AMENDMENT MADE TO THE NAME OF AN APPLICANT
Transcription
AMENDMENT MADE TO THE NAME OF AN APPLICANT
1 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 2 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. 3 ROBIC, un groupe d'avocats et d'agents de brevets et de marques de commerce voué depuis 1892 à la protection et à la valorisation de la propriété intellectuelle dans tous les domaines: brevets, dessins industriels et modèles utilitaires; marques de commerce, marques de certification et appellations d'origine; droits d'auteur, propriété littéraire et artistique, droits voisins et de l'artiste interprète; informatique, logiciels et circuits intégrés; biotechnologies, pharmaceutiques et obtentions végétales; secrets de commerce, know-howet concurrence; licences, franchises et transferts de technologies; commerce électronique, distribution et droit des affaires; marquage, publicité et étiquetage; poursuite, litige et arbitrage; vérification diligente et audit. ROBIC, a group of lawyers and of patent and trademark agents dedicated since 1892 to the protection and the valorization of all fields of intellectual property: patents, industrial designs and utility patents; trademarks, certification marks and indications of origin; copyright and entertainment law, artists and performers, neighbouring rights; computer, software and integrated circuits; biotechnologies, pharmaceuticals and plant breeders; trade secrets, know-how, competition and anti-trust; licensing, franchising and technology transfers; ecommerce, distribution and business law; marketing, publicity and labelling; prosecution litigation and arbitration; due diligence. COPYRIGHTER IDEAS LIVE HERE IL A TOUT DE MÊME FALLU L'INVENTER! 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