Duelling dentists: to invalidate a trade-mark you need evidence

Ocean Park is a neighbourhood in South Surrey, British Columbia. Dr. Cragg’s business had used the trade-name “Ocean Park Dental Centre” in Ocean Park since 1974.

In March 2012, Dr. Lum opened “Ocean Park Dental Group” less than one block from Dr. Cragg’s clinic. A dispute ensued between the parties and a few months later, Dr. Lum changed his tradename to “Ocean Park Village Dental”. In October 2012, Dr. Cragg filed a trademark application for “OCEAN PARK” in relation to dental services, and Dr. Lum later changed the name of clinic to “Village Dental” in order to avoid any further conflict.  Dr. Lum advertised his practice as “Village Dental in Ocean Park”.

The OCEAN PARK mark issued in November 2013. In February 2014, Dr. Cragg filed a trade-mark infringement suit in British Columbia against Dr. Lum. In response, Dr. Lum commenced a summary trial in the Federal Court of Canada seeking to expunge the trade-mark on the basis that it was clearly descriptive of a place of origin contrary to paragraphs 18(1)(a) and was not distinctive contrary to paragraph 18(1)(b) of the Trade-Marks Act.

18(1)(a) Clearly Descriptive of a Place of Origin

 To show OCEAN PARK was clearly descriptive of the place of origin, Dr. Lum had to meet the two part test from Great Lakes Hotels v Noshery Ltd (1968), 56 CPR 165 (Ex Ct), that OCEAN PARK

  1. indicates a location; and
  2. is indigenous to the services associated with the mark.

As there was no dispute that “Ocean Park” is the name of the location where both clinics operate, the issue turned on whether a reasonable person would equate Ocean Park with dental services, or as framed by Dr. Cragg’s lawyer:

“[i]f someone were to say ‘I was in Ocean Park today,’ a reasonable person would naturally say to herself ‘he must have been there to get his teeth cleaned.’”

As the Plaintiff had adduced no evidence that a reasonable person, upon hearing “Ocean Park” would believe someone was getting his or her teeth cleaned, Justice Campbell rejected Dr. Lum’s challenge under s. 18(1)(a).

18(1)(b) – Not Distinctive

Dr. Lum argued that since Ocean Park is a geographical term, it could not be distinctive of Dr. Cragg’s services. However, as Dr. Lum had adduced no evidence of the lack of distinctiveness of the trade-mark, his attempt to expunge the trade-mark under s. 18(1)(b) also failed.

A copy of Justice Campbell’s Order and Reasons may be found here.