Citation: 2017 TMOB 152

Date of Decision: 2017-11-15

IN THE MATTER OF A SECTION 45 PROCEEDING

	Thompson Dorfman Sweatman LLP	Requesting Party
and
	CWI, Inc.	Registered Owner
	TMA245,252 for CAMPING WORLD & DESIGN	Registration

[1]  At the request of Thompson Dorfman Sweatman LLP (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on August 31, 2015 to CWI, Inc. (the Owner), the registered owner of registration No. TMA245,252 for the trade-mark CAMPING WORLD & DESIGN (the Mark), shown below:

[2]  The Mark is registered in association with the following services: “Installation, repair and maintenance of camping equipment and recreational vehicles” and “retail store services and retail mail order services in the field of camping equipment and supplies and recreational vehicles and supplies.”

[3]  Section 45 of the Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with the services specified in the registration at any time within the three year period immediately preceding the date of the notice and, if not, the date when it was last in use and the reason for the absence of such use since that date. In this case, the relevant period for showing use is between August 31, 2012 and August 31, 2015.

[4]  The relevant definition of “use” is set out in section 4(2) of the Act:

(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

[5]  It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)].  Although the threshold for establishing use in these proceedings is quite low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the services specified in the registration during the relevant period.

[6]  With respect to services, the display of a trade-mark on advertising is sufficient to meet the requirements of section 4(2) when the trade-mark owner is offering and prepared to perform those services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)]. In other words, advertising in Canada alone is insufficient to demonstrate use; at the very least, the services have to be available to be performed in Canada. By way of example, use of a trade-mark on advertising in Canada of services only available in the United States does not satisfy the provisions of section 4(2) of the Act [Porter v Don the Beachcomber (1966), 48 CPR 280 (Ex Ct)].

[7]  In response to the Registrar’s notice, the Owner furnished the affidavit of Tamara Ward, Chief Marketing Officer of the Owner, sworn on March 30, 2016 in Bowling Green, Kentucky.  Both parties filed written representations and were represented at a hearing held on October 23, 2017.

The Owner’s Evidence 

[8]  In her affidavit, Ms. Ward attests that the Owner is North America’s largest retailer of “recreational vehicle (“RV”) parts, accessories and supplies, RV services and maintenance, camping equipment and related goods and services”, all of which are offered “under the Camping World brand”.  She explains that, over the past 50 years, the Owner has grown to 120 retail and service locations, with over 4 million customers and annual revenues exceeding US$300 million.

[9]  In particular, Ms. Ward attests that the Owner’s goods and services are available at “retail and service locations in North America” as well as through mail order, by telephone order and online at www.campingworld.com and www.campingworld.ca.  She explains that most of the Owner’s retail locations are “co-located” with a related company, FreedomRoads, LLC, all operating under the Camping World brand.  She confirms that the Owner controls the quality of the services provided by FreedomRoads under the brand.

[10]  With respect to the Mark, Ms. Ward attests that the Owner or its predecessor has continuously used the Mark in Canada for services related to RVs, camping equipment and related goods and services, including during the relevant period.  She states that the Owner “has a long history and it is in the normal course of its business to continue to evolve and modernize its trademarks.”  As such, Ms. Ward explains that the Mark “has evolved slightly over time”.  Nonetheless, she asserts that “the distinctive feature of the mark and its pronunciation, namely CAMPING WORLD, have always been maintained”.  Therefore, she attests, “all variations of the mark point to the same source, namely [the Owner] and would be considered to be one in the same by our customers.”

[11]  Based on the evidence before me and confirmed in the Owner’s representations, the Owner does not operate any retail locations in Canada.  However, Ms. Ward notes that the Owner operates its Canadian website to “advertise and/or to provide its retail, installation, repair and maintenance services directly to Canadian consumers”.  Ms. Ward attests that, through the website, Canadians “can shop for RV’s, RV equipment and camping equipment and supplies”.  She also attests that the website provides information to Canadian consumers “on services in the area of installation, repair and maintenance of camping equipment and recreational vehicles.” She states that the website had at least three million views during the relevant period.

