Mark need not be in use throughout the whole of Canada, says court

In Kamsut Inc v Jaymei Enterprises Inc ((2009) FC 627, June 20 2009), the Federal Court of Canada has dismissed an application for expungement brought by Kamsut Inc, a California company specializing in 'romantic giftware'. 
Kamsut produces skin and personal care items, including chocolate body paints and chocolate-flavoured body oils and lotion, under the trademark KAMA SUTRA. Kamsut sought to invalidate and expunge Jaymei Enterprises Inc's registration for the trademark KAMA SUTRA for chocolates on the basis of Kamsut’s alleged earlier Canadian use date. Kamsut also alleged that Jaymei’s KAMA SUTRA mark was not distinctive of its goods. Kamsut failed on both counts.
Kamsut had retained documents for only seven years and, therefore, could not provide factual proof of sales in Canada preceding Jaymei’s first Canadian use. The court also found that Kamsut's chocolate-flavoured body oil, for example, was not an edible product in the same way as Jaymei’s chocolates. Kamsut offered no evidence that the channels of trade were the same, nor any evidence of actual confusion. Thus, the court concluded that there was no likelihood of confusion between the parties’ goods and Kamsut failed on its claim of prior use.
With regard to the issue of non-distinctiveness, the court found that Jaymei’s market was local (Vancouver) and that its KAMA SUTRA mark had acquired local distinctiveness in respect of chocolate through use and, in particular, through the very nature of the type of business that Jaymei conducted in the Vancouver area - that is, direct sales to customers. Furthermore, the court stated that it is well accepted in trademark law that in order to be distinctive, it is not necessary for a mark to distinguish the goods throughout Canada. The mark will remain distinctive as long as:

  • people within a particular area of Canada recognize the mark as representing the owner of the goods; and
  • another party does not negate distinctiveness by competitive use.
Canada is a geographically large country. This case is a good reminder that in order to have a sustainable trademark registration, the mark need not be in use throughout the whole of the country. The case also highlights the need for a trademark owner to keep factual records of its first use in the event that it is called upon to assert such date.

Toni Polson Ashton, Sim & McBurney/Sim Lowman Ashton & McKay LLP, Toronto

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