In Ottawa Athletic Club Inc (Ottawa Athletic Club) v Athletic Club Group Inc, 2014 FC 672, the Federal Court of Canada (Court) struck the trade-mark THE ATHLETIC CLUB & DESIGN (the Athletic Club Trade-mark) from the register because the mark was not registrable at the date of registration, as the mark was clearly descriptive of the wares and services in association with which it is used and lacked distinctiveness. The Court also ruled that the Athletic Club Trade-mark was invalid because it violated a prohibition on “athletic club” under section 10 of the Trade-marks Act, and issued a permanent injunction on the use of the Athletic Club Trade-mark or its common-law equivalent.
Since 1976, the Ottawa Athletic Club Inc (OAC) operated a fitness facility in Ottawa providing athletic and fitness services under the mark “Ottawa Athletic Club”. OAC applied for a trade-mark for OAC & DESIGN (shown below):
OAC’s trade-mark application for OAC & DESIGN was opposed by The Athletic Club Group Inc. (Athletic Club). OAC initiated expungement proceedings seeking to invalidate the Athletic Club Trade-mark, and seeking a permanent injunction.
In 1997, Athletic Club opened a fitness facility in London, Ontario, and subsequently opened facilities throughout Ontario. Athletic Club opened two fitness facilities in Ottawa in November 2010, and February 2011. In 2003, a director and shareholder of Athletic Club applied to register the Athletic Club Trade-mark:
In 2005, the Athletic Club Trade-mark was registered with the words “Athletic Club” disclaimed.
The Court found that the Athletic Club Trade-mark was clearly descriptive of the wares and services with which it was used. The Court also found that the dominant feature of the mark was the disclaimed words “athletic club”, and found that the design elements did not have any distinctiveness. Given significant generic use by third parties of “the athletic club” in the fitness industry, the Court concluded that the Athletic Club had not established acquired distinctiveness in the Athletic Club Trade-mark, and noted a lack of survey evidence or consumer affidavits to support distinctiveness in the eyes of the consumer, and lack of evidence that the Athletic Club policed the rights to the Athletic Club Trade-mark.
In addressing whether the Athletic Club Trade-mark was prohibited under section 10 of the Trade-marks Act, the Court found that “athletic club” had, by ordinary and bona fide commercial usage, become recognized in Canada as a generic term designating facilities similar to those operated by both parties, and that the Athletic Club Trademark was likely to be mistaken for “athletic club”, as “athletic club” dominated the Athletic Club Trademark.
Athletic Club has filed a Notice of Appeal and ETIPS® will report on any new developments.
Summary by: Lauren Lodenquai
OAC’s trade-mark application for OAC & DESIGN was opposed by The Athletic Club Group Inc. (Athletic Club). OAC initiated expungement proceedings seeking to invalidate the Athletic Club Trade-mark, and seeking a permanent injunction.
In 1997, Athletic Club opened a fitness facility in London, Ontario, and subsequently opened facilities throughout Ontario. Athletic Club opened two fitness facilities in Ottawa in November 2010, and February 2011. In 2003, a director and shareholder of Athletic Club applied to register the Athletic Club Trade-mark:
In 2005, the Athletic Club Trade-mark was registered with the words “Athletic Club” disclaimed.
The Court found that the Athletic Club Trade-mark was clearly descriptive of the wares and services with which it was used. The Court also found that the dominant feature of the mark was the disclaimed words “athletic club”, and found that the design elements did not have any distinctiveness. Given significant generic use by third parties of “the athletic club” in the fitness industry, the Court concluded that the Athletic Club had not established acquired distinctiveness in the Athletic Club Trade-mark, and noted a lack of survey evidence or consumer affidavits to support distinctiveness in the eyes of the consumer, and lack of evidence that the Athletic Club policed the rights to the Athletic Club Trade-mark.
In addressing whether the Athletic Club Trade-mark was prohibited under section 10 of the Trade-marks Act, the Court found that “athletic club” had, by ordinary and bona fide commercial usage, become recognized in Canada as a generic term designating facilities similar to those operated by both parties, and that the Athletic Club Trademark was likely to be mistaken for “athletic club”, as “athletic club” dominated the Athletic Club Trademark.
Athletic Club has filed a Notice of Appeal and ETIPS® will report on any new developments.
Summary by: Lauren Lodenquai
E-TIPS® ISSUE
14 08 13
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