In Parfums de Coeur, Ltd. v. Christopher
Asta,1 the Federal Court confirmed the Canadian
treatment of "inadvertently" false declarations of use,
thereby distancing itself from the position taken by the United
States Patent and Trademark Office (USPTO), which defines fraud as
"occurring when a trademark applicant or registrant makes a
false statement to the USPTO regarding a material issue, resulting
in the issuance, maintenance or renewal of a trademark
registration, which may be sanctioned by the denial of an entire
application or the cancellation of an entire
Mr. Asta had filed a proposed use application for the trade-mark
BOD in association with several wares relating to hair care, skin
care, cosmetics and body care. In his declaration of use, he
declared having commenced use, either by himself or through a
licensee, of the trade-mark in Canada in association with the
trade-marks listed in the application. Registration of the
trade-mark ensued in due course.
Parfums de Coeur, Ltd. (PDC), an American distributor of body
mists bearing the trade-mark BOD MAN, contacted Mr. Asta to inform
him of its intent to initiate a procedure to have the BOD
registration cancelled. Accordingly, Mr. Asta filed an amendment to
his registration to reflect his actual use of the BOD trade-mark,
i.e., with shampoo and conditioner. Notwithstanding this amendment,
PDC sought the cancellation of the amended registration, which
registration the Trade-Marks Office deemed to preclude PDC from
obtaining a registration for the BOD MAN trade-mark in association
with perfume for men.
Mr. Asta declared that he thought that to the extent he had used
the trade-mark BOD in association with one of the wares listed in
the application, he could file a declaration of use covering all of
them. Justice Phelan concluded that although the declaration of use
had certainly been made erroneously, such a mistake was either the
result of a good faith mistake or of negligence. He reiterated the
previously2 stated rule to the effect that invalidity of
a registration could result from two types of false declarations:
(i) fraudulent, intentional misstatements; and (ii) innocent
misstatements that are material in the sense that without them the
Section 12 barriers to registration would have been
To the extent the application by PDC for cancellation of the
trade-mark registration was filed at a date when the original
trade-mark registration has already been amended to reflect actual
use by the registrant, Justice Phelan concluded that although
"clearly wrong," it was an innocent misstatement not
sufficient to make the mark unregistrable in relation to shampoo
McCarthy Tétrault Notes:
Whether it is at the time of preparing a trade-mark application
or filing a declaration of use, conveying the subtle nuances
between the lay meaning of what constitutes "use" and its
interpretation under the Trade-Marks Act is not an easy
task. Although the Federal Court has rejected denying the monopoly
granted by a trade-mark registration in the presence of a material
misstatement in the trade-mark process, the specific facts of this
case should serve as an additional reminder that this important
analysis must be subject to the necessary scrutiny by both clients
and their trade-mark agents.
1 2009 FC 21.
2 General Motors of Canada v. Moteurs
Décarie Inc.,  1 F.C. 665
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