An update on a battle we previously blogged about: the fight between, in one corner, Hyundai Auto Canada, a division of Hyundai Motor America (“Hyundai Canada”); and in the other corner, Cross Canada Auto Body Supply (West) Limited, Cross Canada Auto Body Supply (Windsor) Limited and AT Pac West Auto Parts Enterprise Ltd. (together, for the sake of brevity, the “Resellers”).

You may recall that in that case, the Resellers were re-selling automotive parts and accessories, including Hyundai automotive parts and accessories, in Canada. The Resellers sought expungement of five Hyundai-related marks in Canada owned by Hyundai Canada, claiming that all of the marks were non-distinctive, and further claiming that three of the marks had been abandoned.

(This central action spawned several others: in one, Hyundai Canada sought – though ultimately failed to obtain – an injunction to preclude the Resellers’ use of the Hyundai-related marks on the automotive parts packaging they offered for sale.  Other related actions included disagreements over the production of documents, and the appropriateness of photocopying and other charges.)

The Federal Court Trial Division rejected the Resellers’ allegations of non-distinctiveness, along with two of the three abandonment claims. However, the Court did conclude that one of the marks had been abandoned, and should be expunged. On appeal to the Federal Court of Appeal, that Court found no palpable or overriding error in the Federal Court’s decision, and accordingly dismissed the Resellers’ appeal.

Now, we have what is likely the final chapter in this story: yesterday, the Supreme Court of Canada announced its dismissal of the leave to appeal sought by the Resellers – with costs – apparently bringing this matter to an end.

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Jeffrey Vicq is a Partner and co-chair of the Intellectual Property and Information Technology practice groups at Clark Wilson. A lawyer and registered Canadian Trademark Agent, Jeffrey has written and spoken extensively on IP and commercial law issues relating to the Internet and to e-commerce in Canada.