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Trade Mark Abandonment and Expungement
The Supreme Court of Canada rejected an application for leave to appeal the decision of the Federal Court of Appeal (FCA) in the trade-mark case Cross-Canada Auto Body Supply (Windsor) Ltd. v. Hyundai Auto Canada, A Division of Hyundai Motor America. The trade-marks at issue were originally owned and registered by Hyundai Motor Company, based in Seoul, South Korea. The Applicants, Cross-Canada Auto Body, are re-sellers of automotive parts and accessories, including parts for Hyundai automobiles that bear the Hyundai trade-mark.
At the Federal Court of Canada (FCC) and FCA, Cross-Canada sought to expunge from the Canadian Trade-mark Register five registered trade-marks: HD Design, HD & Hyundai Design, HMC Design, Hyundai, and Sonata, all belonging to Hyundai. The Applicants argued that three of the trade-marks - HD Design, HD & Hyundai Design and HMC Design - have been abandoned, and that the five trade-marks were invalidly registered because they were not distinctive of Hyundai’s wares at the commencement of this action. Hyundai denied all allegations, but admitted that the HD Design trade-mark is not currently being used, although its registration has been regularly renewed annually.
In its judgment, the FCC ordered that the HD Design trade-mark be struck from the Canadian Trade-mark Register. However, the FCC dismissed the remainder of Cross-Canada's application and awarded costs to Hyundai. The FCA upheld the judgment of the FCC. The lesson learned from this case is that assignment of trade-marks should be registered with the Canadian Trade-marks Office immediately after the transfer is executed, and that renewal of trade-mark registration without actual use of the mark does not offer any protection to the registrant.
For a copy of the decision, visit:
http://www.canlii.org/en/ca/scc-l/doc/2008/2008canlii46989/2008canlii46989.html