[12]  Ms. Ward further attests that Canadian consumers can order products from the Owner by mail or telephone.  She states that the Owner distributes catalogues to consumers in Canada on a yearly basis and that at least 182,000 catalogues were mailed to Canadian consumers during the relevant period.  Ms. Ward notes that the catalogues offer “all types of RV’s, RV parts, accessories and supplies, RV service and maintenance, camping equipment and related goods and services”. 

[13]  Ms. Ward explains that consumers in Canada can place an order by filling out an order form provided in the catalogue or they may call a 1-800 phone number and place an order by telephone.  Ms. Ward confirms that such ordered goods are then shipped to Canada.

[14]  Ms. Ward attests that the Owner’s installation, repair and maintenance services “were also advertised to Canadian consumers during the Relevant Period” in the product catalogues distributed in Canada and that “Canadian consumers may arrange, by telephone, installation of the required product”.  Ms. Ward explains that consumers may send products to the Owner and that, in turn, the Owner will perform repair and maintenance services on such products and return them by mail or by special delivery.  She attests that “consumers may also arrange to have [the Owner] or FreedomRoads LLC install products in their RV and obtain repair services with respect to their RVs.”

[15]  Ms. Ward estimates that revenues from “the Camping World services provided in Canada during the relevant period [were] approximately USD $5,500,000”.

[16]  Ms. Ward also attests that the Owner is a sponsor of the NASCAR racing series, which she notes is widely covered and available for viewing on major television and radio networks in Canada.

[17]  In support, Ms. Ward attaches the following exhibits to her affidavit:

·  Exhibit A consists of eight pages of printouts from the Owner’s Canadian website from the relevant period.  Variations of the Mark, discussed below, appear on the pages.  Some of the pages show a variety of RV and camping equipment offered for sale. One of the pages describes the Owner’s sponsorship of the Independence Bowl football game to be held in the U.S. in 2015.

·  Exhibit B consists of “representative covers” to the Owner’s catalogues circulated in Canada in 2013 and 2014.  Ms. Ward indicates that, as can be seen in the exhibit, “the sale of RVs as well as installation services were advertised during the Relevant Period”.

·  Exhibit C is the table of contents page for the Owner’s 2014 CAMPING WORLD catalogue.  As noted by Ms. Ward, the catalogue includes a variety of RV parts and camping equipment. 

·  Exhibit D is a sample order form that Ms. Ward attests was contained in the catalogues shipped to Canada in 2015. A variation of the Mark appears at the top of the form. Although the form appears to be primarily directed to U.S. customers, I note that one of the four “Easy Ways To Order” indicated is to call a 1-800 number “in USA and Canada”. 

·  Exhibit E consists of two invoices from the Owner to customers in Canada, dated within the relevant period. The first invoice appears to be for a portable high chair and a portable washing machine; the second invoice appears to be for a vent cover.  The top of both invoices displays a CAMPING WORLD logo.  

[18]   As indicated above and acknowledged by Ms. Ward, the Mark as registered does not appear in the evidence.  Rather, throughout the exhibits, the relevant trademarks that appear are the word mark CAMPING WORLD, the Owner’s website addresses www.campingworld.com and www.campingworld.ca, and the two design marks shown below:

Analysis

[19]  In this case, there are two main issues. The first issue is whether, at a minimum, the Owner advertised and was able to perform the registered services in Canada during the relevant period.  The second issue is whether such services were offered or performed in association with the Mark as registered.

[20]  On the first issue, I generally agree with the Owner that it advertised and performed the registered “retail store services and retail mail order services in the field of camping equipment and supplies and recreational vehicles and supplies” in Canada during the relevant period. 

[21]  In this respect, it is clear that Canadian consumers – either through the Owner’s Canadian website or by phone – could order camping and RV products and expect delivery of such goods by mail to Canada.  The invoices at Exhibit E support this conclusion with respect to “equipment” and “supplies”, albeit not necessarily with respect to “recreational vehicles” themselves.

[22]  With respect to the registered “Installation, repair and maintenance of camping equipment and recreational vehicles”, the evidence is less clear.  There is no evidence of performance of such services in Canada, the exhibited invoices not being for “installation, repair and maintenance”.  Furthermore, it is unclear in this case how “installation” or “maintenance” – in particular of “recreational vehicles” – could be performed absent facilities in Canada. 

