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First Use, Not Registration, Confers Exclusive Right To A Trade-mark

On November 2, 2017, Justice Roussel allowed Micro Matic’s application under section 57 of the Trade-marks Act and struck Taizhou’s trade-mark registration for MICRO MATIC & Design (No. TMA 942,000) from the register of trade-marks:

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Micro Matic is a Danish company that has supplied beverage dispensing systems, including draught beer systems, in Canada for over twenty years. It is also the owner of the copyright of the MICRO MATIC & Design mark.

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While Micro Matic registered its trade-marks in several countries, it did not register these marks in Canada.

Taizhou obtained a trade-mark registration in 2016 for MICRO MATIC & Design, having claimed use in Canada since 2013, for wares similar to Micro Matic’s. Micro Matic then brought an Application seeking to strike Taizhou’s registration. Taizhou did not file any evidence or submissions in the expungement proceeding and did not attend the hearing.

The Court struck TMA 942,000 from the trade-marks register on the basis of non-entitlement pursuant to paragraph 16(1)(a) of the Act on the basis that Taizhou was not entitled to secure its registration of the trade-mark, since at the time it filed its application to register its trade-mark in 2014, it was confusing with trade-marks previously used in Canada by Micro Matic. The Court concluded that the registration of Taizhou’s mark was invalid and ordered the mark expunged from the trade-marks register pursuant to paragraph 18(1)(d) of the Act:

[20] In the case before me, there is no serious doubt that the marks are confusing. The marks themselves appear to be identical. The name and style of lettering look the same as well as the drops used in the design. Moreover, the goods associated with the trade-mark are nearly identical as both relate to draught beer and beverage dispensing equipment. It is my view that as a matter of first impression, the “casual consumer somewhat in a hurry” or the “ordinary person having a vague recollection of another mark” would likely be confused and would likely believe that the goods originate from the same person … .

A copy of the Judgment and Reasons can be found here.