A recent decision of the Federal Court emphasizes the importance of carrying out a full trade-mark search that includes common law references before making decisions concerning the availability of a trade-mark.
Precision Door and Gate Service Ltd. (“Precision Door”) has been selling, installing and repairing various kinds of doors throughout the lower mainland of British Columbia since 1997. It uses as a trade-mark a stylized version of its corporate name, as reproduced below.
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Precision Door did not initially obtain a Canadian trade-mark registration.
Precision Holdings of Brevard, Inc., based in Titusville, Florida (“Precision Holdings”), sells and services garage doors through more than 70 franchisees. In 2002, it applied for the trade-marks PRECISION, PRECISION DOOR SERVICE and PRECISION OVERHEAD GARAGE DOOR SERVICE & Design. At this time, it was unaware of the business of Precision Door. Presumably, Precision Holdings did not carry out a full trade-mark search in Canada which included common law trade-marks. Subsequently, Precision Holdings trade-marks were registered in 2009. In 2005, Precision Door applied to register its own trade mark, PRECISION DOOR AND GATE SERVICE LTD. & Design. A Trade-marks Office Examiner concluded that this trade mark was confusing with Precision Holdings’ applied for trade-marks. In addition, it was then too late to oppose the applications filed by Precision Holdings. As a result, Precision Door’s trade-mark application was refused.
Expungement Proceedings in the Federal Court
When it was precluded from obtaining a trade-mark registration, Precision Door brought an action in the Federal Court to expunge the registrations owned by Precision Holdings. A registration of a trade-mark may be invalid if the applicant for registration was not the person entitled to secure the registration.
Precision Holdings’ registrations were obtained on the basis of registrations which had been obtained in the United States. An applicant who has filed an application for a trade-mark that the applicant has duly registered in its country of origin and has used the mark its country of origin in association with the applied-for wares or services is entitled to secure its registration in Canada in association with the same wares unless, at the date of the filing of the application, it was confusing with a trade-mark that had been previously used in Canada.
Precision Door asserted that the Precision Holdings’ registrations were invalid since it had used its trade-mark in Canada prior to the filing date of Precision Holdings’ applications, namely October 18, 2002, and that Precision Holdings’ marks were confusing with its trade-mark.
While there was some dispute about it, Precision Door was successful in proving, to the satisfaction of the court, that it had used its trade-mark prior to October 18, 2002 and continuously from 1997 onward. In 2002, Precision Door changed its name from Precision Door Ltd. to Precision Door and Gate Service Ltd., but the judge concluded that the new corporate name was a minor variation of the former.
The judge concluded that there was a strong similarity between the parties’ respective marks and some actual confusion. As a result, the judge was satisfied that Precision Holdings’ registrations were invalid because it was not the person entitled to register them.
Precision Holdings may have acted in a different way had it been aware of the activities of Precision Door in 2002. A common law search would have disclosed the existence of Precision Door’s business and a more appropriate strategy could have been developed. It is not sufficient to restrict searches to the trade-marks register.