DIPLOMAT fight not over yet

In Kelendji v Diplomat Fullhalter Gesellschaft Kurz & Rauchle GmbH (2002 FCA 480), the Federal Court of Appeal has overruled a decision to maintain the registration of the mark DIPLOMAT because the trial judge did not consider all the grounds for cancellation set out in the Canadian Trademarks Act.

In 1968 Fouad Kelendji registered the trademark DIPLOMATE in relation to watches, clocks and pens. In 1988 Kelendji discovered that Diplomat Fullhalter Gasellschaft Kurz & Rauchle (DFGK&R) was distributing pens under the mark DIPLOMAT and sent it a cease and desist letter. In July 1989, after using DIPLOMAT for more than five years, DFGK&R applied to register the mark in relation to writing instruments. The mark was registered in 1991. Six years later, Kelendji filed a motion to have DFGK&R's registration cancelled based on his prior use and registration of the DIPLOMATE mark.

The Federal Court, Trial Division judge examined the application of Section 17(2) of the Trademarks Act, which reads as follows:

"In proceedings commenced after the expiration of five years from the date of registration of a trademark [...], no registration shall be expunged or amended or held invalid on the grounds of [...] previous use."

The trial judge acknowledged that Kelendji's motion was filed over five years after DFGK&R registered the DIPLOMAT trademark. Consequently, the trial judge ruled that the registration of that mark could not be cancelled, amended or held invalid based on prior use.

On appeal to the Federal Court of Appeal, the court overruled the Trial Division's decision to maintain the registration of DIPLOMAT because the trial judge did not address Section 18(1) of the Trademarks Act. This provides that a registered mark is invalid if it was not registrable at the time of registration because it was not distinctive. Accordingly, the case was remanded to the Trial Division for consideration of this issue.

Catherine Bergeron, Léger Robic Richard, Montreal