Canadian Trademarks Year In Review 2021 - Appeals From The Registrar Of Trademarks

Published date02 March 2022
Subject MatterIntellectual Property, Trademark
Law FirmGowling WLG
AuthorMs Monique M. Couture and Nathan Piché

Looking for more insights? This resource is part of a five-installment series. Click here to read our Canadian trademark law year in review for 2021.

Appeals from the registrar of trademarks

Geox S.P.A v. De Luca, 2021 FCA 178

This Federal Court of Appeal decision provides guidance in Section 45 proceedings relating to the importance of vigilance in drafting and updating licensing agreements, and of ensuring that the owner maintains control over the character and quality of the goods or services provided by the licensee.

Geox S.p.A. appealed the Federal Court decision dismissing its appeal of a decision by the Registrar upholding the ANFIBIO & Dessin trademark registration. Geox S.p.A. challenged the validity of the registration on the basis that De Luca's licensee used a variant of the trade-mark and not the registered mark, and that it did not use the mark in association with the goods "boots" or "shoes."

In upholding the Registrar's decision, the Federal Court found that use of a variant of a mark may constitute valid use of a registered trademark where the deviation from the registered design does not change the distinctiveness of the registered mark in that the mark retains its dominant features and remains recognizable. The Federal Court was not convinced that the variant mark consisted of anything more than a slight variation and held that the variant mark retained the registered mark's dominant features.

Similarly, the Federal Court was not convinced by Geox S.p.A's argument that because the License Agreement did not specifically allow the Licensee to create and use variants of the Mark, that use of a variant could not constitute use of the licensed mark. Geox S.p.A. also challenged the license's quality control provisions.

However, as the licence agreement did have quality control and related termination provisions, and that royalties had been paid throughout, the Federal Court was satisfied that there was implicit consent to use of the variation of the mark, and that this use enured to the trademark owner in association with boots.

This cases raises the notion of vigilance in licensing marks, both in terms of the licensing agreement itself, and of supervising and approving the ongoing use. Modifications of the mark will always be more risky than using the mark as registered.

The Federal Court of Appeal dismissed the appeal with costs.

Tokai of Canada Ltd. V. Kingsford Products Company, LLC, 2021 FC 782

This decision serves as a reminder about the care that must be taken when designing and carrying out surveys.

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