An Appeal is Mooted after Contested Trade-mark Application is Withdrawn

Engineers Canada, a national federation of provincial and territorial associations of professional engineers had its appeal of a decision of the Trade-marks Opposition Board rejecting its opposition to the mark POLARTEC ECO-ENGINEERING DESIGN by MMI-ICO LLC as moot.

Engineers Canada opposed the mark pursuant to the Trade-marks Act, on the basis that MMI-ICO, which deals in technical performance fabrics, was not registered to practice engineering in Canada, and did not employ licensed engineers in Canada.

The TMOB dismissed the opposition upon finding that the mark was not deceptively misdescriptive and was distinctive.

MMI-ICO withdrew its application for registration of the mark prior to the hearing of the appeal. MMI-ICO also requested an order dismissing the appeal on the basis of mootness, to which Engineers Canada did not consent. MMI-ICO then abandoned its motion to dismiss the appeal and advised it would not oppose Engineers Canada’s appeal or appear at the hearing of the appeal. Mr. Justice Brown nonetheless concluded that the appeal was moot and declined to exercise his discretion to hear a moot appeal upon rejecting the argument of Engineers Canada that a live issue remained because withdrawing the application did not equate to abandonment of the mark and the mark could still be used. Mr. Justice Brown concluded:

[21] In my opinion, there is no live controversy between the Applicant and the Respondent. There is no longer an application for the trade-mark that gave rise to this litigation. This is a classic case where the substratum of the litigation has disappeared.

Mr. Justice Brown concluded that if faced with infringing use, and if a court order was required, Engineers Canada could bring an action for trade-mark infringement.

A copy of the Judgment and Reasons by Mr. Justice Brown may be found here.