The Best Defence Is a Good Offence: How to Get Rid of Threatening Trademark Registrations

Written By Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan

In Ontario cottage country, locals have been confronted with the registration of the trademark HALIBURTON, the name of the county in which they operate. The registration may threaten uses made by other businesses in the area. What can be done in a situation like this?

Before registration, a trademark can be challenged in opposition proceedings before the Trademarks Opposition Board. Once registered, and as long as the trademark is being used properly, it can only be expunged from the register in litigation proceedings before the Federal Court of Canada. A registration can be expunged if the trademark lacks distinctiveness, is confusing with other trademarks, or clearly describes the place of origin of the goods or services.

IP Type

Trademarks

Summary

Haliburton is a county in central Ontario, in the heart of cottage country. County leaders recently learned that a local resident had obtained a trademark registration for HALIBURTON in association with a range of souvenir items such as sunglasses, beach towels and key fobs. One can imagine that residents are concerned the owner of the registration could assert the mark against local Haliburton businesses that brand or describe their goods and services by location. The county now must find itself asking a question that has confronted many businesses: how can a trademark registration be expunged?

A trademark that has been registered for at least three years can be cancelled in proceedings before the Canadian Intellectual Property Office Trademarks Board, but only on the basis of non-use. Otherwise, once a trademark has been registered, only the Federal Court of Canada has jurisdiction to expunge a trademark registration. Members of parliament and other elected officials have no ability or influence to remove a trademark from the register.

An expungement proceeding is an offensive move against registered trademark owners, and often the only way to remove the threat of a registered trademark that could otherwise be asserted to prevent another party’s use or registration. A proceeding may start with a statement of claim (if additional relief under the Trademarks Act is sought) leading to an action, or an originating notice of motion, which can proceed by way of an application, without live witnesses, argued on a  paper record. The trademark will be removed from the register if the challenger can prove the trademark’s entry on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark. The grounds may include lack of distinctiveness, confusion with a pre-existing trademark, and that the trademark is clearly descriptive of the place of origin of the goods or services in question. If the trademark owner sues first, the defendant can counterclaim on the same bases.  

The HALIBURTON registration brings to mind Lum v. Dr. Coby Cragg Inc., 2015 FCA 293. This was a dispute between two dental practices, both of which operated in an area of British Columbia commonly known as Ocean Park. One business registered OCEAN PARK as a trademark; the other challenged the registration. The Federal Court of Appeal expunged the OCEAN PARK registration on the basis that a service provider is not entitled to monopolize the name of a geographic location so as to prevent other local traders or service providers from using that word to actually describe where their own services are provided. Similarly, in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, the Federal Court of Appeal upheld a lower court decision that expunged a registration for LINGAYEN, a municipality in the Philippines known for its bagoong shrimp paste products, on the basis that it was clearly descriptive of the place of origin.

For further information on how to protect and enforce your intellectual property rights, contact Dominique Hussey, Jeilah Chan, or another member of the Intellectual Property Litigation team.

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