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13 November 2013
The registrar of trademarks was recently asked to issue a notice under Section 45 of the Trademarks Act (RSC 1985, c T-13) which would require Air New Zealand (ANZ) to demonstrate that its AIRPOINTS DOLLARS mark has been used in Canada in the prior three-year period. If it has not been so used, as the registrant ANZ would be required to explain the reason for such lack of use.
The mark had been registered in association with the following services:
"Financial management; providing, storing, collating and recording financial information; electronic funds transfer; services provided by airlines, in the nature of frequent flyer programmes and other incentive programmes; membership privileges and loyalty recognition programmes in the nature of travel services."
The notice was issued and, as a result, ANZ submitted documentation supporting its use of the mark, including:
After considering this evidence, the registrar found that, at best, the mark was used only in connection with "services provided by airlines, in the nature of frequent flyer programmes and other incentive programmes".
In response, the claimant first argued that airline frequent flyer points are not properly characterised as "services provided by the airline" and, as such, the registration by ANZ should be invalidated. The registrar rejected this argument, holding that the distinction was too restrictive.
The claimant also argued that the ANZ registration of the mark should not be upheld because the services were not performed in Canada. Again, the registrar disagreed. It held that, although the evidence of use in Canada was not extensive, the terms and conditions relating to the accumulation of Airpoints Dollars allow members to collect these points when travelling to and from Canada on Air Canada and any other partner airlines. The registrar also noted that the mark appeared on Airpoints Dollars statements – at least one of which was directed to an address in Canada. As a result, the registrar ruled that the services were indeed performed in Canada.
The registrar also noted that the ANZ website invited visitors to "register now". Although it wa unclear whether anyone signed up for the service, the registrar concluded that the ANZ website was viewed in Canada, meaning that the service was advertised and available to be performed in Canada.
Finally, the registrar upheld the portion of the original scope of the mark relating to the use of the mark with respect to frequent flyer and incentive programmes, but the balance of the scope of the mark was disallowed (Re Air New Zealand, 2013 TMOB 123).
The registrar re-defined the scope of ANZ's mark to include only: "Services provided by airlines, in the nature of frequent flyer programmes and other incentive programmes Membership privileges and loyalty programmes in the nature of travel services."
For further information on this topic please contact Carlos P Martins at Bersenas Jacobsen Chouest Thomson Blackburn LLP by telephone (+1 416 982 3800), fax (+1 416 982 3801) or email (firstname.lastname@example.org). The Bersenas Jacobsen Chouest Thomson Blackburn LLP website is available at www.lexcanada.com.
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