[23]  With respect to the registered “repair” services, I agree with the Requesting Party that the exhibits, on their face, do not clearly demonstrate that such services were available to Canadians in Canada.  Nevertheless, as noted above, Ms. Ward does attest that Canadians could mail products, i.e. “camping equipment”, to the Owner to have such products repaired as necessary.

[24]  Although such repairs would be conducted in the United States, the Owner submits that Canadians could benefit from the Owner’s “repair” services without leaving Canada, by virtue of having the product shipped back-and-forth via mail or special delivery.  However, absent examples of actual performance, it is unclear whether the scope of the services available to be performed “in Canada” encompassed the “installation, repair and maintenance” services as registered.

[25]  In any event, the determinative issue in this case is whether the CAMPING WORLD trade-marks used by the Owner constitute display of the Mark as registered. 

[26]  As shown above, although the stylized mountain design is often displayed next to or above the words CAMPING WORLD, I note that the two Camping World website addresses and the word mark on its own are displayed at points throughout the exhibits.  Furthermore, it is well-established that two trade-marks may be used at the same time so long as they are not combined in a way that renders the individual marks indistinguishable [see AW Allen Ltd v Warner-Lambert Canada Inc (1985), 6 CPR (3d) 270 (FCTD) at 272].  As such, for purposes of this decision, the issue can be refined to the question of whether use of the word mark CAMPING WORLD constitutes use of the Mark as registered.

[27]  The test for deviation, as articulated by the Federal Court of Appeal, is as follows:

The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin. [Canada (Registrar of Trade-marks) v Compagnie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 (FCA) at 525]

[28]  As the Court of Appeal noted, “That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used.” [at 525]

[29]  In deciding this issue, one must look to see if the “dominant features” of the trade-mark have been preserved [Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)]. The assessment as to which elements are the dominant features and whether the deviation is minor enough to permit a finding of use of the trade-mark as registered is a question of fact to be determined on a case-by-case basis. 

[30]  In its representations, the Owner submits that there is nothing particularly distinctive of the design that replaces the “O” in CAMPING WORLD. It submits that what is or is not contained in the “O” does not change the pronunciation of the Mark.  Similarly, it submits that the change in font or in the layout of the individual words does not matter.  The Owner submits that section 45 proceedings are not meant to “strip” owners of their trade-marks, emphasizing that the Owner operates under the “CAMPING WORLD” brand.

[31]  However, in my view, the dominant feature of the registered Mark is not simply the words CAMPING WORLD, but includes the particular globe design replacing the letter “O”.  As noted by the Requesting Party, the Owner is essentially attempting to change its registration for a design mark to a registration for a word mark.  Here, the evidence shows that the Owner did not use this distinctive globe design at all during the relevant period; nor does it appear to have any plans to use this design.

[32]  While the motivations of the Requesting Party are not relevant to this proceeding, the parties alluded to an ongoing inter partes dispute over the trade-mark CAMPING WORLD. However, in assessing the dominant feature of the Mark, it is enlightening to consider a scenario where the Requesting Party seeks use of a similar globe design, rather than the words CAMPING WORLD.  To the Requesting Party, at least, it would be an absurd result to maintain the registration for the Mark, which includes the particular globe design, despite the Owner not having used that design at all during the relevant period. 

[33]  In this respect, I note the following observation from the Federal Court in Plough, supra, at paragraph 10:

There is no room for a dog in the manger attitude on the part of registered owners who may wish to hold on to a registration notwithstanding that the trade mark is no longer in use at all or not in use with respect to some of the wares in respect of which the mark is registered.

[34]  In view of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark as registered in association with the registered services within the meaning of sections 4 and 45 of the Act.  Furthermore, there is no evidence before me of special circumstances excusing such non-use.

 

Disposition

[35]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be expunged.

Andrew Bene

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: 2017-10-23

APPEARANCES

Heidi Jensen	For the Registered Owner
Lynda Troup	For the Requesting Party

AGENTS OF RECORD

Jensen & Company	For the Registered Owner
Thompson Dorfman Sweatman LLP	For the Requesting Party