Naked Whey, Inc. v. N8ked Brands Inc.

Naked Whey, Inc. v. N8ked Brands Inc.

The N8KED Registered Mark was invalidly registered because the defendant's declaration of use was materially false (no evidence of use prior to the declaration date); consequently the registration is struck. The plaintiff's other claims (abandonment, lack of distinctiveness, bad faith, passing off, injurious falsehood and 7(d)(i)) were not established on the record, but claims under ss.7(a), 7(b) and 7(d)(i) may proceed to trial.

Citation
2023 FC 1079
Parties
Plaintiff / Defendant by Counterclaim: Naked Whey, Inc. o/a Naked Nutrition; Defendant / Plaintiff by Counterclaim: N8KED Brands Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
4 August 2023
Procedural Posture
Trademark Invalidity, Passing Off and Unfair Competition Under the Trademarks Act / Motion for Default Judgment and Interlocutory Determination; Trial to Follow on Remaining Subsections 7(a), 7(b) and 7(d)(i) Issues
Outcome
Motion granted in part and dismissed in part: registration struck for materially false declaration of use; other claims dismissed on motion but ss.7(a), 7(b) and 7(d)(i) issues may proceed to trial.
Legal Topics
Invalidity of Registration, Declaration of Use, Abandonment, Distinctiveness, Bad Faith Registration, Default Judgment Procedure (rule 210), Solicitor Removal (rule 125), Confidentiality Order (rule 151)
Source Language
English
Trademark Law Passing Off Unfair Competition Civil Procedure (default Judgment) Costs and Solicitor Removal Invalidity of Registration Declaration of Use Abandonment +5 more

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Parties

Naked Whey, Inc. o/a Naked Nutrition

Plaintiff / Defendant by Counterclaim

N8KED Brands Inc.

Defendant / Plaintiff by Counterclaim

Procedural Posture

Trademark Invalidity, Passing Off and Unfair Competition Under the Trademarks Act / Motion for Default Judgment and Interlocutory Determination; Trial to Follow on Remaining Subsections 7(a), 7(b) and 7(d)(i) Issues

Legal Issues

  1. 1 Appropriate role of the Court on a motion for default judgment
  2. 2 Whether the N8KED Registered Mark is invalid for a materially false declaration of use
  3. 3 Whether the N8KED Registered Mark was abandoned

Ratio Decidendi

The N8KED Registered Mark was invalidly registered because the defendant's declaration of use was materially false (no evidence of use prior to the declaration date); consequently the registration is struck. The plaintiff's other claims (abandonment, lack of distinctiveness, bad faith, passing off, injurious falsehood and 7(d)(i)) were not established on the record, but claims under ss.7(a), 7(b) and 7(d)(i) may proceed to trial.

Court Disposition

Motion granted in part and dismissed in part: registration struck for materially false declaration of use; other claims dismissed on motion but ss.7(a), 7(b) and 7(d)(i) issues may proceed to trial.

Orders

  • The N8KED Registered Mark is declared invalid and struck on the ground of a materially false declaration of use.
  • Exhibit E to the affidavit of Stephen Zieminski sworn October 25, 2022 is designated confidential and shall remain sealed.