Canadian Federal Court of Appeal Expunges BOSTON CHICKEN Trade-mark for Lack of Distinctiveness

The Canadian Federal Court of Appeal recently held that the mark BOSTON CHICKEN lacked distinctiveness and therefore should be expunged from the trade-mark register. Boston Pizza International Inc. ("BP") filed an application to expunge Boston Chicken's ("BC") registration for BOSTON CHICKEN for use in association with take-out restaurant and catering services. The main grounds for the application included: (1) the BOSTON CHICKEN mark was not distinctive of BC's services, contrary to subsection 18(1)(b) of the Trade-marks Act; and (2) the mark was not registrable at the date of registration because it was confusing with BP's prior registration for BOSTON PIZZA. Although the trial judge found that the mark BOSTON CHICKEN lacked distinctiveness, he did not expunge the mark because he found no likelihood of confusion between the marks BOSTON CHICKEN and BOSTON PIZZA. As a result, BP's application was dismissed. On appeal, the appellate court reversed the trial judge's finding and concluded that the mark BOSTON CHICKEN should be expunged for lack of distinctiveness. According to the Court of Appeal, a trade-mark is distinctive if: (1) it "actually distinguishes" the wares or services through actual use, or, (2) it is "adapted" to distinguish the wares or services (i.e. the mark is inherently distinctive). In this case, there was very little evidence of use of the BOSTON CHICKEN mark in Canada. Therefore, the Court of Appeal found that the BOSTON CHICKEN mark had not acquired distinctiveness through actual use in Canada. The Court rejected BC's argument that acquired distinctiveness could arise from use of the mark outside of Canada. In addition, in light of the fact that the trial judge had found BOSTON CHICKEN to lack inherent distinctiveness, the Court of Appeal concluded that the mark was not adapted to distinguish the services. This case is important for several reasons. First, it offers a useful analysis of the issue of distinctiveness as a ground of invalidation. It also confirms that acquired distinctiveness must arise from use of the mark in Canada. The result is that trade-marks which are registered in Canada based solely on use and registration abroad (i.e. no use in Canada) may well lose their Canadian registrations in expungement proceedings, if they cannot demonstrate inherent distinctiveness in the marks. For a more detailed analysis of the case, please see Hung Nguyen's article, "The Federal Court of Appeal Ruled on Issue of Distinctiveness in Boston Pizza International Inc. v. Boston Chicken Inc.", 2003. For copy of the decision, visit: http://decisions.fct-cf.gc.ca/fct/2003/2003fca120.html Summary by: Hung Nguyen