AMENDMENT MADE TO THE NAME OF AN APPLICANT

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AMENDMENT MADE TO THE NAME OF AN APPLICANT CONSIDERED BY THE
TRADE-MARKS OPPOSITION BOARD
By
Catherine Bergeron*
LEGER ROBIC RICHARD, L.L.P.
Lawyers, Patent and Trademark Agents
Centre CDP Capital
1001 Square-Victoria- Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel. (514) 987 6242 - Fax (514) 845 7874
[email protected] - www.robic.ca
LendingTree, LLC v. The Attorney General of Canada 2006 FC 373 (Federal
Court, J. Eleanor R. Dawson)
1. Factual Background
On January 31, 2001, the Respondent Lending Tree Corp. filed an application
requesting registration of the trade-mark LENDING TREE. Said trade-mark
application was based on an alleged use of the mark by Lending Tree Corp.
in Canada on or before January 5, 2001. However, Lending Tree Corp. did
not exist as of that day; it was not incorporated until February 2, 2001.
The Applicant LendingTree, LLC filed an opposition against Lending Tree
Corp.’s application and alleged, amongst the grounds of opposition, that,
contrary to subsection 30(b) of the Trade-marks Act, Lending Tree Corp. had
not, and could not have, used the trade-mark in association with the services
stated in the application as of the alleged date of first use. Lending Tree
Corp. subsequently filed a request with the Registrar, supported by an
affidavit, that the subject application be amended to correct the
identification of applicant by replacing “Lending Tree Corp.” with “Alex
Haditaghi doing business as Lending Tree Corp.”
The Trade-marks Opposition Board (“the Board”) issued a notice, on behalf of
the Registrar, to Lending Tree Corp. stating that the requested amendment
had been accepted and that if the opponent considered that an
amendment to the Statement of opposition was required, leave should be
requested pursuant to Rule 40 of the Trade-marks Regulations. Instead,
© CIPS, 2006.
*Lawyer, Catherine Bergeron is a member of LEGER ROBIC RICHARD, L.L.P., a multidisciplinary
firm of lawyers, and patent and trademark agents. Publication 293.034
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LendingTree, LLC brought before the Federal Court an application for judicial
review seeking an order quashing the decision of the Registrar.
2. Decision of the Federal Court
The main issue at the heart of the dispute was whether the Registrar erred by
amending the application in a manner that changed the identity of the
applicant as prohibited by subsection 31(a) and sections 30, 31 and 32 of the
Trade-marks Regulations. The application thus turned on whether the issue of
the propriety of amendment of the application is a matter that can be raised
and considered in the opposition proceedings.
The Court reviewed jurisprudence establishing that the Board has in the
course of opposition proceedings considered the propriety of amendments
made to the name of an applicant (Matsushita Electric v. Libra Importing
(1986), 8 C.P.R. (3d) 512; Beauty Creations Ltd. v. Eugene-Gallia (1992), 45
C.P.R. (3d) 278; Mirabel Fisheries Ltd. v. HydroSerre Inc. (1994), 55 C.P.R. (3d)
567.)
Therefore, the Court concluded as follows (at paragraphs 19 and 20):
My conclusion that the Board may consider the propriety of amendments
made to the name of an applicant, and whether such an amendment
changed the identity of the applicant, is consistent with the fact that, after
the amendment was allowed, LendingTree U.S. was invited to seek leave to
amend its statement of opposition. This would appear to contemplate that
LendingTree U.S. would have an opportunity at the hearing of the
opposition to argue that the decision to allow the amendment should not
have been made and should not be permitted. (…) [S]eeing no special
circumstance that would justify granting relief on this application, I am
satisfied that this application for judicial review should be dismissed.
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