A recent decision in the Federal Court confirms that the court
will not expunge a registration for an alleged technical breach of
the Trademarks Act.
Anheuser-Busch, LLC ("Anheuser") owns the registered
trademark GRAB SOME BUDS for use in association with beer. Anheuser
commenced an action for infringement against Coors Brewing Company
and Molson Canada 2005 ("Molson Coors") alleging that
their use of the trademark GRAB SOME STONES in association with
beer was infringing of Anheuser's trademark. Molson Coors
defended the action and brought a separate application in the
Federal Court to the expunge Anheuser's registration.
When Anheuser applied for its trademark it did so, on the basis
of proposed use since they had not yet used the mark in Canada nor
had they obtained a U.S. registration. While the Canadian
application was outstanding Anheuser obtained a U.S. registration
for the mark and amended the Canadian application to remove the
proposed use claim and substitute a claim based on registration and
use in the U.S.
At the time of the amendment Anheuser had commenced using the
mark in the U.S. but they had not commenced use in the U.S. at the
time they filed the initial application.
Molson Coors asserted that in order to support a claim to
register a trademark based on registration and use in the U.S. the
mark must be in use on the filing date of the application. Anheuser
responded by asserting that the operative date should be the date
that the amendment was made.
There has been some concern among trademark lawyers that the
latter position was not correct, particularly in light of some
comments and other decisions of the Federal Court. But the issue
has not been finalized by the courts.
The motion judge did not decide who was right on this particular
issue but instead referred to existing case law decided in context
of expungement proceedings.
The Act and the case law establishes that:
1. There are four statutory grounds for invalidity: (a)
non-registrability, (b) non-distinctiveness; (c) abandonment, and
2. In addition, misstatements in a trademark application may
serve to invalidate a registered trademark in two circumstances:
(a) where the misstatement was intentional and fraudulent, and (b)
where the misstatement was innocent but fundamental to the
registration, in the sense that the registration could not have
been secured without the misstatement.
In this case Anheuser had not said that it had used its
trademark when in fact it had not. In addition, at the time of the
amendment the facts set out in the amendment were true.
When these principles were applied the judge found that there
was no misstatement, let alone a fundamental one, that could form
the basis of a ground of invalidity. As a result the application
for expungement was dismissed.
The issue concerning whether an application can be amended to
rely on foreign registration and use in the circumstances of this
case will become academic when the current amendments to the
Trademarks Act are brought into force. However, in the interim it
may not be advisable to proceed in this fashion since it is still
open to advance such an argument in the context of the trademark
opposition where there is no necessity to show a material
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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