The Federal Court recently issued a decision arising from an application to expunge a trade-mark on the basis that it was obtained by way of fraudulent misrepresentation or material false statement fundamental to the registration.
In this case, the applicant signed a declaration that overstated the applicant's use of the mark. However, prior to the commencement of litigation, the application was amended to correct the statement of wares to reflect the actual use. An application was brought to expunge the mark in its entirety.
The Court was urged to adopt the U.S. doctrine of fraud on the Trade-marks Office, whereby any material misstatement during prosecution can invalidate a registration. The Court declined to apply the U.S. standard, on the basis that the Canadian law in this regard is more nuanced and balanced. Although an intentional misstatement should and would void a registration, the Court held that the misstatement in this case was made innocently and in good faith and was not sufficient to render the mark unregistrable in relation to the wares with which the mark had in fact been used. In view of the registrant's prior voluntary amendment, the registration was maintained and the application was dismissed with costs.
For the full text of the decision see:
