December Case Law
There were three cases out of the Federal Court in December 2006 that are of interest.
In Omega Engineering, Inc. v. Omega SA, 2006 FC 1472, the Applicant was the owner of the trade-mark OMEGA and three related marks for use in association with scientific and industrial clocks and timers, amongst other measuring instruments used in science and industry. The Respondent was the owner of the mark OMEGA & Design for use in association with, among other things, “appareils techniques et scientifiques pour l’électricité, l’optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie, nommément: la cellules photo-électriques, portails à contact, compteurs enregistreurs sur bande de papier, pistolets de start à contacts électriques” (roughly translated as “scientific and technical instruments for electricity, optics, the cinema, radio, telegraph and telephone, namely photocells, contact points, recording meters on paper tape, starting guns with electrical contacts”). The Applicant sought to have the registration for OMEGA & Design amended to change the general description to another general classification or, alternatively, have the mark removed from the Register on the basis that it had been abandoned.Â Interestingly, the Respondent had registered its mark in 1895 and had commenced separate opposition proceedings as against the Applicant. The Applicant had initially brought a section 45 proceeding (“non-use”) seeking to expunge the registration for OMEGA & Design. That application proceeded to the Federal Court of Appeal where the Court found that the mark could not to be expunged for non-use and that the trial judge could not amend the statement of wares on a section 45 proceeding.
The Applicant’s further application also failed. The Court held that there was evidence that the Respondent’s wares fell within the general classification and it was not open to the Court on a section 57 proceeding to substitute another general description of the wares. The latter could only be achieved in the course of opposition proceedings. The Court also concluded that the Respondent’s mark had not been abandoned and that there was use of OMEGA & Design with the specific wares that followed the general classification.
In International Taekwon-Do Federation et al. v. Choi et al., the International Taekwon-Do Federation (ITF) and its Canadian affiliate, the Canadian Taekwon-Do Federation International (CTFI), brought a section 57 (expungement) application arguing that the trade-marks registered by the Respondents were invalid (TAE KWON-DO & Design, along with 3 others). The Respondents were a former officer of the ITF and a joint venture between him and his father, the original founder of the ITF. The Court agreed that the marks were invalid, noting that the Respondents were not entitled to register the trade-marks because they would be confusing with marks that had been previously used by the Applicants. Also, any use that the Respondents might have made of the marks would have been use on behalf of the Applicants given that the individual Respondent and his father were officers of the ITF and had a fiduciary duty towards it. Moreover, the marks could not be said to be distinctive of the Respondents’ wares or services given the Applicants’ prior use of the same marks. The Court also noted that an importer or agent has no right to register a trade-mark owned by a foreign principal under his own name and for his own benefit. In this regard, the Court relied on Citrus Growers Assn. Ltd. v. William D. Branson Ltd. (1990), 36 C.P.R. (3d) 434.
In Jagotec AG v. Riches, McKenzie & Herbert LLP, the Applicant successfully appealed a decision of the Registrar of Trade-marks to expunge its mark under section 45 for non-use. On the Appeal, the Applicant was entitled to file additional evidence that was not before the Registrar of Trade-marks. Although the evidence was from the original owner of the mark and not the Applicant itself, there was evidence that in the three years prior to the section 45 proceeding being commenced, the trade-mark was used through the sale of the wares in Canada in containers or packages bearing the words VISIBLE YOUTH.