BOSTON CHICKEN plucked from registry

In Boston Pizza International Inc v Boston Chicken Inc, the Federal Court of Appeal has overruled a decision to maintain the registration of the trademark BOSTON CHICKEN and has ordered that the registration be cancelled.

The Court of Appeal noted that the trial judge had found that the BOSTON CHICKEN mark lacked inherent distinctiveness. Consequently, it could be valid only if there was evidence that it had acquired distinctiveness through use. Although there had been general statements about spillover advertising into Canada from the United States and use of the mark at a local event after the filing of the expungement application, the court considered this evidence to be "very scant". The Court of Appeal considered the evidence as to spillover advertising to be little more than an assertion that Boston Chicken did some advertising on US television stations whose coverage area extended into Canada. There was no evidence as to the nature or amount of such advertising, nor any evidence as to its effect.

As a result, the Court of Appeal held that the BOSTON CHICKEN mark does not distinguish Boston Chicken's services from those of other traders (eg, Boston Pizza), and is not adapted to do so. Thus, the registration was invalid because the mark lacks distinctiveness. In reaching this conclusion, the court expressly rejected foreign use of a mark as being the basis to acquire distinctiveness in Canada.

As a cautionary note, the Court of Appeal stated:

"The result is that foreign registered trademarks which are not inherently distinctive may well see their registration in Canada at risk in expungement proceedings unless they can show some degree of acquired distinctiveness through use in Canada."

Mark Evans, Smart & Biggar/Fetherstonhaugh & Co, Ottawa