SPIRIT BEAR Official Mark Goes Into Hibernation

On September 24, 2014, Justice Martineau of the Federal Court of Canada found that official marks for SPIRIT BEAR were unenforceable.

Official marks are a unique feature of Canadian trademark law. They may be generic or identical to pre-existing marks and they are not restricted to specific wares or services. Official marks are granted pursuant to subparagraph 9(1)(n)(iii) of the Trademarks Act, which provides:

9. (1) No person shall adopt in connection with a business, as a trademark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for, […]

(n) any badge, crest, emblem or mark […]

(iii) adopted and used by any public authority, in Canada as an official mark for wares or services,

in respect of which the Registrar has, at the request of Her Majesty or of the university or public authority, as the case may be, given public notice of its adoption and use.

Unlike registered trademarks, official marks are not subject to expungement proceedings. Rather, following FileNET and Piscitelli v. LCBO, the Court may declare an official mark unenforceable if the applicants cannot show adoption and use of the mark as of its date of publication.

The City of Terrace and the Kitasoo Band Council (“the Plaintiffs”) shared ownership of the SPIRIT BEAR official marks through a licensing agreement. In 2010, Urban Distilleries applied for a trademark for SPIRIT BEAR VODKA, but abandoned it in 2011 following an opposition by the Plaintiffs. However, Urban Distilleries continued to use unregistered trademarks – SPIRIT BEAR VODKA, SPIRIT BEAR GIN, and SPIRIT BEARK ESPRESSO INFUSED VODKA – in connection with its products.

The Plaintiffs sought to enforce their mark to enjoin use of the unregistered trademarks. Urban Distilleries raised a number of defences relating to limitations and the unenforceability of the official marks. The Plaintiffs moved for summary judgement.

Justice Martineau limited his reasons to what he concluded was the determinative issue: whether the Plaintiffs had shown adoption and use of the official marks for wares or services by the date of their publication by the Registrar of Trademarks.

Turning first to adoption, Justice Martineau concluded that the plaintiffs had satisfied this requirement, which only required that they state that they had adopted the mark.

With regards to use, Justice Martineau held that use of an official mark could be demonstrated by public display in which the mark is associated with a particular ware or service. Use is not established where a mark is not distinguished from surrounding text or where it is used in internal communications only.

In an attempt to establish use, the City pointed to a website with pictures of spirit bears as well as internal correspondence that used SPIRIT BEAR, alongside other bear names, in its footer.  Justice Martineau held that there was no public display of the mark and no use of the mark by the City with wares or services.

The Kitasoo Band Council was also unable to show use of the official mark. The importance of spirit bears in the Kitasoo culture was insufficient to demonstrate its use on wares or services. The Band Council also provided evidence of tours named after spirit bears that were operated by a third party. However, because no connection between the third party and the Band Council was established and because the tours were always named “Spirit Bear Tour” or “Spirit Bear Quest”, use of the SPIRIT BEAR mark by the Band Council was not established.

Justice Martineau therefore concluded that the official marks were unenforceable. Although the Plaintiffs can reapply for the official marks, they would have to rely on the new date of publication by the Registrar when bringing any future actions.

A copy of Justice Martineau’s Judgement and Reasons may be found here.

The decision has been appealed.