Don't POKE A Trademark Unless You Have Sufficient Evidence To Invalidate It

• Published date: 05 May 2020
• Author: Mr Scott Foster and Nicholas James
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Gowling WLG

Beyond Restaurant Group LLC v Wang, 2020 FC 514

Proving non-use of a third party's mark can be a difficult exercise in evidence gathering. It is often said that it is hard to prove a negative. Indeed, the aphorism "absence of evidence is not evidence of absence" comes to mind. However, when it comes to court proceedings where evidence is assessed according to legal and evidentiary burdens, one cannot rely upon aphorisms and idioms. One has to prove its case with evidence. The recent POKEWORKS decision from the Federal Court of Canada is a cautionary reminder that the burden remains on the moving party and if you fail to meet the burden, you may lose your proceeding when otherwise you could have prevailed.

In Beyond Restaurant Group LLC v Wang, 2020 FC 514, the Applicant, Beyond Restaurant Group LLC ("BRG"), applied to invalidate the POKEWORKS trademark registered in the name of the Respondent, Qiang Wang ("Mr. Wang"). BRG faced no challenge as Mr. Wang did not appear or contest the proceeding. Nevertheless, BRG failed to invalidate the POKEWORKS registration because of evidentiary shortcomings in the eyes of the Court. In her decision, Madam Justice Fuhrer, a trademark lawyer before she joined the bench, dissected the evidence and considered it to be inadequate. She therefore dismissed the application and refused to invalidate the POKEWORKS registration.

In this article, we will describe some of the evidentiary missteps of BRG. This will provide a useful learning experience for the reader and also allow the reader to prepare cases in the future without making the same mistakes.

Overview of the facts

As in most trademark invalidity proceedings, the dates of first use and the dates of the filed applications are important. In the present case, Mr. Wang filed a trademark application for POKEWORKS in October 2016 based on proposed use in association with restaurant services, including sit-down services of food and take-out restaurant services. In November 2017, Mr. Wang filed a Declaration of Use, resulting in the registration of the POKEWORKS mark.

BRG opened a restaurant in Vancouver, Canada, in 2017 using the identical mark, POKEWORKS. On September 26, 2017, BRG filed an application to register POKEWORKS based on use since September 25, 2017, for restaurant services, including sit-down services of food and take-out restaurant services. Although Mr. Wang filed his application first, BRG apparently used the POKEWORDS mark first in Canada.

On July 22...