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The Precision Decision: OWGM successfully represents applicant in expunging three trademark registrations

1 April 2012

In Precision Door & Gate Service Ltd. v. Precision Holdings of Brevard, Inc., 2012 FC 496, Bruce M. Green of Oyen Wiggs Green & Mutala LLP successfully represented the applicant in having three trademark registrations of the respondent struck from the Canadian trademark register under section 57 of the Trade-Marks Act. The applicant, Precision Door and Gate Service Ltd., argued that the respondent, Precision Holdings of Brevard, Inc., was not entitled to register the trademarks in question because the applicant had already been using a confusingly similar trademark before the filing of the respondent’s proposed use application in 2002. In general, the first entity to use a trademark in Canada or file a proposed use trademark application is entitled to register that trademark in Canada. This means that other entities who use or apply for a confusing trademark at a later date should not be entitled to a Canadian trademark registration.

In this case, the Federal Court found that the applicant had been using its trademark PRECISION DOOR & GATE SERVICE LTD. & Design since 1997. The respondent’s applications first came to the applicant’s attention in 2005 when the respondent contacted the applicant seeking  permission to use the marks,  which was refused. At that point it was too late to oppose the applications, which had been allowed. The applicant therefore filed its own trademark application, which was rejected by the Canadian Intellectual Property Office as confusing with the respondent’s earlier filed applications. The respondent’s applications did not reach registration until 2009 and the expungement action was commenced in 2010.

The Court decided that the applicant’s trademark is confusing with the respondent’s three trademarks PRECISION DOOR SERVICE, PRECISION and PRECISION OVERHEAD GARAGE DOOR SERVICE & Design, given the identical nature of the parties’ services (i.e. garage door services) and the close resemblance of the trademarks, among other considerations. As a result, the Court found that the respondent was not the person entitled to secure registration of these trademarks, and its three registrations were declared invalid under sections 16 and 18 of the Trade-marks Act and ordered to be expunged from the register under section 57 of the Trade-marks Act. The Court also ordered payment of costs.

The respondent also argued that the applicant had acquiesced to the registrations given that it learned of the respondent’s applications in 2005. The Court rejected that argument since delay alone is not enough for acquiescence, and by rejecting the respondent’s offer to purchase its rights in the trademark , and filing its own application, the applicant had clearly not acquiesced. Thus it is advisable for a trademark owner who learns that a later user of a confusingly similar mark has applied for registration and reached allowance or registration, to file its own application as well as applying for expungement well within the statutory 5 year period from the date of registration.

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