In Pollock-Cameron Investments Corporation v. Canada Gold and Silver Exchange Ltd., the Registrar of Trademarks had to determine whether the trademark GOLD VANCOUVER remained in use in Canada in relation to printed and electronic publications and promotional items.
Canada Gold and Silver Exchange Ltd. (the "Owner") owns a registration for the trademark GOLD VANCOUVER in association with two broad categories of goods:
- Printed and electronic publications, namely newsletters, brochures, pamphlets, flyers, posters, signs, calendars, postcards, and directories, and
- Promotional items, namely t-shirts, stickers, bumper stickers, keychains, mouse pens, coffee mugs and fridge magnets.
Pollock-Cameron Investments Corporation (the "Requesting Party") initiated Section 45 summary expungement proceedings against the registration, and the Owner was required to show use of the trademark in Canada between March 20, 2022 and March 20, 2025.
The evidence filed by the Owner focused on explaining the nature of the Owner's business as providing appraisal services using written appraisal documents for valuable items like gold, jewelry, and coins. The appraisal documents were printed and sold to customers and bore the trademark GOLD VANCOUVER.
As the evidence was silent with respect to the use of the trademark for promotional items, the key question during the proceedings was whether the appraisal documents qualified as printed and electronic publications and in particular, as "pamphlets" or "flyers".
The Requesting Party argued that the Owner was trying to mischaracterize the written appraisals as being pamphlets or flyers. The Owner countered that the goods should be interpreted broadly, further noting that the purpose of Section 45 proceedings was to remove trademarks that have fallen into disuse and not to penalize registrants for variations in terminology.
The Registrar ultimately accepted a broad interpretation of the goods and conceded that the written appraisals qualified as pamphlets or flyers. However, it was noted that there was no evidence that such pamphlets or flyers were distributed in electronic form, concluding that the Owner's evidence did not show use of the registered trademark for electronic publications.
The registration was amended to retain only printed publications, namely pamphlets and flyers.
This decision serves as a reminder that trademark registrations covering a broad list of goods or services are vulnerable if not actively used across all categories. While the Registrar appears to be open to a flexible approach in interpreting the nature of goods, such interpretation is not without limits, such as when it comes to differences between printed and electronic publications.
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