CEG License Inc. v. Joey Tomato’s (Canada) Inc.

CEG License Inc. v. Joey Tomato’s (Canada) Inc.

The opponent failed to meet its initial evidentiary burden to establish a substantial or area‑specific reputation in LOCAL 510 or LOCAL 522 as of the material date; the new evidence was insufficient, unreliable or inconclusive (short period of use, commingled sales, lack of clear linkage, inadequate proof of publication/circulation and signage), and therefore the respondent's mark LOCAL remained distinctive and registrable; appeal dismissed.

Citation
2012 FC 1541
Parties
Applicant/opponent in Opposition: CEG License Inc.; Respondent/applicant for Registration: Joey Tomato's (Canada) Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
21 December 2012
Procedural Posture
Trade Marks Appeal Under S.56 of the Trade‑marks Act / Judgment on Appeal at Federal Court
Outcome
Appeal dismissed
Legal Topics
Distinctiveness, Reputation of Mark, Well‑known Marks, Burden of Proof, Standard of Review
Source Language
English
Trade‑marks Intellectual Property Administrative Law Distinctiveness Reputation of Mark Well‑known Marks Burden of Proof Standard of Review

Case Brief

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Parties

CEG License Inc.

Applicant/opponent in Opposition

Joey Tomato's (Canada) Inc.

Respondent/applicant for Registration

Procedural Posture

Trade Marks Appeal Under S.56 of the Trade‑marks Act / Judgment on Appeal at Federal Court

Legal Issues

  1. 1 Whether the opponent met its initial evidentiary burden to establish that the trade names LOCAL 510 and LOCAL 522 were well known in Calgary as of September 21, 2009
  2. 2 Whether the opponent established a reputation in Canada or a local reputation sufficient to negate distinctiveness of the mark LOCAL
  3. 3 If not, whether the respondent's mark LOCAL is distinctive despite prior use of LOCAL 510 and LOCAL 522

Ratio Decidendi

The opponent failed to meet its initial evidentiary burden to establish a substantial or area‑specific reputation in LOCAL 510 or LOCAL 522 as of the material date; the new evidence was insufficient, unreliable or inconclusive (short period of use, commingled sales, lack of clear linkage, inadequate proof of publication/circulation and signage), and therefore the respondent's mark LOCAL remained distinctive and registrable; appeal dismissed.

Court Disposition

Appeal dismissed

Orders

  • Appeal dismissed
  • Costs awarded to respondent