Exercise Caution When Choosing a Trademark – MBM Successfully Expunges The Athletic Club & Design Trademark and Prohibits its Use in Canada.

For Immediate Release, July 11, 2014

On July 9, 2014, Mr. Justice Russell of the Federal Court released his decision in Ottawa Athletic Club Inc. v. The Athletic Club Group Inc. (2014 FC 672).

In a proceeding commenced by Notice of Application (a matter where there is no viva voce evidence but rather affidavits and cross-examination occurring outside the Court), Mr. Justice Russell expunged The Athletic Club & Design trademark – registered February 22, 2005 which claimed use from 1997 – and granted a permanent prohibition (injunction) to prevent the use of the trademark and its common law equivalent.

The decision is 150 pages and provides a detailed synopsis of the law and evidence necessary for a determination of:

1. when a composite trademark ( a trademark incorporating words and a design) will be found to be clearly descriptive of the character of the wares/services in association with which it is used;
2. whether a trademark is distinctive;
3. when any trademark has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind of any wares/services;
4. when a trademark is the name in any language of any wares/services in connection with which it is used;
5. the effect of a disclaimer on questions relating to clearly descriptive, distinctiveness, and bona fide commercial usage;
6. whether the 5 year limitation period to assert the ground of a confusing trademark in an expungement proceeding should be waived through imputed knowledge through an adverse interest that the person who adopted the registered trademark did so with knowledge of the previously used trademark; and
7. when an affiant must disclose documents in connection with a cross-examination.

In obtaining the judgement MBM relied upon a variety of evidentiary sources including hundreds of newspaper articles, legislation and judicial decision citing the term ‘Athletic Club’, confirmation of third party use of the term ‘Athletic Club’, internet searches, corporate searches, trademark searches, cross examination, etc…

The decision will likely be a leading resource for trademark practitioners and those wanting to understand evidentiary requirements and the law in Canada relating to the subjects described above.

If you would like to learn more about the decision please do not hesitate to contact the lead lawyer on the case, Scott Miller or any other member of the MBM litigation team who assisted including Jonathan Roch or Jahangir Valiani.

Scott Miller
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T: 613.801.1099

Jonathan Roch
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T: 613.801.1059

Jahangir Valiani
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T: 613.801.0451