A recent decision of the Federal Court deals with a battle between American Express Marketing and Development Corp. (American Express) and Black Card, LLC (BCL) over who has the right to use the trademark BLACK CARD.
The Facts
American Express clears, registers, maintains, licenses and defends the trademarks of the American Express group of companies in Canada. American Express asserted that BLACK CARD is an unregistered trademark sublicensed to the AMEX Bank of Canada and used in connection with a premium credit card known as the Centurion card. The card is black in colour.
BCL offers credit card and concierge services to members, principally in connection with entertainment, travel and business. BCL’s credit cards are also black in colour.
BCL filed trademark applications for the trademark BLACK design, MY BLACK CARD REWARDS and MY BLACK CARD based on proposed use in association with charge and credit card services and related benefits. American Express opposed the applications on the grounds that proposed marks where confusing with American Express’s unregistered Black card trademark, entitlement, lacked distinctiveness and were clearly descriptive of the applied for services.
A hearing in the opposition was held before the Trademarks Opposition Board. The hearing officer dismissed all of American Express’s oppositions because American Express had failed to file sufficient evidence to support its grounds of opposition.
The Federal Court
American Express appealed from the hearing officer’s decision to the Federal Court. Both American Express and BCL filed new evidence in the appeal.
American Express argued that the standard of correctness applied to the appeal because its new evidence was relevant and overcame the evidentiary deficiencies identified by the hearing officer. The judge accepted this position and said that the decision of the hearing officer must be reviewed in light of all the evidence, both new and old and that the court must come to its own conclusion.
American Express’ new evidence showed that it used a family of colour-themed cards. American Express launched the Centurion card in the United States in 1999 to capitalize on rumours of an “ultra-exclusive” black card. The Centurion card has a distinctive black appearance and some consumers refer to it only as a “black card”. It also appeared that American Express had broadly used the trademark GOLD CARD in the past but that a US court had found this mark was generic.
On the issue of confusion with American Express’s unregistered trademark and entitlement American Express relied on an advertising campaign and a letter sent to cardholders. Reference was made to a “mysterious black card”. However the judge was not prepared to accept this constituted trademark use as required by the Trademarks Act.
A similar result was arrived at concerning distinctiveness. There was simply no evidence that American Express had issued credit cards using the trademark BLACK CARD or that it had used this trademark in the advertising and promotion for credit cards.
Regarding the issue as to whether applied for trademark is clearly descriptive of the character or quality of the services in issue, the judge said this must be assessed from the perspective of the average retailer, consumer or everyday user of the services in question. While some of the new evidence demonstrated that some Canadians associated black credit cards with prestigious or premium services this was not sufficient to establish that the applied for trademarks were “clearly” descriptive. The use of the word “clearly” implies that the impression created in the mind of the consumer must be self- evident or plain. The evidence failed to show this was the case.
Comment
While there may be other battles between the parties concerning the trademark BLACK CARD, this decision may be determinative. BCL’s marking efforts were more coordinated than American Express’s since BCL presumably developed a plan to use the trademark BLACK CARD and applied for trademark registrations.
On the other hand the trademark BLACK CARD may not be the best mark since it is tinged with descriptiveness and distinctiveness issues which will limit the ambit of protection associated with it.
If you have questions, please contact mckeown@gsnh.com
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.