The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material mistatement in the processing of a registation renders the entire resulting registration void.
In Parfums de Coeur, Ltd. V. Asta the respondent individual filed a trademark application in 1999 based on proposed use of the trademark BOD in association with wares identified as “hair care, namely shampoo conditioner, treatment, styling aids, hairsprays, hairpolish, perms, … .” The respondent subsequently filed a Declaration of Use signed February 12, 2004 declaring that by himself or through a licensee he had commenced use of the trademark in association with all the listed wares. The applicant began selling body sprays in Canada in association with the trademark BOD MAN as early as 2002, but when it sought registration in Canada, the respondent’s mark was cited against it. When challenged regarding his Declaration of Use, the respondent amended the list of wares to read only “hair care, namely shampoo, conditioner”.
Although the evidence of use contained numerous flaws, Justice Phelan was satisfied it showed use of BOD in association with shampoo and conditioner since early 2001. As for the Declaration of Use, it was overly broad, but there had been use with the wares set out in the amended application.
General Motors of Canada v. Decarie Motors Inc. had held that a registration could be invalidated if there was a fraudulent, intentional misstatement or a misstatement the absence of which would have rendered the barriers to registration in section 12 (use of a name, use of geographcial designation, confusion with a registered mark, etc.) insurmountable. Applying this test Justice Phelan was not satisfied that the respondent’s registration could be invalidated. While the U.S. doctrine appeared “initially attractive”, Canadian law allows for an amendment “where the misstatement is innocent and in good faith”.