Trademark Troll Loses Registration After Appropriating Well-known Mark

• Published date: 14 June 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Smart & Biggar
• Author: Mr Reagan Seidler and Daniel Anthony

The Federal Court of Canada, in a May 2022 decision,¹ has ordered a B.C. man's trademark registration be expunged for "bad faith" after finding it was filed solely for the purpose of re-sale. This is the first decision in Canada applying the new bad faith ground for trademark expungement, added to the Trademarks Act in 2019.

The trademark registration in question copied the logo of well-known restaurant chain in China with whom the applicant had no affiliation.

Brand owners will welcome the decision as confirming Canada's stance against would-be trademark squatters. The decision also highlights the benefit of monitoring advertised marks in Canada for opposition purposes, which provides a less expensive route to blocking bad faith applications before they get registered.

Background

Beijing Judian is the owner of a popular restaurant chain in China. Building on its profile at home, the chain expanded to Canada in 2018 with initial locations in B.C. and Toronto. Among the trademarks used at these restaurants is the following JU DIAN & Design:

Unbeknownst to Beijing Judian, a man named Wei Meng had previously applied to register this mark in Canada in June 2017 (along with the logos of several other popular Asian restaurant chains). Since the application was unopposed before the Trademarks Office, it proceeded to registration in April 2019.

One week after obtaining registration, Meng visited a Beijing Judian-affiliated restaurant in Vancouver and demanded to speak to the owner. Finding a manager, Meng told her Beijing Judian "stole his trademark" and insisted he had "the paperwork in Canada" for the same. This was followed by a demand of $1.5 million to acquire the mark in a subsequent meeting. Meng then sent a letter stating he would contact the "registry department" and the Canadian Revenue Agency if Beijing Judian did not stop using the JU DIAN Trademarks within one week.

The company refused. Within a month, Beijing Judian became aware that Meng was advertising the sale of the registration online. In response to an inquiry sent by a contact of Beijing Judian, Meng acknowledged Beijing Judian was a well-known brand:

"If you open a store with no reputation, you'll lose even more money ... You can search JuDian Chuan Ba on Baidu and you will see how many stores are in Beijing. Anyone in the industry knows powerful brands attract customers."

In March 2021, Beijing Judian filed an application to the Federal Court of Canada seeking to strike Meng's...