Canada: Entitlement To A Trade Mark

Last Updated: February 6 2014
Article by John McKeown

A recent U.K. case raises some interesting issues relating to the entitlement to a trade mark.

The Facts

The claimant was a company associated with a well-known boxing promoter. The defendants are all associated with a well-known retailer. The case was about the right to use the trade mark QUEENSBERRY in association with clothing. Each side claimed rights in the mark. But the claimant owned a UK registered trade mark for QUEENSBERRY registered for use in association with articles of clothing; footwear; headgear.

The defendants launched a new brand of clothing in association with the QUEENSBERRY mark and the claimant brought an action for infringement. The defendants contended the claimant's mark was invalid on the grounds that either (i) the defendants' predecessor in title had made prior use of the mark or (ii) the mark was applied for in bad faith in that claimant applied for it knowing that the mark really belonged to the defendants' predecessor's in title. The action proceeded to trial.

The Decision

The defendants presented evidence to the effect that their predecessors had the used the word QUEENSBERRY on the clothing on the various occasions prior to the filing of the applicant's registered mark. The judge accepted that the defendant's contemplated the idea of a QUEENSBERRY clothing brand before the filing date and there were documents which support that.  However this did not mean that what they actually did had that effect.

The judge reviewed all of the relevant evidence carefully and concluded although it is clear that the defendants thought of the idea of using QUEENSBERRY in a wide context, including as a clothing mark, they did not actually use it in this way as a clothing brand. The use of the mark on t-shirts sold to gym users or the use of the mark on clothing worn by boxers and corner men at televised boxing matches was not use in association with clothing as these items were not sold to the public. What they thought they were doing was using the name to refer to and promote their gym and contemplated boxing agency business.

The judge found that the trade mark was applied for by the claimant with the knowledge that the defendants were using the mark QUEENSBERRY in some way. However, that alone was not sufficient to give rise to bad faith. There were two further critical points. First, the claimant had already conceived of using QUEENSBERRY as a clothing brand. While not much had been done about it the claimant did not get this idea from the defendants. Second, the judge found that what the claimant must have known was that the defendants were using the name as the name of a gym and/or a boxing team or stable. The fact the name appeared on clothing did not fix the claimant with notice that the defendants intended to use it as a clothing brand.

As a result the judge concluded that the claimant's registered trade mark was valid and infringed by the sale of the defendants' clothing.

The Canadian Position

The situation is similar.  Section 18 of the Trade-marks Act lists the grounds under which the validity of a registration of a trade mark may be attacked. The section provides that a registration of a trade mark is invalid if subject to section 17, the applicant for registration was not the person entitled to secure the registration.

Subject 17 contains some limitations. First, a registration of a trade mark cannot be expunged or amended or held invalid on the ground of any previous use or making known of a confusing trade mark or trade name by a person other than the applicant for such registration or his predecessor in title, except at the instance of such other person or his successor in title. The burden lies on that other person or his successor to establish that he had not abandoned the confusing trade mark or trade name at the date of advertisement of the applicant's application.

Second, in proceedings commenced after the expiry of five years from the date of registration of a trade mark, no registration shall be expunged or amended or held invalid on the ground of the previous use or making known referred to above, unless it is established that the person who adopted the registered trade mark in Canada did so with knowledge of such previous use or making known.

Bad faith is not mentioned expressly in section 18 but non-statutory grounds of invalidity have been recognized, including misappropriation of a trade mark in violation of a fiduciary duty or fraudulent or material misrepresentation for the purposes of registration.


A Canadian Court could arrive at a result similar to the decision of the U.K. court. In order to avoid this situation the defendant could have filed for its mark on the basis of proposed use as it was planned to use it as a clothing brand.  If the filing date of its application was earlier than the date of first use by the plaintiff or the filing date of the plaintiff's application the defendant would have been entitled to the mark.

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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John McKeown
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