Ling Chi Medicine Co. ( H.K. ) v. Persaud
A-172-97
Strayer J.A.
15/6/98
3 pp.
Appeal from trial judgment ([1997] 1 F.C. D-67) dismissing application to expunge respondents' registration of trade mark "Shiling Oil" from register-Respondent Universal Foods and Merchandise Co. entering agency agreement to be exclusive distributor of "Shiling Oil" in Canada-Registering trade mark "Shiling Oil" in 1980-Trial Judge holding respondents not entitled to registration of trade mark as breached fiduciary duty owed as agents to principal to make full disclosure before registering appellant's trade mark, but appellant's unreasonable delay in bringing action causing prejudice to respondents-Appeal allowed-Trial Judge erred in law in not applying equitable doctrine of "clean hands"-Notwithstanding "disclosure" which Trial Judge found to have occurred in 1984, respondents clearly acted in bad faith and continued to assert trade mark to which not entitled-As matter of equity, could not rely on defence of laches because he who invokes equitable defence must have done equity in respect of same matter-Further, no evidence to support finding respondents prejudiced by appellant's failure to challenge respondents' trade mark sooner-Costs incurred after appellant learning of respondents' registration of trade mark in Canada were contractual obligation as long as respondents had exclusive right to distributorship in Canada-Any injustice flowing from cancellation of contract by appellant in 1993 having nothing to do with appellant's failure to move sooner to expunge trade mark-Trade mark ordered expunged.