Federal Court allows expungment proceedings against allowed trade-mark application pre-registration

The Federal Court recently ruled in Masterpiece Inc. v. Alavida Lifestyle Inc. that proceedings to expunge a registered trade-mark can be brought before the mark registers, provided the trade-mark has registered before the expungement application is heard.

Both parties in Masterpiece were in the retirement residence business.  Alavida filed a trade-mark application for MASTERPIECE LIVING on December 1, 2005.  Masterpiece allegedly had prior rights in the MASTERPIECE trade-mark for retirement residence services, but was unaware of Alavida’s application and did not oppose. Consequently, Masterpiece initiated proceedings  by filing an application in the Federal Court – before Alavida’s allowed trade-mark application registered – to expunge Alavida’s mark on the basis of Masterpiece’s prior rights and confusion between the parties’ respective marks.

One of the issues the Court addressed before deciding whether Masterpiece had prior trade-mark rights and whether confusion was likely between the parties’ marks was whether the expungement application was premature, since the expungement application was filed before Alavida’s trade-mark application had registered. The Court found the proceeding was not premature, since Alavida’s application had registered prior to the hearing. Ultimately, Masterpiece lost due to a lack of a reasonable likelihood of confusion between the parties’ respective marks.

The Masterpiece decision is important, as it authority for bringing expungement proceedings against an allowed trade-mark application prior to registration. Therefore, trade-mark owners who were unaware of a Canadian trade-mark application until the application is allowed for registration do not have to wait for the mark to register  before bringing expungement proceedings in Federal Court. However, if the targeted trade-mark application has not registered before the expungement application is heard, the court may find the expungement application is premature.


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