Protecting International Brands: Bad Faith Filing Leads To Expungement Of Trademark Registration

• Published date: 07 July 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: McMillan LLP
• Author: Ms Yue Fei, Pablo Tseng and ZiJian Yang

A trademark registration in Canada is invalid if the application for registration was filed in bad faith.¹

In the recent decision of Beijing Judian Restaurant Co. Ltd. v Wei Meng,² the Federal Court (the "Court") explored the legislative intent behind this relatively new provision³ and the criteria for invalidating a trademark registration on the basis of bad faith, and demonstrated its willingness to protect international brands from bad faith actors.

Background

Beijing Judian Restaurant Co. Ltd. (the "Applicant") operates a well-know chain of barbeque bar restaurants in China. Trademarks incorporating (i) the JU DIAN characters (??) in written and design form, (ii) an English stylized character design for the word "Partybase", and/or (iii) a circle design (collectively, the "JU DIAN Marks") have been heavily used to promote and in association with the Applicant's restaurant services in China. The JU DIAN Mark incorporating all three elements is shown below:

Since 2011, the Applicant has also used the JU DIAN Marks on its social media accounts to promote its restaurant services to the Chinese population in and outside China.

In November 2017, the Applicant applied to register the following trademark in Canada, which incorporates the JU DIAN characters (the "Canadian JU DIAN Mark"):

In May 2018, the Applicant opened its first restaurant in Canada in Vancouver, British Columbia. It opened a second restaurant in Richmond, British Columbia in 2019. The Canadian restaurants display and use the Canadian JU DIAN Mark.

Unbeknownst to the Applicant, an unrelated third party (the "Respondent") had applied to register the following trademark in Canada prior to November 2017, in association with "restaurant services; take-out restaurant services" and "beer" based on proposed use (the "Respondent Mark"):

Notably, the Respondent Mark is nearly identical to the JU DIAN Mark shown above.

Around and after the time the Respondent Mark was registered (on April 25, 2019), the Respondent approached the Applicant several times, first demanding that the Applicant pay the Respondent $1.5 million to acquire the registration for the Respondent Mark, then alleging that the Applicant had committed trademark and copyright infringement, then putting the Respondent Mark up for sale, then attempting to license the Respondent Mark at a fee of $100,000 annually, and lastly opposing the Applicant's application to register its Canadian JU DIAN Mark. In response, the Applicant sought to...