Problems When Expunging A Trademark Registration!

• Published date: 12 August 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Goldman Sloan Nash & Haber LLP
• Author: Mr John McKeown

A recent decision of the Federal Court, affirmed by the Federal Court of Appeal, scrutinized the applicant's evidence relating to an application to expunge a trademark registration, and relied on the presumption of validity to dismiss the application. For all those interested in bringing such a proceeding these decisions serve as a warning to devote time and effort to gather the necessary evidence.

The Trademarks Act gives the Federal Court exclusive original jurisdiction, on the application of any interested person to order that entry in the register be struck. Most frequently interested parties proceed by way of application. An application is heard and determined on evidence introduced by way of affidavit unless the Court otherwise directs.

The burden of proof in such proceedings is on the party seeking to expunge. The registrant benefits from a presumption that its registration is valid, and the onus remains on the attacking party. In the past this presumption has been characterized as weakly worded since it adds little to the onus already resting, in the usual way, on the attacking party. It means that an application for expungement will succeed only if an examination of the evidence presented to the Court establishes that the trademark was not registrable at the relevant time. There is nothing more to be made of the presumption of validity.

The Application to Expunge

The trademarks HORLICK'S and HORLICKS are owned by GlaxoSmithKline Consumer Healthcare (UK) IP Limited ("GSK") and were registered in 1917 and 1952 respectively. The Bedessee Imports Ltd. ("Bedessee") applied to the Federal Court to have the GSK registrations expunged. Bedessee claims that the trademarks were not registrable at the date of registration, are not distinctive, and have been abandoned.

The Facts

The products associated with the HORLICKS Marks (HORLICKS Products) are malted beverage products originally developed in the United States by the Horlick brothers around 1873. HORLICKS branded goods continue to have strong sales in several countries, most notably in India.

The HORLICK'S trademark (with the apostrophe) was registered in Canada in 1917 to Horlick's Malted Milk Company. The trademark owner ceased using the apostrophe and the HORLICKS trademark was registered to Horlicks Limited in 1952.

Since then the HORLICKS Marks have been assigned several times because of mergers and acquisitions. The marks are owned by GSK which acquired the marks from Glaxo Group Limited on July 12 2016.

Before 2016, HORLICKS Products were sold in Canada to distributors and retailers by GlaxoSmithKline Consumer Healthcare Inc. and its predecessors, under the authorization of predecessors of GSK. The dollar value of sales of HORLICKS Products in Canada ranged from approximately $300,000 to $1,000,000 from 2005 to 2015, inclusive.

In 2015, the...