US fraud doctrine rejected by Federal Court


In Parfums de Coeur Ltd v Asta (2009 FC 21, January 8 2009), the Federal Court of Canada has dismissed Parfums de Coeur Ltd's application for the cancellation of the trademark BOD for “hair care, namely, shampoo, conditioner”.  

On November 23 1999 Christopher Asta applied for the registration of the trademark BOD based on proposed use. The goods associated with the proposed use of the mark were hair care, skin care, cosmetics and body care. On February 12 2004 Asta filed a declaration of use of the mark in relation with these goods.
Parfums de Coeur started to sell products under the trademark BOD MAN in Canada around October 2002. After issuance of Asta's registration for the BOD mark, Parfums de Coeur notified Asta of its intent to seek cancellation of the registration.
On October 13 2006 Asta amended the statement of goods to reflect the actual use of the mark. The amended registration was cited by the examiner as an obstacle to the registration of Parfums de Coeur's trademark BOD MAN in association with “men’s fragrances, namely, cologne, eau de toilette, aftershave, scented body sprays and personal deodorants”.
Parfums de Coeur applied to the Federal Court for the cancellation of the BOD mark.
The court reaffirmed that “date of application” in Section 57 of the Trademarks Act referred to the filing date of the application to strike out the trademark, and not the date of the original application to register the trademark.
Relying on the prior decision of the Federal Court of Appeal in General Motors of Canada v Decarie Motors Inc (2000 CanLII 16083), the court stated that only fraudulent, intentional misstatements, as well as innocent misstatements without which “barriers to registration would have been insurmountable”, can be relied upon to invalidate a trademark registration.
In the present case, the court found that that the misstatement in the declaration of use pertaining to the original application was not fraudulent. Asta explained that he thought that he was entitled to file a declaration of use for all the goods specified in the original registration as long as he was using his trademark for at least some of the goods listed in the original application. The court suggested that the outcome would have been different had Asta not used the trademark at all at the time of filing the declaration of use.
Ultimately, according to the court, the amended registration had not been secured by material misstatement, and Asta had met the requirements for use of the mark as early as 2001 in respect of the goods listed in his amended registration, despite some flaws and deficiencies in the evidence of use.
This judgment confirms that there is no provision in the act under which misstatements in an application for registration or extension of goods may become grounds for invalidating a registration, unless:
  • the misstatement had the effect of making the trademark not registrable; or
  • there was a fraudulent misrepresentation.
In doing so, the court made a clear distinction between Canadian and US law and rejected the application of the US doctrine of fraud, according to which real fraud is not required and mere material misstatement may suffice to hold that a registration as a whole is invalid. The court felt that it was more appropriate not to adopt a principle which, in its view, had no ground in the Trademarks Act and which Parliament has so far refused to embrace.
Marcel Naud, Léger Robic Richard LLP, Montreal

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