Federal Court of Appeal Decisions

Date: 20151007

Docket: A-134-15

Citation: 2015 FCA 215

Heard at Montréal, Quebec, on October 7, 2015.

Judgment delivered from the Bench at Montréal, Quebec, on October 7, 2015.

Date: 20151007

Docket: A-134-15

Citation: 2015 FCA 215

REASONS FOR JUDGMENT OF THE COURT

(Delivered from the Bench at Montréal, Quebec, on October 7, 2015).

NADON J.A.

[1]               We are all agreed that the appeal must succeed.

[2]               There can be no doubt that in order to obtain the ab initio invalidation of a registered trade-mark, it is necessary to show that the owner of the impugned trade-mark obtained the registration of the mark either by making a misrepresentation to the trade-mark office or misleading it in a material way (see Remo Imports Ltd. v. Jaguar Cars Limited et al, 2007 FCA 258, at paras. 54 and 62 and Coors Brewing Company et al v. Anheuser-Busch, LLC, 2014 FC 716 at para. 38).

[3]               In the present matter we see nothing in the pleadings which could give rise to such a determination.

[4]               Consequently, on the basis of the existing pleadings, it was an error on the part of the Judge to find, as he did at paragraph 31 of his reasons, that the appellants had “engaged in wilful and negligent representations in the registration process”.

[5]               Thus, the Judge erred in not interfering with the Prothonotary’s order of November 5, 2014.

[6]               For these reasons, the appeal will be allowed with costs, the judgment of the Federal Court dated March 2, 2015 will be set aside and rendering the decision which ought to have been rendered, the respondent’s motion for production of an itemized breakdown by date and sell amount of the appellants’ revenue, as of April 1, 2008, will be dismissed with costs.

"Marc Nadon"

FEDERAL COURT OF APPEAL

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