Seattle Trademark Lawyer

On August 14, the Supreme Court of British Columbia denied Issaquah, Wash.-based Price Costco International’s motion to enjoin Surrey, B.C.-based Welcome Warehouse Ltd.’s planned use of PRICECO WAREHOUSE as a trademark in connection with warehouse-style retail stores. Though the court found Costco had made a strong showing of likelihood of confusion, it found the request was premature in light of the parties’ ongoing proceedings before Canada’s Registrar of Trade Marks.

In January 2005, Welcome Warehouse applied to register PRICECO WAREHOUSE. Price Costco, which owns Canadian registrations for PRICE CLUB, PRICE COSTCO, and PRICE COSTCO and Design, opposed the application. In August 2005, the Registrar issued an Approval Notice for the application, signifying it had initially decided that PRICECO WAREHOUSE was registrable.

In December 2005, Welcome Warehouse instituted separate proceedings before the Registrar to expunge Costco’s registrations of PRICE CLUB, PRICE COSTCO, PRICE COSTCO and Design on the ground that Price Costco had abandoned those marks when it rebranded its stores as Costco. (It seems safe to assume that expungement proceedings before the Registrar of Trade Marks are similar to cancellation proceedings before the Trademark Trial and Appeal Board.) Those proceedings are ongoing today.

The court accepted Price Costco’s unchallenged survey evidence showing that 44% of those answering believed that a general merchandise retail store called “Priceco Warehouse” is owned by or affiliated with Costco. Yet, in light of the pending proceedings before the Registrar of Trade Marks and the fact that Welcome Warehouse had not yet used the mark in commerce, Justice Eric Rice was reluctant to grant Costco’s injunction request.

“In my view, it would be unjust to decide this dispute where the alleged infringement consists only of the defendant exercising its rights under the Trade-marks Act to apply to the Registrar,” the court found. “It is not a frivolous application by any means. The evidence of continued use and benefit by the plaintiff is little enough to make the case for abandonment at least arguable.

“As it is, the evidence before me of passing off and infringement falls short. There has been no evidence of actual use of the PRICE WAREHOUSE mark, or anything similar, and no evidence of intention to use it until the Registrar rules in the defendant’s favour.”

The court concluded that Costco and its Canadian affiliate will have a “good case for the remedies they seek if the Registrar decides in their favour and if the defendant does not quit its ambition to have ‘Priceco’ as its trade mark.” The court stated that plaintiffs may renew their application if injunctive relief becomes necessary after the expungement proceedings have concluded.

The case cite is Price Costco Int’l, Inc. v. Welcome Warehouse Ltd., 2007 BCSC 1227, No. SO67934.