Federal Court Of Canada Dismisses Appeals Concerning Use Of Retailer’s Trademark On Goods Manufactured By Third Party

On January 4, 2023, the Federal Court of Canada (the Court) issued its decision in GNR Travel Centre Ltd v CWI, Inc, 2023 FC 2, dismissing two appeals in consolidated proceedings and affirming the Trademarks Opposition Board’s (the Board) decision.  The Court confirmed that a retailer’s trademark permanently affixed to goods manufactured by a third party constitutes “use” of the retailer’s trademark on the goods within the meaning of the Trademarks Act (the Act).

GNR applied to register the trademark GNR CAMPING WORLD & Design (the Mark) in association with goods (recreational vehicles) and related services.  CWI Inc (CWI) opposed the application.  The Board found that GNR had established that it had used the Mark in association with the goods, but failed to establish that it used the Mark in association with the services.  Thus, the Board found that CWI’s opposition succeeded with respect to the services but not with respect to the goods.  The Board also rejected the confusion-based ground of opposition, finding that GNR had met its burden to show that there was no likelihood of confusion between the Mark and CWI’s CAMPING WORLD trademarks.  Both parties appealed.

On appeal, with respect to whether the Board erred in granting the application with respect to the goods, CWI argued that when GNR placed its Mark on goods that it sold that were manufactured by another and with the manufacturer’s trademark attached, the placing of GNR’s Mark on it by affixing a sticker to it did not constitute use of the Mark in association with the goods.  The Court disagreed, stating that CWI’s interpretation of the Act, namely that only an original manufacturer of a good could show use of a trademark affixed to those goods and no other party in the supply chain, was narrow, and that there was nothing in the Act to prohibit placing more than one trademark on a good.

On the issue of whether the Board erred in refusing the application with respect to the services, GNR submitted that the Board misunderstood or misapplied the burden of proof under the Act, and that CWI did not meet its evidentiary burden.  The Court found that the Board did not err in rejecting the application for the Mark in relation to the services since GNR had failed to provide sufficient evidence to establish use of the Mark in association with the services as of the claimed date of first use. The Court found that simply stating that GNR was providing services without stating how the services were associated with the Mark was insufficient to meet its burden of proof.

Lastly, CWI submitted that the Board erred in its assessment and weighing of the factors under the confusion analysis.  However, the Court held that the Board did not commit any palpable and overriding errors in its confusion analysis.

Summary By: Sharan Johal