Terrace (City) v. Urban Distilleries Inc.

Terrace (City) v. Urban Distilleries Inc.

The plaintiffs failed to adduce evidence that SPIRIT BEAR was used in association with wares or services by the respective publication dates (City: Jan 21, 2004; Kitasoo: Dec 20, 2006); internal materials and undifferentiated uses (letter footer, internal memos) and tour headlines/brochures did not demonstrate the requisite public display as an official mark, therefore official marks Nos. 915,508 and 918,006 are unenforceable and give rise to no rights or prohibitions under sections 9 or 11 of the Trade‑marks Act; counterclaim allowed and costs awarded to respondent.

Citation
2014 FC 833
Parties
Plaintiff (defendant by Counterclaim): City of Terrace; Plaintiff (defendant by Counterclaim): Kitasoo Band Council; Defendant (plaintiff by Counterclaim): Urban Distilleries Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
2 September 2014
Procedural Posture
Trade Marks Act Action (official Marks; Trade Mark Infringement Counterclaim) / Summary Judgment Motion (decided)
Outcome
Motion for summary judgment refused; counterclaim of Urban Distilleries Inc. allowed; official marks No. 915,508 and No. 918,006 declared unenforceable and give rise to no rights or obligations under ss.9 or 11 of the Trade‑marks Act; costs awarded to Urban Distilleries Inc.
Legal Topics
Official Marks, Adoption and Use, Likelihood of Confusion, Summary Judgment, Estoppel, Laches, Remedies (injunction, Destruction, Accounting)
Source Language
English
Intellectual Property Trade‑marks Law Administrative Law Civil Procedure Official Marks Adoption and Use Likelihood of Confusion Summary Judgment +3 more

Case Brief

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Parties

City of Terrace

Plaintiff (defendant by Counterclaim)

Kitasoo Band Council

Plaintiff (defendant by Counterclaim)

Urban Distilleries Inc.

Defendant (plaintiff by Counterclaim)

Procedural Posture

Trade Marks Act Action (official Marks; Trade Mark Infringement Counterclaim) / Summary Judgment Motion (decided)

Legal Issues

  1. 1 Whether plaintiffs met adoption and use requirement under s.9(1)(n)(iii) of the Trade‑marks Act as of publication dates
  2. 2 Whether plaintiffs qualify as public authorities for purposes of an official mark (left undecided)
  3. 3 Whether respondent's use of SPIRIT BEAR marks is likely to cause confusion under s.9(1) (left undecided)

Ratio Decidendi

The plaintiffs failed to adduce evidence that SPIRIT BEAR was used in association with wares or services by the respective publication dates (City: Jan 21, 2004; Kitasoo: Dec 20, 2006); internal materials and undifferentiated uses (letter footer, internal memos) and tour headlines/brochures did not demonstrate the requisite public display as an official mark, therefore official marks Nos. 915,508 and 918,006 are unenforceable and give rise to no rights or prohibitions under sections 9 or 11 of the Trade‑marks Act; counterclaim allowed and costs awarded to respondent.

Court Disposition

Motion for summary judgment refused; counterclaim of Urban Distilleries Inc. allowed; official marks No. 915,508 and No. 918,006 declared unenforceable and give rise to no rights or obligations under ss.9 or 11 of the Trade‑marks Act; costs awarded to Urban Distilleries Inc.

Orders

  • The declarations and orders sought by the City of Terrace and Kitasoo Band Council in their motion for summary judgment are refused.
  • The counterclaim made by Urban Distilleries Inc. is allowed.