Sim & McBurney v. Parry

Sim & McBurney v. Parry

The Registrar correctly declined to reassess distinctiveness in a s.45 proceeding, but it was unreasonable to construe the registered wares phrase "editorial/advertising inserts into publications and periodicals" to include an ordinary column of editorial content in a magazine; Respondent failed to establish use of the Mark in association with the registered wares as properly understood, entitling Applicant to expungement of registration TMA487,486.

Citation
2010 FC 118
Parties
Applicant: SIM & McBURNEY; Respondent: MALCOLM PARRY
Court
Federal Court
Jurisdiction
Canada
Judgment Date
4 February 2010
Procedural Posture
Appeal Under S.56 of the Trade Marks Act / Final Judgment on Appeal From Registrar Decision Under S.45
Outcome
Appeal allowed; registration TMA487,486 expunged.
Legal Topics
Use and Non Use of Trade Mark, Section 45 Expungement Proceedings, Interpretation of Registered Wares, Standard of Review
Source Language
English
Intellectual Property Trade Mark Law Administrative Law Use and Non Use of Trade Mark Section 45 Expungement Proceedings Interpretation of Registered Wares Standard of Review

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Parties

SIM & McBURNEY

Applicant

MALCOLM PARRY

Respondent

Procedural Posture

Appeal Under S.56 of the Trade Marks Act / Final Judgment on Appeal From Registrar Decision Under S.45

Legal Issues

  1. 1 Whether the Registrar should consider distinctiveness/validity in s.45 proceedings
  2. 2 Whether use of the Mark as a magazine column constitutes use in association with the registered wares "editorial/advertising inserts into publications and periodicals"
  3. 3 Whether use through a publisher required proof of a licence under s.50(1) to establish use for s.45 purposes

Ratio Decidendi

The Registrar correctly declined to reassess distinctiveness in a s.45 proceeding, but it was unreasonable to construe the registered wares phrase "editorial/advertising inserts into publications and periodicals" to include an ordinary column of editorial content in a magazine; Respondent failed to establish use of the Mark in association with the registered wares as properly understood, entitling Applicant to expungement of registration TMA487,486.

Court Disposition

Appeal allowed; registration TMA487,486 expunged.

Orders

  • The appeal is granted with costs to the Applicant.
  • Trade-mark registration No. TMA487,486 is to be expunged in compliance with the provisions of subsections 45(3) and (5) of the Trade-marks Act.