In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine
The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material mistatement in the processing of a registation renders the entire resulting registration void.
In Parfums de Coeur, Ltd. V. Asta the respondent individual filed a trademark application in 1999 based on proposed use of the trademark BOD in association with wares identified as “hair care, namely shampoo conditioner, treatment, styling aids, hairsprays, hairpolish, perms, … .” The respondent subsequently filed a Declaration of Use signed February 12, 2004 declaring that by himself or through a licensee he had commenced use of the trademark in association with all the listed wares. The applicant began selling body sprays in Canada in association with the trademark BOD MAN as early as 2002, but when it sought registration in Canada, the respondent’s mark was cited against it. When challenged regarding his Declaration of Use, the respondent amended the list of wares to read only “hair care, namely shampoo, conditioner”.
Although the evidence of use contained numerous flaws, Justice Phelan was satisfied it showed use of BOD in association with shampoo and conditioner since early 2001. As for the Declaration of Use, it was overly broad, but there had been use with the wares set out in the amended application.
General Motors of Canada v. Decarie Motors Inc. had held that a registration could be invalidated if there was a fraudulent, intentional misstatement or a misstatement the absence of which would have rendered the barriers to registration in section 12 (use of a name, use of geographcial designation, confusion with a registered mark, etc.) insurmountable. Applying this test Justice Phelan was not satisfied that the respondent’s registration could be invalidated. While the U.S. doctrine appeared “initially attractive”, Canadian law allows for an amendment “where the misstatement is innocent and in good faith”.
This entry was posted by Larry Munn on Tuesday, February 3rd, 2009 at 4:27 pm and is filed under Case Law, Registration. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.
6 Responses to “In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine”
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I read this with great interest. It has a direct bearing on an opposition I am handling
However, I am not sure about your headline
NO DOCTRINE OF FRAUD etc…
Do you not think that this is somewhat overstating things ?
The GM case para 18 states what I take to be settled law;
“A registration can be invalidated by two kinds of mis-statement;
1. fraudulent intentional mis-statements, and
2 mis-statements that may be innocent but are a material in the sense that, without them, the Section 12 barriers to registration would have been insurmountable.”
That GM case held that the mis-statements, in theDecarie file were NOT fraudulent. There was NO fraud.
So I conclude that GM case did not decide there is NO doctrine of fraud on the Trade Marks Office. Simply that there was NO fraud .
The Asta case merely decides the same point, namely that there was no FRAUD in the Declaration of Use.
Conclusion;
If in these two cases there was no fraud, Then neither case can decide that fraud is not an issue in the Trade Marks Office.
George Rolston
Fair comment and thank you for pointing this out. I was hesitant to say there is a “doctrine” in Canada particularly when the Canadian law is quite different. But we will change the title to “In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine”.
Larry,
Thank you for your generous response.
But I think that the law does not require “actual” fraud in every case.
The GM case speaks of two kinds of mis-representations.
1. Is fraud.
2. Is a non fraudulent mis-representation, which is significant and material, and without which the Section 12 objections would have refused the registration.
This may seem like splitting hairs, in any particular case.
It may be difficult to conceive of a mis-representation , which was both material, AND non fraudulent. It would probably be more likely to happen where the applicant files his own application, without the advice of an agent.
OR as in the GM and the Asta cases, where the applicant simply signed the Declaration and mailed it back, without truly understanding its significance.
However we as agents must deal with the law as we find it, hairs and all, and not as we might like it to be.
George Rolston
George,
My difficulty seems to be that the Canadian test does not lend itself to a simple title. It is more subtle than that and the GM case should be consulted. Your in put is helpful.
Larry
I struggled with the equity implications of this case with respect to third parties’ rights.
Although Phelan J held that Mr. Asta was clearly wrong in believing he had been entitled to file a Declaration in respect of all the Original Wares, because Mr. Asta had amended his registration to delete the wares for which there had been no use, the court was not prepared to deprive Mr. Asta of the trade mark with respect to shampoo and conditioner, “to which he has a legitimate basis of right.”
In this case, the result may have been just. But what about the not-so-innocent applicant who claims broadly, and then amends his registration only when challenged? The overly broad registration would stand on the register as a potential barrier to third parties, and the lack of penalty means there’s little disincentive for an individual to “accidentally” sign a false declaration of use.
[...] Larry Munn: The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material misstatement in the processing of a registration renders the entire resulting registration void. . . . [...]