Storm in a teacup: Guangzhou Wanglaoji Grand Health Co, Ltd v Multi Access Ltd

In a recent case before the Federal Court, Guangzhou Wanglaoji Grand Health Co. appealed seven decisions by the Registrar of Trademarks to maintain trademark registrations owned by Multi Access Ltd. following summary cancellation proceedings under section 45 of the Trademarks Act.

On appeal, Wanglaoji disputed whether MAL had established use of its trademarks for herbal tea products in Canada during the relevant period. Before the Registrar, MAL relied on affidavit evidence from its director, Chan Hung To, detailing the sales of tea products bearing the trademarks in Canada, including through a licensee, JDB. In dismissing the appeals, Madam Justice Pallotta addressed three main issues. 

First Issue: Whether MAL established the use of the trademarks in Canada by a licensee during the relevant period.

In response to Wanglaoji’s appeal, MAL filed an additional affidavit from Mr. Chan, which included use through a second licensee, Wing Tung. One week before the hearing, Wanglaoji sought leave to amend its notices of application to include new grounds of appeal related to whether MAL’s evidence was sufficient to establish use by its licensees. MAL opposed these amendments, arguing they were untimely and prejudicial. The Court agreed, finding there was no adequate explanation for the delay. The additional Chan affidavit was available by December 2022, and cross-examination was completed by August 2023, yet Wanglaoji waited to seek leave to amend its applications until the eve of the hearing. As the decision states, “None of the arguments Wanglaoji now relies on were raised in its notices of application, and they are not properly before the Court.”

Second Issue: Whether the Registrar erred in finding the use of trademark TMA410076 for “herbal products for food and medicinal purposes” when the packaging stated, “not for medical use.”

The packaging dispute centred on whether MAL’s product, labelled as an “Herbal drink not for medical use,” could be considered a use of the trademark registered for “herbal products for food and medicinal purposes.” Wanglaoji argued that the Registrar erred by equating “medical” with “medicinal” without considering competing definitions. The Registrar found that MAL’s tea products were registered goods based on Mr. Chan’s statements about how the products were considered to prevent illness. Therefore, despite the product label, the Registrar was entitled to rely on evidence suggesting the product had health benefits and was within the scope of the registered goods. The Court found no reviewable error in the Registrar’s decision. The Court explained that in s. 45 proceedings, one should not engage in “meticulous verbal analysis” of the language used in a statement of goods because the proceedings are meant to be expeditious.

Third Issue: Whether the Registrar erred in finding that the trademark used by MAL on the packaging was an acceptable variation of the trademark registered as TMA892774.

Wanglaoji argued that the image on the packaging appeared to be two separate marks rather than an allowable variation of the mark as registered (see below) and that the cumulative effect of additional elements was misleading.

The Registrar found that the trademarks retained their identity and were recognizable despite the differences.

The main question is whether the trademark remains recognizable despite differences between its registered and used forms and retains its identity. The Court noted, “The Registrar agreed with MAL that the dominant features of the registered trademark were retained in the trademark as used.” While there were differences in configuration and stylization, and additional elements like borders and symbols were present, the key components—the Chinese characters and border—were retained. This preservation of dominant features was deemed sufficient for the variation to be considered acceptable. 

The Court stated that “Wanglaoji has not established that the Registrar committed a reviewable error in finding that each of the Registrations should be maintained with amended statements of goods.” 

The consolidated appeals were dismissed, with cost submissions to be determined if the parties cannot reach an agreement. The original decision can be read here.