In this case, the Applicant sought expungement of the Respondent’s trade-marks from the Register. The Applicant had used its mark since 1997, whereas the Respondent applied for its marks in 2002 and became the registered owner of them in 2009. The Applicant applied for its mark in 2005; however, this application was refused due to the Respondent’s marks. The Court ordered that the registrations were invalid and should be struck from the Register.
The Court held that a person who has used and registered a trade-mark in its country of origin is entitled to register it in Canada unless another person in Canada previously used a confusingly similar trade-mark or trade-name. The burden lies on the challenger to displace the presumption that the registrations are valid in this case. The Court held that although there were problems with some of the Applicant’s evidence, there was good evidence of use prior to the filing of the Respondent’s trade-marks. The Court then held that the marks were confusing. Therefore, the Respondent’s registrations were invalid because it was not the person entitled to register them.
The Court did dismiss the Applicant’s argument that the Respondent acquiesced in the registration of the trade-marks and could not challenge them now due to it waiting five years to challenge the marks. In order to prove acquiescence, the Applicant would have had to show that the Respondent did something more than just delay and the evidence only shows delay. Thus, there was no acquiescence.