By Ben Hanuka*
In Hunky Haulers Inc. v. Friedman and Soliman Enterprises, LLC, a decision of the Canadian Trademarks Opposition Board dated September 6, 2017, the Board deleted “moving services” from the description of services of the “College Hunks Moving” trademark registration.
The Board ruled that the franchisor, a US limited liability corporation, Friedman and Soliman Enterprises, LLC, could only keep its trademark registration for franchising services – not actual moving services, because it did not prove that it provided actual moving services. As a result, the Board amended the registration of the “College Hunks Moving” trademark by deleting “moving services” from the description of services.
Background and the parties
(This section is based on independent research by Law Works, which is outside the Board’s reasons for decision.)
This dispute arose in British Columbia between two junk hauling franchises: Hunky Haulers and College Hunks.
Hunky Haulers Inc. is based in Surrey, British Columbia, and offers junk removal and hauling services.
College Hunks is a registered trademark owned by Friedman and Soliman Enterprises, LLC, which is based in Maryland and offers competing services. Friedman registered the trademark “College Hunks Moving” in Canada, but at the time of the decision did not have any franchisees here.
Earlier, Hunky Haulers applied to register name and logo trademarks. Friedman opposed it and, in February 2017, the Board denied Hunky Haulers’ trademark applications.
Summary of the Present Decision
In the present case, after Friedman had the “College Hunks Moving” trademark registered, Hunky Haulers challenged the registration by filing a request with the Registrar of Trade-marks under section 45 of the Trade-mark Act. This request in effect challenges the owner of the trade-mark to provide evidence of use of the trademark in Canada.
The College Hunks Moving trademark registration description contained two uses: (1) moving services, and (2) franchising services, namely, offering technical assistance in the establishment and operation of moving services businesses.
The Board confirmed that, based on section 4(2) of the Act, which defines “use” in association with services as “used or displayed in the performance or advertising of those services”, the evidentiary threshold was low. For example, it is enough to display a trade-mark on advertising to meet this threshold.
Friedman submitted an affidavit and ten exhibits to show its use of the trademark in Canada, including the following: a franchise disclosure document, advertising to potential franchisees, online materials about the franchise offering, and emails with potential franchisees.
But it did not show any evidence that it offered actual moving services in association with the trademark. It also did not offer evidence that it had any franchisees in Canada.
The Board found that there was no evidence that anyone offered moving services in Canada using the trademark. It also ruled that even if Friedman had franchisees in Canada, the evidence that it offered was insufficient – Friedman would have needed to show actual use of the trademark in association with moving services.
As a result, the Board ruled that Friedman could not keep the trademark registration for “moving services”, but only for “franchising services”. The Board amended the statement of services by deleting “moving services” from the registration.
For purpose of the description of a trademark registration, merely offering franchises is legally different from offering actual goods or services, whether in the food or service industries. The two are independent. A franchisor must show evidence, if challenged, of both types of offerings if it wants to maintain official trademark protection for them, i.e., offering franchising services and actual goods or services.
Section 45 of the Act give competing franchisors a procedure for challenging trademark registrations where the trademark in question is not associated with actual services, i.e., where a franchise system is not fully set up and there are no operating franchisees or corporate-owned locations, but a trademark is registered. As the Board wrote, it gives a procedure to remove “deadwood” from the trademark register.
* The assistance of Rann Wang, Student-at-Law at Law Works PC/LC, in researching the Board’s decision and writing portions of this article, is greatly appreciated.
For more information about Law Works’ expertise and how we may be able to help you, please contact Ben Hanuka at https://www.lawworks.ca/book-a-consultation or by phone in Ontario at (855) 978-5293 and in British Columbia at (604) 262-1711.