• Special Circumstances Found to Refuse Expungement of Trademark for Non-Use
  • May 10, 2016 | Authors: Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • The One Group LLC v. Gouverneur Inc. 2016 FCA 109

    The Trademarks Opposition Board refused to expunge the trademark registration STK (the Trademark) owned by The One Group LLC (One Group) for non-use pursuant to section 45 of the Trademarks Act. The Court noted that One Group operates a number of restaurants under the name STK, and registered the Trademark in association with bar services; restaurants. After the registration of the Trademark, One Group entered into a number of discussions with different hotel chains, unsuccessfully seeking to establish a restaurant location in hotels that were to be built. When notice was received pursuant to section 45, One Group stated that it was close to reaching an agreement and on this basis, the Registrar did not expunge the trademark, finding special circumstances. The Registrar set out the criteria to be met for a finding of special circumstances, namely the length of time during which the trademark has not been used, whether the reasons for non-use were beyond the owner's control, and whether the owner has a serious intention to shortly resume use of the trademark.

    On appeal, the Court found that the standard of review was reasonableness. The Court found that the Registrar applied the correct principles of law but that the evidence did not support the Registrar's decision, allowed the appeal and ordered the Registrar to expunge the trademark.

    The Court of Appeal also found that the Registrar applied the applicable case law, focusing on whether there were special circumstances explaining the non-use of the Trademark. The Court of Appeal noted that the Registrar has expertise with respect to trademarks and deference should be shown on findings of fact, especially regarding the discretion given to the Registrar in determining special circumstances. The Court of Appeal concluded that the evidence could support the Registrar's finding and thus allowed the appeal, confirming the Registrar's decision to maintain the Trademark.