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Federal Court expunges trademark registration for bad faith

The Respondent Wei Meng obtained a registration for the mark “JU DIAN & Design” (depicted below), in association with “restaurant services; take-out restaurant services” and “beer”.



The Applicant Beijing Judian Restaurant Co. Ltd. owns and operates two restaurants in BC and a chain of well-known restaurants in China, through which it has used a family of Ju Dian character trademarks, including one identical to the above “JU DIAN & Design” mark.

The Applicant sought to expunge the Respondent’s registration on the basis that is was obtained in bad faith, contrary to the new section 18(1)(e) of the Trademarks Act.

The Court found that the mark was registered without a legitimate commercial purpose, constituting bad faith. The evidence showed that the Respondent registered the mark with the intention of extorting money from the Applicant or using the Applicant’s reputation to obtain money from others. The Respondent approached the Applicant to purchase the mark for $1.5M. Further, the Respondent posted a public ad offering the mark for sale, and in correspondence with a would-be purchaser, relied on the Applicant’s reputation to justify the significant cost requested.

Read the full decision here.

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