In a recent decision the Federal Court of Canada clarified the level of prior use that is necessary to invalidate a confusing trademark registration.

In JC Penney Company Inc v Gaberdine Clothing Co Inc, JC Penney successfully requested that Gaberdine's registration for the trademark ARIZONA BLUES JEANSWEAR CO be cancelled on the basis of JC Penney's prior use of the trademark THE ORIGINAL ARIZONA JEAN COMPANY in Canada.

JC Penney proved two individual sales of its garments in Canada under Gaberdine's trademark prior to the date of filing of Gaberdine's proposed use trademark application. In addition, JC Penney succeeded in overcoming a prior decision of the Federal Court according to which the single use of a tradename prior to filing a 'proposed use' application is not sufficient to cancel registration.

Justice Nadon was satisfied that the earlier decision was incorrect and that JC Penney should prevail as prior use of a trademark is not synonymous with commercial success:

"Use of a trademark cannot be measured by the number of sales or the quantity of wares sold in association with the trademark. The sale or sales must be examined in the light of all of the surrounding circumstances."

Aside from clarifying the law on this point, this case serves to emphasize two practical matters. First, if it is necessary to seek cancellation of a trademark registration on the basis of prior use or 'making known' in Canada, action must be taken within five years of registration. After five years prior use is not sufficient; it must be proved that the owner of the trademark registration adopted the mark knowing that it had been used (or made known) previously in Canada.

Second, to avoid the risk of brand appropriation, the filing of an application in Canada should be given serious consideration when filing elsewhere. The relatively low cost involved in filing in Canada emphasizes the desirability of prompt protection.

For further information on this topic please contact Mark Evans at Smart & Biggar/Fetherstonhaugh by telephone (+1 416 593 5514) or by fax (+1 416 591 1690) or by email ([email protected]).