TRADE MARKS |
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Bacardi & Co. v. Havana Club Holding S.A.
A-447-03, A-448-03
2004 FCA 220, Richard C.J.
8/6/04
12 pp.
Appeals from Federal Court decisions upholding Registrar's decisions rejecting appellant's opposition to registration of certain marks, designs used in association with rum--Appeal relating to interplay between Trade-marks Act (Act), ss. 12(1)(b) and 15(1)--In 1934, Cuban company applied to Canadian Registrar of Trade-marks for registration of mark "Havana Club", used in association with rum--Registration issued in July of 1934--In 1960, Castro regime nationalized assets of various Cuban companies--In 1963, Registrar acceding to request by counsel for same Cuban company that change of title be recorded in register to reflect nationalization--In 1998, respondent, subsequent owner of mark, applied to register several marks, which were potentially confusing with other marks--Relied on Act, s. 15(1), which allows for registration of otherwise confusing mark if all associated marks owned by same person--Appellant arguing Registrar had no authority to amend register in 1963 to substitute name of nationalized company and respondent not holding valid title to mark registered in 1963 and cannot rely on it for purposes of registering associated marks pursuant to Act, s. 15(1)--Registrar held had no power to correct errors in register and, for purposes of opposition proceeding, could not question validity of subsisting trade-mark--Federal Court upholding Registrar's decision--Issue as to jurisdiction of Registrar of Trade-Marks in opposition proceedings-- Appellant attempting to impugn extant registration-- Legislation and case law make it clear appellant cannot amend, strike out registration in s. 38 opposition proceeding --Statutory options available to Registrar in opposition proceeding tightly circumscribed in contrast to s. 57(1) which grants Federal Court sole and exclusive jurisdiction to alter register, to exclusion of all other courts and tribunals--To obtain desired remedy, appellant should have proceeded under s. 57(1)--S. 57(1) available to "any person interested"--S. 2 defines "person interested" expansively--Even Registrar can apply to Federal Court to have entry on register struck-- Opposition proceeding not appropriate forum for tacit or manifest amendments to register--Appeal dismissed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 "person interested", 12(1)(b), 15(1), 38 (as am. by S.C. 1992, c. 1, s. 134; 1993, c. 15, s. 66), 57(1).