The Federal Court recently made clear that Canadian law does not recognize a rule equivalent to the U.S. doctrine of fraud on the trademark office, pursuant to which any material misstatement in the processing of a registration renders the entire resulting registration void. . . .
While the U.S. doctrine appeared “initially attractive”, Canadian law allows for an amendment “where the misstatement is innocent and in good faith”.
If that “initially attractive” is something silly like “initial interest confusion,” then I get the joke, and the irony, seeing as how just as error is not fraud, there’s nothing attractive about the monster that’s become “fraud on the Trademark Office” in the U.S.:
Unlike general law where the intent of the party plays a critical role in a finding of fraud, the current line of cases decided by the Trademark Trial and Appeal Board (“TTAB”) results in a finding of fraud where the applicant or registrant “knew or should have known” that the statements were false. The subjective intent of the party is not a factor — it is the objective manifestation of the party’s intent that is determinative in a finding of fraud before the TTAB.
Thanks, Canada! Now, I was never in favor of their splitting off from Vermont, or whatever it was, and it’s not as if they always get it right. But this one’s a keeper. “Fraud on the Trademark Office” has become the “gotcha” of trademark practice, presenting not only the threat of malpractice and severe prejudice to clients on the prosecution end for what can often be judgment calls or miscommunication, but potentially turning almost all litigation involving a trademark registration of any complexity into a game of Russian Roulette.
Seeing as how we’re all working our way toward one-world jurisprudence in trademark — despite the odd speed bump — is it too much to hope that Canada’s approach will cool some fevered thinking on “fraud” next time around here, too?