A recent decision of the Federal Court emphasizes the importance of filing a declaration of use relating to a trade mark application that is accurate in all respects.
An application for a trade mark may be filed on the basis of proposed use. This is beneficial since a trade mark owner can, in effect, reserve a trade mark. However, a registration can not be obtained until a declaration is filed confirming that the mark has been used in association with some or all of the wares or services listed in the application.
In the case, the applicant filed a trade mark application with a lengthy list of wares. Unfortunately, the declaration of use which was filed stated incorrectly that the mark had been used in association with all of the wares applied for.
The Expungement Proceedings
When a competitor with an interest in the applied-for mark became aware that an incorrect declaration had been filed, it instituted proceedings in the Federal Court seeking expungement of the trade mark registration on the basis that the registration had been obtained by the inclusion of a materially false statement of use that was fundamental to the registration. Previous case law has established that in such a case, it was not necessary to show either fraud or intent to deceive.
In response to the proceedings, the applicant, now respondent, amended its trade mark registration to reflect its actual use of the wares listed in the application. As a result, a substantial portion of the wares of the registration were deleted.
The respondent admitted in the course of the proceedings that there had been a critical misstatement arising from lack of understanding of the trade mark system. The respondent believed that so long as it had used the mark in relation to just one of the wares on the list, a declaration of use could be filed.
The respondent filed evidence to show that it was using the marks in association with the amended wares of the registration. The Judge accepted that while clearly wrong, the declaration of use contained an innocent misstatement which was not sufficient to render the amended registration unregistrable.
The competitor argued that the Court should adopt a draconian policy since there must be a strong incentive to be truthful and that any transgression should result in the registration being expunged, even if an innocent mistake had occurred. The Court stated a more nuanced and balanced position should be applied and that an innocent misstatement combined with an amendment of the registration was sufficient to avoid expungement.
Care should be taken to ensure that any declaration of use is completely accurate in order to avoid potential attacks on any registration.