The Federal Court granted an application to strike four trademark registrations from the Trademark Register. The Applicant Blossman Gas is a propane business in Mississippi. The Respondent Alliance Autopropane (AAP) is a company in Quebec.
AAP obtained the right to use the trademark ALLIANCE AUTOGAS as a sublicensee of Blossman. While still a sublicensee, AAP applied to register under its own name the ALLIANCE AUTOGAS design mark used by Blossman, as well as three other design marks that used the words ALLIANCE and AUTOPROPANE.
The Court found that AAP was not the person entitled to register the trademarks as they were confusing with trademarks and trade names that Blossman had previously used in Canada. The Court also found that AAP applied to register the ALLIANCE AUTOGAS design mark in bad faith: “…it knew it was merely the licensee of the ALLIANCE AUTOGAS Design and that Blossman was the owner of the mark. It did not advise Blossman of its application or registration and, importantly, it maintained its registration for several years, refusing to abandon or transfer the registration long after it should have become apparent that it had no legal justification to do so.” The registration was therefore not a defence to Blossman’s claim of passing off as they relate to this trademark.
The Court awarded Blossman $20,000 in damages for passing off, $5000 in punitive damages, a permanent injunction against using the ALLIANCE AUTOGAS design mark and marks containing ALLIANCE AUTOPROPANE, delivery up of materials that would violate the injunction, and over $30,000 in costs.
Read the full decision here.