A recent decision in the Federal Court confirms that the court will not expunge a registration for an alleged technical breach of the Trademarks Act.
The Facts
Anheuser-Busch, LLC ("Anheuser") owns the registered trademark GRAB SOME BUDS for use in association with beer. Anheuser commenced an action for infringement against Coors Brewing Company and Molson Canada 2005 ("Molson Coors") alleging that their use of the trademark GRAB SOME STONES in association with beer was infringing of Anheuser's trademark. Molson Coors defended the action and brought a separate application in the Federal Court to the expunge Anheuser's registration.
The Application
When Anheuser applied for its trademark it did so, on the basis of proposed use since they had not yet used the mark in Canada nor had they obtained a U.S. registration. While the Canadian application was outstanding Anheuser obtained a U.S. registration for the mark and amended the Canadian application to remove the proposed use claim and substitute a claim based on registration and use in the U.S.
At the time of the amendment Anheuser had commenced using the mark in the U.S. but they had not commenced use in the U.S. at the time they filed the initial application.
The Attack
Molson Coors asserted that in order to support a claim to register a trademark based on registration and use in the U.S. the mark must be in use on the filing date of the application. Anheuser responded by asserting that the operative date should be the date that the amendment was made.
There has been some concern among trademark lawyers that the latter position was not correct, particularly in light of some comments and other decisions of the Federal Court. But the issue has not been finalized by the courts.
The Decision
The motion judge did not decide who was right on this particular issue but instead referred to existing case law decided in context of expungement proceedings.
The Act and the case law establishes that:
1. There are four statutory grounds for invalidity: (a) non-registrability, (b) non-distinctiveness; (c) abandonment, and (d) non-entitlement.
2. In addition, misstatements in a trademark application may serve to invalidate a registered trademark in two circumstances: (a) where the misstatement was intentional and fraudulent, and (b) where the misstatement was innocent but fundamental to the registration, in the sense that the registration could not have been secured without the misstatement.
In this case Anheuser had not said that it had used its trademark when in fact it had not. In addition, at the time of the amendment the facts set out in the amendment were true.
When these principles were applied the judge found that there was no misstatement, let alone a fundamental one, that could form the basis of a ground of invalidity. As a result the application for expungement was dismissed.
Comment
The issue concerning whether an application can be amended to rely on foreign registration and use in the circumstances of this case will become academic when the current amendments to the Trademarks Act are brought into force. However, in the interim it may not be advisable to proceed in this fashion since it is still open to advance such an argument in the context of the trademark opposition where there is no necessity to show a material misstatement.
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