Trademark Of Foreign Owner Invalidated On The Basis Of Bad Faith

• Law Firm: McMillan LLP
• Subject Matter: Intellectual Property, Trademark
• Author: Ms Yue Fei and Pablo Tseng
• Published date: 31 March 2023

A trademark registration in Canada can be rendered invalid if the application for such registration was filed in bad faith.¹

In a previous bulletin of ours,² we noted that the Federal Court of Canada (the "Court") showed willingness to protect international brands from domestic "bad faith" actors. In the recent decision of Cheung's Bakery Products Ltd. v. Easywin Ltd.³ ("Cheung v. Easywin"), the Court demonstrated a similar willingness to protect domestic brands from foreign trademark owners who filed applications for trademark registrations in "bad faith".

Background

Cheung's Bakery Products Ltd. (the "Applicant") has operated a family-owned bakery business in Vancouver, British Columbia since 1974. As of the date of the decision in Cheung v. Easywin, the Applicant operated four stores in the Greater Vancouver Area in association with the following trademarks (collectively, the "Applicant's Marks"):

Easywin Ltd. (the "Respondent") and its related entities including Saint Honore Cake Shop Limited ("Saint Honore") engage in the manufacture, distribution and sale of bakery and other products in Hong Kong SAR, Macau SAR, mainland China, and other markets including Canada. Saint Honore was established in 1972 and operates a large chain of bakery stores in Hong Kong SAR.

On July 23, 2019, the Respondent obtained registrations in Canada for the following trademarks (collectively, the "Respondent's Marks", and their registrations, collectively the "Respondent's Registrations") for packaging containers, various food products including bakery products, and retail and wholesale services relating to the same:

Per the Respondent, the Respondent's Marks have been used in Canada since at least as early as August 2020 in association with the goods and services listed in the Respondent's Registrations.

The Applicant and the Respondent are direct competitors in Canada in the field of bakery goods and related services.⁴ The Applicant sought expungement of the Respondent Registrations on several grounds, including on the grounds that there is a likelihood of confusion between the Applicant's Marks and the Respondent's Marks and that the applications for the Respondent's Registrations were filed in bad faith.⁵

Federal Court's Analysis

The Court found that, at least in view of (i) the length of time the Applicant's Marks have been in use in Canada, (ii) the similarity of the parties' marks in appearance, sound, and in the ideas suggested, as well as (iii) the significant...