On January 8, 2009, the Federal Court of Canada issued its
decision in Parfums de Coeur, Ltd. v. Christopher Asta
(2009 FC 21). The Court refused to expunge a trademark registration
obtained through a Declaration of Use that contained false
information. This outcome highlights a significant difference in
the consequences arising from misstatements on a Declaration of Use
under Canadian and American law.
Mr. Asta originally applied for the trademark BOD on the basis
of proposed use in Canada in connection with wares such as
hair-care products, skin-care products, cosmetics and body-care
products. Registration for the BOD trademark was issued on March
11, 2004, based on a Declaration of Use in which Asta declared that
he (either by himself or through a licensee) had begun use in
Canada of the trademark in association with all of the wares in the
application. However, Asta had actually commenced use of the
trademark in Canada only in association with shampoo and
conditioner. Asta explained the incorrect declaration as arising
from his misunderstanding of the trademark system. He believed that
he could file the Declaration of Use with respect to all of the
wares, as long as he had used the BOD trademark in association with
just one of the original wares.
Asta's BOD registration came to the attention of Parfums de
Coeur (PDC) when PDC filed a trademark application in Canada for
BOD MAN. The BOD MAN application faced a preliminary rejection from
the Canadian Intellectual Property Office (CIPO) on the grounds of
confusion with Asta's BOD registration. In order to overcome
this citation, PDC applied to the Federal Court for an expungement
order pursuant to section 57 of the Trade-marks Act.
Section 57 permits the Federal Court to strike or amend trademark
registry entries that are not accurate in their expression or
definition of the existing rights of the person who appears to be
the registered owner of the mark.
PDC argued that Asta's registration was void or invalid
because it was obtained with a Declaration of Use that contained
either a fraudulent misrepresentation or a materially false
statement that was fundamental to the registration. The law in
Canada is that two types of misstatements can invalidate a
trademark registration: fraudulent, intentional misstatements, or
innocent misstatements that are material to the extent that without
them the registrant would not have overcome the barriers to
registration found in section 12 of the Trade-marks
The Court found that Asta's misstatement was potentially
negligent, but not fraudulent. As a result, for PDC to succeed in
having Asta's registration removed from the register, it would
be necessary to show that Asta obtained his amended registration
through material misstatement. The Court found, however, that an
over-broad misstatement is not sufficient to render a mark
unregistrable in connection with the wares with which it has
actually been used. The Court further distinguished Asta's case
from situations in which an owner had made no use of the trademark
at all at the date that the owner filed a Declaration of Use. In
such a case, amending the registration (which Asta had already
done, to limit it to shampoo and conditioner) could not repair the
essential flaw of the Declaration of Use.
PDC had urged the court to adopt the American approach to
erroneous statements of use. The United States Patent and Trademark
Office treats errors in the descriptions of the goods and services
used in association with a trademark as a "fraud on the
Office." The penalty for the transgression can be the denial
of an application or the cancellation of an existing
In rejecting PDC's submissions, the Court noted that
"while there is something initially attractive in the notion
that a material misstatement in the trademark process renders the
monopoly granted in the registration void, Parliament has not
embraced that principle and, absent an amendment to the
Trade-marks Act, this court will not do so." Further,
in commenting on the policy reason advanced by PDC in support of
adopting the U.S. doctrine - namely, that the risk of one's
entire registration being expunged provides an incentive to be
truthful in one's application - the court noted that the U.S.
doctrine leads to "draconian results for even an innocent
mistake." The Court preferred the Canadian approach, which
leads to more balanced and nuanced outcomes.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
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...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).