Unitel Communications Inc. v. Bell Canada
T-718-91
Gibson J.
24/4/95
90 pp.
Application for order, pursuant to Act, s. 57(1), to expunge eight trade marks relating to telecommunication services ("Calling Card" and "Carte d'appel" and "remaining marks") -- Applicant traditionally providing telegraph and limited telecommunications services now entering long distance telephone service -- Respondent largest member of unregulated, unincorporated association (Stentor) of major telecommunication service companies -- To satisfy s. 57(1) "person interested" threshold applicant need show neither "great and serious damage" nor be engaged in competition with owner of mark, but must be in same trade: applicant meeting threshold -- Evidence as to U.S. trade mark register or U.S. use of similar or identical terms as marks at issue irrelevant -- "Calling Card" and "Carte d'appel" marks registered pursuant to Stentor's declared intention to use -- In capacity of cooperative organization for members, neither Stentor nor its predecessors ever directly providing telecommunication services, although most Stentor members subsequently registered as registered users of marks -- Fraud or intent to deceive not necessary elements where application for registration and declaration of use, both fundamental to trade mark registration, containing material false statements-"Calling Card" and "Carte d'appel" marks void ab initio -- Descriptive analysis based on first impression of relevant "universe": Court relying on Ciba-Geigy Canada Ltd. v. Apotex Inc., [1992] 3 S.C.R. 120 in finding relevant universe for telecommunication services those using services as opposed to those advising on or purchasing services on behalf of employers -- Applicant's survey directed to only small and unrepresentative portion of relevant universe; survey's probative value slight as universe not correctly identified -- Respondent's survey evidence inadmissible due to departures from approved methods and procedures and lack of geographical representation of sample used -- Although telecommunication industry's dual market i.e. highly knowledgeable technical élite and broader less knowledgeable element may confer upon marks dual meaning, absence of admissible survey evidence precluding such finding -- While those intimately involved in telecommunication industry may consider trade marks clearly descriptive, totality of evidence not demonstrating relevant universe as a whole would have considered on first impression marks descriptive of material composition or intrinsic quality of services -- Although "Calling Card" and "Carte d'appel" marks having well-established meaning, amenable to secondary meaning, coming very close to description of service, those marks not of themselves description of service -- Evidence not establishing general user-public forming opinion marks at issue same as name of service in association with which they are registered -- Evidence not establishing marks at issue generic in collective minds of relevant universe at date of registration -- Respondent lax in management and policing of its trade mark rights: extensive use of marks by entities not registered as registered users and failure by respondent to register certain licensees -- Extensive agreements not establishing implied licence between respondent and unregistered users of marks as respondent not in position to direct or exercise any control over quality of services rendered by unregistered users -- Unauthorized use of marks at issue of such extent by time proceedings commenced as to render marks not distinctive of respondent's services and those entitled to use marks under registered user arrangements -- At time of proceeding marks at issue not distinctive of respondent's services in relation to which each was registered -- Registration of marks invalid-Application allowed -- Trade-marks Act, R.S.C., 1985, c. T-13, s. 57(1).