A recent decision of the Federal Court emphasizes the importance
of filing a declaration of use relating to a trade mark application
that is accurate in all respects.
An application for a trade mark may be filed on the basis of
proposed use. This is beneficial since a trade mark owner can, in
effect, reserve a trade mark. However, a registration can not be
obtained until a declaration is filed confirming that the mark has
been used in association with some or all of the wares or services
listed in the application.
In the case, the applicant filed a trade mark application with a
lengthy list of wares. Unfortunately, the declaration of use which
was filed stated incorrectly that the mark had been used in
association with all of the wares applied for.
The Expungement Proceedings
When a competitor with an interest in the applied-for mark
became aware that an incorrect declaration had been filed, it
instituted proceedings in the Federal Court seeking expungement of
the trade mark registration on the basis that the registration had
been obtained by the inclusion of a materially false statement of
use that was fundamental to the registration. Previous case law has
established that in such a case, it was not necessary to show
either fraud or intent to deceive.
In response to the proceedings, the applicant, now respondent,
amended its trade mark registration to reflect its actual use of
the wares listed in the application. As a result, a substantial
portion of the wares of the registration were deleted.
The respondent admitted in the course of the proceedings that
there had been a critical misstatement arising from lack of
understanding of the trade mark system. The respondent believed
that so long as it had used the mark in relation to just one of the
wares on the list, a declaration of use could be filed.
The respondent filed evidence to show that it was using the
marks in association with the amended wares of the registration.
The Judge accepted that while clearly wrong, the declaration of use
contained an innocent misstatement which was not sufficient to
render the amended registration unregistrable.
The competitor argued that the Court should adopt a draconian
policy since there must be a strong incentive to be truthful and
that any transgression should result in the registration being
expunged, even if an innocent mistake had occurred. The Court
stated a more nuanced and balanced position should be applied and
that an innocent misstatement combined with an amendment of the
registration was sufficient to avoid expungement.
Care should be taken to ensure that any declaration of use is
completely accurate in order to avoid potential attacks on any
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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