Overview
Trademarks are used to identify the origin of goods and services. The best way to protect them is through registration.
When we prepare trademark applications for clients, we must list the client’s goods and services with which the trademark is used. This is not as simple as it may seem. Some clients desire that their goods and services be described in multiple ways, whereas we work hard to ensure that the goods and services listed in the applications clearly cover only those goods and services the clients actually sell, or soon plan to offer for sale.
In a recent decision of Canada’s Trademark Opposition Board, the tension between listing many goods and only those actually sold was well demonstrated. In a s.45 cancellation proceeding, the owner of a trademark had to show that it used its registered mark for the following goods during a specified period:
Alcoholic beverages namely, wine and wine based beverages; icewine; alcoholic beverages namely, wines, flavoured wines, chocolate wines, sparkling wines, low alcohol wines, fruit wines, wine based cocktails, spirit based cocktails, cocktail mixes, vodka, brandy, gin, rum, tequila, and whisky; drinking glasses.
The owner’s evidence, however, was that the only goods it sold during the relevant period was icewine. Was the sale of icewine enough to maintain the registration for all of the other wine-related goods? No. The Board found as follows:
Although the Owner argued at the hearing that “wine” could correspond to various goods in the registration in addition to icewine, it also acknowledged that the documentary evidence pertained only to icewine, and that there was no evidence that the “wine” referred to [in the Owner’s evidence] was anything other than icewine. It is well established that use of a mark in association with a specific good cannot serve to maintain multiple goods in a registration; having distinguished particular goods in the registration, the Owner was obligated to furnish evidence with respect to each of the listed goods accordingly … .
In the result, the Board amended the registration to delete all of the listed goods except for icewine.
Our view is that if the registration had merely listed “wine” (and not all of the variations listed above), selling icewine would have maintained the registration for wine generally. Therefore, this case serves as a good reminder to business owners to describe their goods in the broadest available terms to achieve the broadest protection – where registrations contain broad terms as well as more specific items, use of the trademark with a specific good alone will not maintain broad coverage.