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Appeal Court Dicta

Trademarks - Invalidity

. Group III International Ltd. v. Travelway Group International Ltd.

In Group III International Ltd. v. Travelway Group International Ltd. (Fed CA, 2020) the Federal Court of Appeal considered trade-mark invalidity law and when it applies:
When registration invalid

18(1) The registration of a trademark is invalid if

(a) the trademark was not registrable at the date of registration;

(b) the trademark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced;

(c) the trademark has been abandoned;

(d) subject to section 17, the applicant for registration was not the person entitled to secure the registration; or

(e) the application for registration was filed in bad faith.
[35] I cannot accept the arguments advanced by the appellants regarding their interpretation of subsection 18(1) of the Act and invalidity ab initio.

[36] When considering the grounds of invalidity under subsection 18(1) of the Act, each paragraph points to a time at which the determination of invalidity of the registered trademark is to be assessed. This determination of the point in time at which the invalidity of a registered trademark ought to be assessed is distinct from the determination of when a party may become liable for damages. In expungement proceedings under subsection 57(1) of the Act, liability for damages is engaged only after the Federal Court has struck out the trademark from the Register. Absent a finding of fraud, wilful misrepresentation or bad faith in the application for registration, the owner of the registered trademark is not liable for any damages accruing prior to the expungement of its trademark.

[37] If there is a finding of fraud, wilful misrepresentation or bad faith in the application for registration, the Court may very well find that the impugned trademark was never validly registered. This Court has found that in order to obtain an ab initio invalidation of a registered trademark, it is necessary to show that the owner of the impugned trademark obtained the registration of the mark either by making a misrepresentation to the trademark office or misleading it in a material way (see Concierge Connection Inc. v. Venngo Inc., 2015 FCA 215, 140 C.P.R. (4th) 325 (F.C.A.)).

[38] In the present case, neither this Court nor the Federal Court made any such findings. The respondent could rely on its registrations as protection until such time as the Federal Court expunged its trademarks from the Register.

[39] In summary, as this Court found in Remo and as was implied in Veuve Clicquot, I am of the view that absent fraud, wilful misrepresentation or bad faith, the declaration of infringement does not render the respondent liable to pay damages or a loss of profits to compensate the appellants for the period during which the registrations were in effect.


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