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A recent decision of the Federal Court emphasizes the importance
of carrying out a full trade-mark search that includes common law
references before making decisions concerning the availability of a
trade-mark.
The Facts
Precision Door
Precision Door and Gate Service Ltd. ("Precision
Door") has been selling, installing and repairing various
kinds of doors throughout the lower mainland of British Columbia
since 1997. It uses as a trade-mark a stylized version of its
corporate name, as reproduced below.
Precision Door did not initially obtain a Canadian trade-mark
registration.
Precision Holdings
Precision Holdings of Brevard, Inc., based in Titusville,
Florida ("Precision Holdings"), sells and services garage
doors through more than 70 franchisees. In 2002, it applied for the
trade-marks PRECISION, PRECISION DOOR SERVICE and PRECISION
OVERHEAD GARAGE DOOR SERVICE & Design. At this time, it was
unaware of the business of Precision Door. Presumably, Precision
Holdings did not carry out a full trade-mark search in Canada which
included common law trade-marks. Subsequently, Precision Holdings
trade-marks were registered in 2009. In 2005, Precision Door
applied to register its own trade mark, PRECISION DOOR AND GATE
SERVICE LTD. & Design. A Trade-marks Office Examiner concluded
that this trade mark was confusing with Precision Holdings'
applied for trade-marks. In addition, it was then too late to
oppose the applications filed by Precision Holdings. As a result,
Precision Door's trade-mark application was refused.
Expungement Proceedings in the Federal
Court
When it was precluded from obtaining a trade-mark registration,
Precision Door brought an action in the Federal Court to expunge
the registrations owned by Precision Holdings. A registration of a
trade-mark may be invalid if the applicant for registration was not
the person entitled to secure the registration.
Precision Holdings' registrations were obtained on the basis
of registrations which had been obtained in the United States. An
applicant who has filed an application for a trade-mark that the
applicant has duly registered in its country of origin and has used
the mark its country of origin in association with the applied-for
wares or services is entitled to secure its registration in Canada
in association with the same wares unless, at the date of the
filing of the application, it was confusing with a trade-mark that
had been previously used in Canada.
Precision Door asserted that the Precision Holdings'
registrations were invalid since it had used its trade-mark in
Canada prior to the filing date of Precision Holdings'
applications, namely October 18, 2002, and that Precision
Holdings' marks were confusing with its trade-mark.
While there was some dispute about it, Precision Door was
successful in proving, to the satisfaction of the court, that it
had used its trade-mark prior to October 18, 2002 and continuously
from 1997 onward. In 2002, Precision Door changed its name from
Precision Door Ltd. to Precision Door and Gate Service Ltd., but
the judge concluded that the new corporate name was a minor
variation of the former.
The judge concluded that there was a strong similarity between
the parties' respective marks and some actual confusion. As a
result, the judge was satisfied that Precision Holdings'
registrations were invalid because it was not the person entitled
to register them.
Conclusion
Precision Holdings may have acted in a different way had it been
aware of the activities of Precision Door in 2002. A common law
search would have disclosed the existence of Precision Door's
business and a more appropriate strategy could have been developed.
It is not sufficient to restrict searches to the trade-marks
register.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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