Want to stay current on e–commerce law? Sign up for Email Newsletter.
Ox & Palm & Device:Prove Standing Before Expungement Proceedings
On October 26, 2011, the Federal Court of Canada issued a decision which should be of concern to the owners of Canadian trade-mark who are intent on seeking to expunge competitors’ marks. In McCallum Industries Limited v. HJ Heinz Company Australia Ltd., 2011 FC 1216, the applicant, McCallum, owner of the registration for PALM & Device, sought to expunge the respondent’s, HJ Heinz, mark for OX & PALM on directly competitive canned meat goods. The claim was brought on the last day of the 5 year time period, and alleged no use of the mark in Canada by the respondent and that the marks are confusingly similar.
In finding for the respondent, the Court ruled that the applicant, McCallum Industries Ltd., holder of the PALM & Device registration should be denied standing as a person of interest essentially because it waited until the last day of the limitation period to bring its claim and/or because it did not establish a reasonable apprehension of harm. Regarding the 5 year time period for seeking to expunge a registered Canadian trade-mark under section 57 of the Trade-marks Act., the Court determined that notwithstanding that the deadline was met, waiting until the end of the period and failing to oppose the mark following publication should be held against the applicant on the issue of standing. Of the 6 reasons cited by the Court in denying standing to bring the claim, 2 relate to sales in periods during which goods bearing the later filed application were not actually sold in Canada to the public, and 2 relate to obligations on the applicant to take steps on a time line not required by the Act.
In obiter, the Court applied the normal tests to determine that the marks were not confusingly similar in any event.
For now, Canadian trade-mark owners who wish to expunge competitors marks for non-use will need to be concerned about an equitable time limit being imposed by the Court, as well as the need to establish reasonable apprehension of harm even if part of the claim is that the mark has not been used in Canada.
For a link to the preliminary judgment in McCallum Industries Limited v. HJ Heinz Company Australia Ltd., 2011 FC 1216, visit: http://decisions.fct-cf.gc.ca/en/2011/2011fc1216/2011fc1216.html