Travel Leaders Group, LLC v. 2042923 Ontario Inc. (Travel Leaders)

Travel Leaders Group, LLC v. 2042923 Ontario Inc. (Travel Leaders)

On the evidence the Court found Ontario Inc. had abandoned the TRAVEL LEADERS mark by the expungement application date (Feb 14, 2017) because it had not used the mark in association with services and intended to abandon it; therefore registration TMA790523 was expunged under s.18(1)(c). The Court rejected claims of material misstatement and bad faith at the date of application (May 4, 2010) for lack of sufficient evidence of an intent to extort or sole purpose to prevent TLG’s use. Because the registration was invalid/expunged, Ontario Inc.’s infringement, depreciation (s.22(1)) and passing off claims against TLG failed; conversely TLG proved sufficient misconduct by Ontario Inc. after...

Citation
2023 FC 319
Parties
Plaintiff/defendant by Counterclaim: Travel Leaders Group, LLC; Defendant/plaintiff by Counterclaim: 2042923 Ontario Inc. D.B.A. Travel Leaders
Court
Federal Court
Jurisdiction
Canada
Judgment Date
8 March 2023
Procedural Posture
Trademark Invalidity and Infringement (trademarks Act) / Trial Judgment (federal Court)
Outcome
Registration TMA790523 for TRAVEL LEADERS declared invalid and expunged (s.18(1)(c)); counterclaim by Ontario Inc. dismissed; permanent injunctions granted against Ontario Inc.; nominal damages $2,000 and punitive damages $20,000 awarded to TLG; costs reserved with filing schedule.
Legal Topics
Trademark Invalidity, Abandonment, Bad Faith, Infringement (s.19, S.20(1)), Depreciation of Goodwill (s.22(1)), Passing Off (para 7(b)), Expungement (s.57), Remedies (injunctions, Damages, Costs
Source Language
English
Intellectual Property Trademarks Passing Off Civil Procedure Trademark Invalidity Abandonment Bad Faith Infringement (s.19, S.20(1)) +4 more

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Parties

Travel Leaders Group, LLC

Plaintiff/defendant by Counterclaim

2042923 Ontario Inc. D.B.A. Travel Leaders

Defendant/plaintiff by Counterclaim

Procedural Posture

Trademark Invalidity and Infringement (trademarks Act) / Trial Judgment (federal Court)

Legal Issues

  1. 1 Was the TRAVEL LEADERS registration abandoned?
  2. 2 Was the claimed date of first use a material misstatement?
  3. 3 Was the registration filed in bad faith?

Ratio Decidendi

On the evidence the Court found Ontario Inc. had abandoned the TRAVEL LEADERS mark by the expungement application date (Feb 14, 2017) because it had not used the mark in association with services and intended to abandon it; therefore registration TMA790523 was expunged under s.18(1)(c). The Court rejected claims of material misstatement and bad faith at the date of application (May 4, 2010) for lack of sufficient evidence of an intent to extort or sole purpose to prevent TLG’s use. Because the registration was invalid/expunged, Ontario Inc.’s infringement, depreciation (s.22(1)) and passing off claims against TLG failed; conversely TLG proved sufficient misconduct by Ontario Inc. after...

Court Disposition

Registration TMA790523 for TRAVEL LEADERS declared invalid and expunged (s.18(1)(c)); counterclaim by Ontario Inc. dismissed; permanent injunctions granted against Ontario Inc.; nominal damages $2,000 and punitive damages $20,000 awarded to TLG; costs reserved with filing schedule.

Orders

  • Expunge Canadian Trademark Registration TMA790523 for TRAVEL LEADERS from the Trademarks Register.
  • Dismiss the counterclaim of 2042923 Ontario Inc.