Comments on: In Canada, Fraud on the Trademarks Office Requires Actual Fraud – Court Rejects U.S. Doctrine

By: LIKELIHOOD OF CONFUSION® | Canada: Courts can distinguish TM fraud from error | Ron Coleman

Tue, 24 Nov 2009 21:33:16 +0000

[...] 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. . . . [...]

By: Meg Langley Grainger

Meg Langley Grainger — Tue, 17 Mar 2009 02:19:03 +0000

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.

By: Larry Munn

Larry Munn — Thu, 05 Feb 2009 20:04:34 +0000

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

By: George Rolston

George Rolston — Thu, 05 Feb 2009 19:46:33 +0000

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

By: Larry Munn

Larry Munn — Thu, 05 Feb 2009 18:19:38 +0000

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”.

By: George Rolston

George Rolston — Thu, 05 Feb 2009 14:52:13 +0000

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