In a recent decision of Canada’s Federal Court of Appeal, Masterpiece Inc. v. Alavida Lifestyles Inc. the Appellant sought to expunge the Respondent’s registered trademark MASTERPIECE LIVING pursuant to section 18(1)(a) of the Trade-marks Act alleging that it was unregistrable as of the date of registration because it was confusing with the Appellant’s use of the same mark or similar marks.
Both the Appellant and Respondent operated in the retirement residence industry. The Respondent applied to register MASTERPIECE LIVING on December 1, 2005 on the basis of proposed use and began using the mark in January 2006. The application was granted in March 2007. The Appellant alleged it had used a series of evolving trademarks with the word “Masterpiece” beginning in 2001, and began using MASTERPIECE LIVING either in December 2005 or February 2006, depending on which exhibit was consulted. It applied to register the mark on June 29, 2006, but the application was denied on the basis that the Respondent had already applied to register the mark.
Whether the Respondent’s mark was unregistrable as of the date of registration turned on section 16(3)(a) of the Trade-marks Act which allows an applicant who has filed on the basis of proposed use to secure its registration “unless at the date of filing of the application it was confusing with (a) a trademark that had been previously used in Canada or made known in Canada by another person”. Read more