Restaurants of Canada Ltd., 2005 FC 406: is the trademark at issue "“so devoid of distinctiveness that it fails to distinguish”" the registrant’s products or services from those of others: see also Miranda Aluminum Inc. v. Miranda Windows & Doors Inc., 2010 FCA 104 at para. 29 (Miranda), where this Court affirmed the Federal Court’s finding that a third party’s use of a confusing name "“had not destroyed [the trademark’s] distinctiveness”".
[72] I do not agree with Sea Tow that different tests for distinctiveness apply in opposition and expungement proceedings. I find that the sole test for establishing whether or not a trademark is distinctive for purposes of the Act is the test formulated at paragraph 34 in Bojangles:A mark must be known to some extent at least to negate the established distinctiveness of another mark, and its reputation in Canada should be substantial, significant or sufficient. [73] It is the burden of establishing distinctiveness/non-distinctiveness that shifts depending on the proceeding.
[74] Subsection 57(1) and paragraph 18(1)(b) of the Act provide that expungement proceedings may be brought if a registered trademark was not distinctive at the date of application for expungement. Under paragraph 38(2)(d), an application for the registration of a trademark may be opposed on the basis that the mark is not distinctive. Paragraphs 18(1)(d) and 38(2)(d) both embody the fundamental role of a trademark in distinguishing the source of a particular product or service from competing products or services: Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65 at para. 39.
[75] The term "“distinctive”" in relation to a trademark is set out in section 2 of the Act as any mark "“that actually distinguishes the goods or services in association with which it is used by its owner from the goods or services of others or that is adapted so to distinguish them”". Section 2 does not define the word "“distinctive”" differently depending on type of proceeding. The inquiry into distinctiveness in opposition and expungement proceedings turns on the extent to which a mark is known in the marketplace and whether that knowledge suffices to negate the distinctiveness of another mark: Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2019 FCA 10 at para. 17 (Sadhu Singh Trust FCA), aff’g Sadhu Singh Hamdard Trust v. Navsun Holdings Ltd., 2018 FC 42 (Sadhu Singh Trust FC), leave to appeal to SCC refused, 38550 (11 July 2019). In my view, it follows that there is one test to determine whether, at the relevant date, a trademark is distinctive.
[76] The decision in Bojangles was made in an opposition proceeding but, in its analysis of the test for distinctiveness, the Federal Court relied on prior jurisprudence in expungement proceedings (see, e.g., Motel 6, Inc. v. No. 6 Motel Limited and John Van Edmond Beachcroft Hawthorne, [1982] 1 F.C. 638 (FCTD), 1981 CanLII 4710) and in opposition proceedings (see, e.g., E. & J. Gallo Winery v. Andres Wines Ltd., [1976] 2 F.C. 3 (FCA), 1975 CanLII 2322): Bojangles at paras. 8, 29–32. In Sadhu Singh Trust FC (at para. 30), the Federal Court rejected the respondent’s argument that Miranda had altered the Bojangles test (acknowledged by this Court at paragraph 5 of Sadhu Singh Trust FCA).
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