Digests

Boston Pizza International Inc. v. Boston Market Corp.

T-1319-02

2003 FC 892, Tremblay-Lamer J.

17/7/03

19 pp.

Motion by plaintiffs for order counterclaim--Trade-marks Act, s. 57(1) giving Court exclusive jurisdiction to order any entry in register be struck out or amended--In counterclaim, Boston Market Canada Company (BMC) seeking to expunge Boston Pizza trade-marks on ground marks not distinctive of Boston Pizza International Inc. (BPI), pursuant to Act, s. 18(1)(b)--BMC also seek to expunge trade-marks "Boston Pizza", "Boston's The Gourmet Pizza" and "Boston Pizza Quick Express" on ground marks not registrable as they were, and continue to be, clearly descriptive of wares with which used, pursuant to Act, s. 18(1)(a), 12(1)(b)--Federal Court Rules, r. 216, empowers Court to grant summary judgment when no genuine issue for trial with respect to claim or defence--General principles to apply in considering motion for summary judgment found in Granville Shipping Co. v. Pegasus Lines Ltd., [1996] 2 F.C. 853 (T.D.)--BPI first submits counterclaim should be dismissed as Boston Pizza trade-marks distinctive--Distinctiveness deals with whether or not mark, when used in association with wares, distinguishing source of wares for consumer--Whether or not ordinary consumer in market for pizza products would likely be deceived as to source of product--Distinctiveness requiring mark and product or service be associated; that owner uses association between mark and product or service and selling product or service; and that this association enables owner of mark to distinguish product from that of others--Relevant date for determining whether trade-mark distinctive date in which challenge was made, in case at bar, October 7, 2002--Boston Pizza (BP) & Design trade-marks (TMA 181, 249 and TMA 171, 429) inherently distinctive as unique-- Neither trade-mark using word "Boston"--BMC's challenge to validity of these trade-marks should be dismissed--BMC's challenge to validity of trade-marks "BP's Lounge", "BP's Bistro" should be dismissed as neither using word "Boston" as part of its name--Regarding remaining trade-marks, "Boston Pizza", "Boston's The Gourmet Pizza" and "Boston Pizza Quick Express", genuine issue as to whether third party use of trade-marks including word "Boston" has rendered trade-marks non-distinctive--Unable to determine, based on evidence, whether third party use by restaurants in Canada of trade-marks with word "Boston" has rendered BPI's Boston Pizza trade-marks non-distinctive--Genuine issue with respect to distinctiveness of "Boston Pizza", "Boston's The Gourmet Pizza" and "Boston Pizza Quick Express" trade-marks, which needs to be addressed at trial--BPI further submits counterclaim should be dismissed as trade-marks "Boston Pizza", "Boston's The Gourmet Pizza" and "Boston Pizza Quick Express" not clearly descriptive of wares or services in association with which used--In order for mark to be clearly descriptive, pursuant to s. 12(1)(b), mark must be more than merely suggestive of character or quality of wares or services in association with which mark used or proposed to be used--Descriptive character must go to material composition of goods or services or refer to obvious intrinsic quality of goods or services which subject of trade mark, such as feature, trait or characteristic belonging to product in itself--Test for determining whether trade-mark infringing s. 12(1)(b) immediate or first impression formed--"Clearly" in s. 12(1)(b) not synonymous with accurately, but rather means easy to understand, self-evident, or plain--Impression must also be assessed from perspective of ordinary everyday purchaser or user of wares or services--BMC submitted evidence of existence of different styles of pizza, named after city in which pizza developed, such as New York pizza, Chicago Pizza, and Boston pizza--BMC's evidence raising question of whether there exists style of pizza called Boston pizza, and as such, whether ordinary purchaser of BPI's wares and services would find trade-marks at issue clearly descriptive--This genuine issue needs to be addressed at trial--Accordingly, inappropriate for Court to grant motion for summary judgment on issue of descriptiveness of trade-marks "Boston Pizza", "Boston's The Gourmet Pizza" and "Boston Pizza Quick Express"--In addition, BPI submits counterclaim should be dismissed on ground BMC have acquiesced to use of Boston Pizza trade-marks--Defence of acquiescence may be successful if expunging party (plaintiff in case at bar) consents to use and registration of trade-mark or leads defendant to believe defendant's use of mark proper to defendant's prejudice--Regarding doctrine of acquiescence and laches, test whether owner of legal right has done something beyond delay to encourage wrongdoer to believe owner of legal right will not enforce his legal rights, and wrongdoer must have acted to his prejudice in this belief--Finding of acquiescence must be based on particular circumstances as to whether BPI encouraged, based on actions of BMC and predecessor, to believe BMC would not contest validity of Boston Pizza trade-marks and whether BPI relied on delay to its detriment--This requires consideration of credibility and weighing of all evidence--Such finding can only be made at trial on full evidence and not on motion for summary judgment--In summary, plaintiffs have raised some valid grounds with regard to counterclaim--No genuine issue for trial regarding validity of BP's Lounge, BP's Bistro and BP & Design trade-marks--However, genuine issue for trial regarding validity of "Boston Pizza", "Boston's The Gourmet Pizza" and "Boston Pizza Quick Express" trade-marks--As such, counterclaim allowed to proceed but limited to expungement of these trade-marks--Plaintiffs' motion granted in part--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 12(1), 18(1), 57(1)--Federal Court Rules, 1998, SOR/98-106, r. 216.