IPack B.V. v. McInnes Cooper

IPack B.V. v. McInnes Cooper

The newly filed Dupont affidavit and the attached licence agreement were material because they directly addressed the Registrar’s identified deficiency by establishing that IPack retained and exercised direct control over the character and quality of LUCIFER branded beers and ales sold by Het Anker during the relevant period; therefore Het Anker’s use enured to IPack’s benefit, the registration was not abandoned and the Registrar’s expungement was set aside.

Citation
2023 FC 243
Parties
Applicant: IPack B.V.; Respondent: McInnes Cooper
Court
Federal Court
Jurisdiction
Canada
Judgment Date
20 February 2023
Procedural Posture
Trademark Appeal Under Trademarks Act S.56 / Federal Court Judgment on Appeal (de Novo Review Due to New Evidence)
Outcome
Appeal allowed; Registrar’s decision expunging registration set aside; registration maintained.
Legal Topics
Trademark Use, Expungement for Non‑use, Licensee Control of Character and Quality, Section 45 Proceedings, Section 50 Control Requirement, Standard of Review for New Evidence
Source Language
English
Intellectual Property Trademarks Administrative Law Trademark Use Expungement for Non‑use Licensee Control of Character and Quality Section 45 Proceedings Section 50 Control Requirement +1 more

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Parties

IPack B.V.

Applicant

McInnes Cooper

Respondent

Procedural Posture

Trademark Appeal Under Trademarks Act S.56 / Federal Court Judgment on Appeal (de Novo Review Due to New Evidence)

Legal Issues

  1. 1 Whether the trademark registration should be expunged for non‑use under s.45 of the Trademarks Act
  2. 2 Whether use of the mark by a licensee (Het Anker) enured to the benefit of the registered owner (IPack)
  3. 3 Whether IPack established control over the character and quality of the licensed goods under s.50

Ratio Decidendi

The newly filed Dupont affidavit and the attached licence agreement were material because they directly addressed the Registrar’s identified deficiency by establishing that IPack retained and exercised direct control over the character and quality of LUCIFER branded beers and ales sold by Het Anker during the relevant period; therefore Het Anker’s use enured to IPack’s benefit, the registration was not abandoned and the Registrar’s expungement was set aside.

Court Disposition

Appeal allowed; Registrar’s decision expunging registration set aside; registration maintained.

Orders

  • The appeal is allowed.
  • The Registrar’s decision expunging registration number TMA701,559 is set aside.