Occasionally, results of litigation seems so surprising that you
wonder if there has to be more to the case than what the decision
discloses. The Federal Court in 299614 Alberta Ltd. v.
Fresh Hemp Foods Ltd., 2013 FC 1245 is a case in point.
After Fresh Hemp applied to register the mark HEMP HEARTS Design,
the Alberta numbered company opposed, and filed its evidence. The
next step in the opposition should have been for Fresh Hemp to file
its evidence, however, due to a mix-up in the Trade-marks Office,
the application was mistakenly allowed. The applicant, in record
time, paid its registration fee, and the trademark issued to
registration a mere five days after allowance.
The opponent, no doubt wondering what had happened, appealed the
decision of the Registrar to allow the application. However,
Justice Zinn of the Federal Court, relying upon a decision with
equally unusual facts, found that once a registration has been
issued, it can only be challenged by expungement. An expungement
proceeding requires a Federal Court application, on specific
grounds, with accompanying evidence and written submissions. It did
not matter that in this case, the decision to allow the mark was
admitted by the Registrar to have been in error. The Judge
specifically noted that under the Canadian Trade-marks
Act there is no cost-effective and expeditious way to
correct the Registrar's errors.
Adding insult to injury, the Alberta company was ordered to pay
Fresh Hemp's costs. This seems particularly harsh considering
both that the situation originally arose from an error by the
Registrar, and that the law regarding how to remedy the situation,
e.g., by appeal as opposed to an application to expunge, is not
terribly clear since there are few (thankfully) precedents.
However, as noted above, there could be more to this than is
apparent from the decision.
It should be noted that in a trademark opposition, the onus to
justify a registration is on the applicant, should the opponent
file suitable evidence supporting the grounds of opposition. That
onus remains in any appeal of an opposition decision. Also, there
are no cost awards ordered by the Registrar in opposition
proceedings. On the other hand, in an expungement application, the
onus is switched – an applicant for expungement has the onus
of proving the facts to justify the expungement. Plus, parties in
Federal Court expungement proceedings are exposed to
As an interesting aside, correcting the Registrar's errors
has turned out to be a difficult procedure for other applicants.
Occasionally, during examination, the Trade-marks Office will drop
wares or services from an application by mistake. If the error is
not caught before registration, the current view of the Trade-marks
Office is that such errors cannot be fixed by the Office. Instead,
a Federal Court application must be brought to amend the
registration. Despite submissions from both applicants and
organizations representing IP practitioners and owners that
the Act could be read in a way to allow the
Registrar to correct such errors, the Trade-marks Office has
maintained its position. Needless to say, the prospect of bringing
an application to the Federal Court has implications in costs,
timing, and convenience that are unreasonable to applicants who
find themselves in this situation as a result of errors by the
Some relief from errors is found in Bill C-8,
the Combating Counterfeit Products Act, currently
before Parliament. It proposes to amend the Trade-marks
Act to permit Registrar errors to be corrected on
application by the registrant, but only within six months of
registration. Recommendations to extend the time limit were not
The lesson for trademark owners or practitioners from this
decision (unless overturned on appeal) is that any issue regarding
a registered mark versus application, including issues arising from
Registrar errors, can only be remedied by application to the
Federal Court under section 57 of the Act. As it
stands, that means that parties before the Trade-marks Office may
end up paying for the mistakes of the Office. Possibly, keeping a
careful watch on an opposition file might help, but more
importantly, vigilance by the Trade-marks Office is required.
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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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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