A recent Federal Court decision has clarified the procedure for challenging erroneously registered trademarks. The Court held that once a mark has been registered, no appeal is possible. Rather, the challenger must institute expungement proceedings in the Federal Court. 299614 Alberta Ltd. v. Fresh Hemp Foods Ltd.
, 2013 FC 1245 (Dec. 11, 2013) (Zinn, J.).
The facts in this case are relatively straightforward. Fresh Hemp Foods Ltd. (Registrant) filed a Canadian trademark application for HEMP HEARTS & Design. 299614 Alberta Ltd. (Opponent) opposed the application and filed evidence in support of the opposition. The Trade-marks Opposition Board (TMOB) acknowledged receipt of the Opponent’s evidence but erroneously closed the opposition, believing it had been withdrawn. Consequently, the mark was registered as a result of the TMOB’s error.
The Opponent appealed the decision to register the trademark to the Federal Court under Section 56(1) of the Trade-marks Act (RSC 1985, c. T-13). The judge dismissed the appeal, stating in his reasons that “the only way to remove a trade-mark from the register is to initiate expungement proceedings under section 57.” This follows an earlier decision (Sadhu Singh Hamdard Trust v. Registrar of Trade-Marks
, 2007 FCA 355 (Nov. 2, 2007)) in which the Federal Court of Appeal held that “once a mark is registered, it can only be challenged on substantive grounds.” In 299614 Alberta Ltd. Judge Zinn relied on the Sadhu Singh
decision to support the holding that “there is no right of appeal under section 56 once [a] trade-mark is registered.” He distinguished a previous case (Ault Foods Ltd v. Canada
(Registrar of Trademarks),  1 FC 319 (Dec. 1, 1992)) in which the Federal Court of Appeal set aside the Registrar’s decision to allow a mark to proceed to registration on the basis that the mark had not yet been registered.
Sections 56(1) and 57 of the Trade-marks Act provide as follows:
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
(2) No person is entitled to institute under this section any proceeding calling into question any decision given by the Registrar of which that person had express notice and from which he had a right to appeal.
The judge was sympathetic to the Opponent, stating his regret that there was “no cost-effective and expeditious way to correct the [Trade-marks Office’s] error.” Through no error on its part, the Opponent lost access to the simplified opposition procedure before the TMOB, along with the many formal and procedural grounds of opposition not available under the more formal expungement procedure before the Federal Court. The judge, however, awarded costs of the proceeding against the Opponent. As of this writing, the Opponent has not filed a further appeal with the Federal Court of Appeal, which appeal is available to the Opponent as of right.
It is noteworthy that legislation allowing for correction of “obvious errors” in the Canadian trademarks register by the Registrar within six months of registration is pending in Canada’s Parliament. The error correction provision is contained in Section 41(3) of Bill C-8, the “Combating Counterfeit Products Act,” which was summarized previously in these pages (see “Association Testifies Before Canadian Parliament on Anticounterfeiting Bill
” and “Combating Counterfeit Products Act and CETA
,” INTA Bulletin
, vol. 68, no. 22, Dec. 1, 2013).
Until the above legislation is implemented and applied to such circumstances or the trial decision is reversed, those dealing with the Canadian Trade-marks Office should consider added efforts to monitor and report errors in the files kept by the Office prior to registration.
Although every effort has been made to verify the
accuracy of items in the INTA Bulletin, readers are urged to check
independently on matters of specific concern or interest.
© 2014 International Trademark Association