New Evidence Of License Agreement Unable To Secure ASIA MILES Trade-mark Registrations

On October 12, 2016, Justice Southcott issued his Judgment and Reasons and Cathay Pacific Airways Limited v. Air Miles International Trading B.V., 2016 FC 1125.

Background

The case originated from a Trade-marks Opposition Board decision refusing five of Cathay's ASIA MILES trade-mark applications (1,271,320, 1,271,440, 1,271,441, 1,276,725 and 1,276,720) for registration in association with the operation of a loyalty reward program and various other wares and services. The TMOB initially refused the applications because the terms of the alleged license agreement between Cathay Pacific and its wholly-owned subsidiary, CPLP, were unclear. As a result, Cathay Pacific was unable to show that it exerted control over the mark used by CPLP. As a result, any use of the mark by CPLP did not accrue to Cathay pursuant to section 50 of the Trade-marks Act.

Cathay's appeal was heard by Justice O'Reilly, who held that the TMOB's finding that Cathay did not benefit from the use of the trade-mark by CPLP was unreasonable. In light of this finding, Justice O'Reilly held that he did not need to consider the additional evidence filed pursuant to section 56 of the Trade-marks Act and remitted the matter back to the TMOB to reconsider Cathay's applications.

Cathay appealed and Air Miles cross-appealed. The Court of Appeal dismissed Cathay's appeal, but allowed Air Miles' cross appeal, holding that Justice O'Reilly, while purporting to apply a reasonableness standard of review, improperly applied a correctness standard. The Court of Appeal then remitted the matters raised in the appeal back to a different Federal Court judge.

Justice Southcott's Reasons

In the redetermination, Justice Southcott refused all five...