Use for services other than ticket sales fails to save CHEAP TICKETS

In Emall.ca Inc v Cheap Tickets and Travel Inc, the Federal Court of Canada has ordered the expungement of a CHEAP TICKETS word mark and a CHEAP TICKETS AND TRAVEL device mark. Both marks covered the following services: "Travel agency; travel information; travel tours and charters; ticket agency services in the field of transportation, travel, theatre and sports events."

The applicant for expungement, Emall.ca Inc, argued that the marks, which were owned by Cheap Tickets and Travel Inc, were clearly descriptive and/or non-distinctive of the services in respect of which they were registered.

On the basis of first impression, bolstered by factual admissions obtained during cross-examination of the mark owner, the court found the marks to be clearly descriptive and therefore ordered them to be struck from the Trademark Register.

The trademark registrations were not 'saved' by the fact that certain of the services performed would not involve issuing tickets. The court took a broad view, stating that the trademarks gave the impression that the mark owner "provides access to travel services at normally advantageous rates".

In some respects the finding is not surprising. Courts, with the public in mind, have strived not to have removed from the vocabulary, words that are commonly descriptive of goods and services. To achieve this objective, they have expounded the following test:

"to be clearly descriptive of services or goods, a trademark must be 'easy to understand, sufficient or plain' rather than necessarily accurate."

It is the immediate impression conveyed that usually carries the day.

The case shows that descriptiveness is very much fact-based. While at first glance one could envision arguments as to why the words 'cheap tickets' may not be clearly descriptive, the facts disclosed overcame such arguments.

Toni Polson Ashton, Sim & McBurney, Toronto