In December 2004, Cheap Tickets Travel Inc. ("CTT") initiated a suit alleging that Emall.ca Inc. and Emall.ca Inc. carrying on business as CheapTickets.ca (collectively, "Emall.ca") was infringing two of CTT's registered trademarks: (i) "Cheap Tickets"; and (ii) the combination of "Cheap Tickets" with a design. Emall.ca responded by commencing a proceeding for the expungement of both trademarks based on the following claims: (i) at the time of their registration, neither trademark was registrable because both were clearly descriptive; and (ii) at the time of the application, neither trademark distinguished CTT's services from other travel agencies selling discounted tickets. The first claim relies on section 12(1)(b) of the Trade-Marks Act which provides that a trademark is registrable if it is not: "clearly descriptive...in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used". The second claim relies on section 18(1)(b) of the Trade-Marks Act which provides that a trademark is invalid if it "is not distinctive at the time proceedings bringing the validity of the registration into question are commenced". Lending credence to the saying, "A good offense is the best defense", the court struck both trademarks. None of the arguments presented by CTT overcame the court's initial impression that both trademarks were clearly descriptive of a service the purpose of which was to provide travel services at discounted rates. In response to CTT's argument that the trademarks were not clearly descriptive because CTT provided other services, the court stated that a clearly descriptive trademark is still clearly descriptive even if the description is not absolutely complete or accurate. The court considered the fact that the word "tickets" had been disclaimed in both trademarks and the word "travel" had been disclaimed in the second trademark, but found the consequences of restricting the market's use of the word "cheap" inappropriate. Having found that both trademarks were clearly descriptive, the court did not consider whether or not either had lost its distinctiveness. Costs were awarded to Emall.ca. The original infringement action (Cheap Tickets and Travel (Canada) Inc. v. Emall.ca Inc. et al, 2005 BCSC 815 (CanLII)) can be found at: http://www.canlii.org/en/bc/bcsc/doc/2005/2005bcsc815/2005bcsc815.html .
The application for expungement (Emall.ca inc. (cheaptickets.ca) v. Cheap Tickets and Travel Inc., 2007 FC 635 (CanLII)) can be found at: http://www.canlii.org/en/ca/fct/doc/2007/2007fc243/2007fc243.html.
A motion relating to costs can be found at: http://www.canlii.org/en/ca/fct/doc/2007/2007fc635/2007fc635.html.
The application for expungement (Emall.ca inc. (cheaptickets.ca) v. Cheap Tickets and Travel Inc., 2007 FC 635 (CanLII)) can be found at: http://www.canlii.org/en/ca/fct/doc/2007/2007fc243/2007fc243.html.
A motion relating to costs can be found at: http://www.canlii.org/en/ca/fct/doc/2007/2007fc635/2007fc635.html.
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An appeal to the Federal Court of Appeal of Canada will be heard on February 5, 2008 in Vancouver, Canada.
You can find out the outcome via DNattorney.com or by emailing me at zak at muscovitch.com.
Zak Muscovitch, solicitor for Emall.ca Inc., the Respondent to the appeal.
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