Geox S.P.A. v. De Luca

Geox S.P.A. v. De Luca

The registrar’s decision was reasonable: the variant used by the licensee retained the registered mark’s dominant features and the owner demonstrated sufficient control over character and quality so that section 50 deemed the licensee’s use to be use by the owner, and evidence (labels, boxes, invoices, website) established use in association with boots within the relevant period, so the registration should not be expunged.

Citation
2018 FC 855
Parties
Applicant: GEOX S.P.A.; Respondent: Giuseppe De Luca
Court
Federal Court
Jurisdiction
Canada
Judgment Date
24 August 2018
Procedural Posture
Judicial Review of Registrar of Trade Marks Decision Under the Trade Marks Act (expungement Proceeding) / Application for Judicial Review — Final Judgment
Outcome
Application for judicial review dismissed; registrar’s decision upheld.
Legal Topics
Use of Trade Mark by Licensee, Section 45 Expungement Procedure, Section 50 Deeming Provision, Trade Mark Variants and Distinctiveness, Standard of Review Reasonableness
Source Language
English
Intellectual Property Trade Mark Law Administrative Law Use of Trade Mark by Licensee Section 45 Expungement Procedure Section 50 Deeming Provision Trade Mark Variants and Distinctiveness Standard of Review Reasonableness

Case Brief

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Parties

GEOX S.P.A.

Applicant

Giuseppe De Luca

Respondent

Procedural Posture

Judicial Review of Registrar of Trade Marks Decision Under the Trade Marks Act (expungement Proceeding) / Application for Judicial Review — Final Judgment

Legal Issues

  1. 1 Whether the registrar erred in finding that use of a variant of the registered mark complied with section 50 of the Trade-marks Act
  2. 2 Whether the registrar erred in finding that the registered mark was used in association with the goods ‘boots’ within the relevant period
  3. 3 Whether the respondent failed to show use of the mark benefiting him so as to require expungement

Ratio Decidendi

The registrar’s decision was reasonable: the variant used by the licensee retained the registered mark’s dominant features and the owner demonstrated sufficient control over character and quality so that section 50 deemed the licensee’s use to be use by the owner, and evidence (labels, boxes, invoices, website) established use in association with boots within the relevant period, so the registration should not be expunged.

Court Disposition

Application for judicial review dismissed; registrar’s decision upheld.

Orders

  • Application for judicial review dismissed
  • Costs in the amount of $1,000.00 all inclusive awarded to the Respondent