Canada: Courts can distinguish TM fraud from error

Originally posted 2009-02-04 04:15:08. Republished by Blog Post Promoter

Larry Munn:

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?

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Author:Ron Coleman

I write this blog.

3 Responses to “Canada: Courts can distinguish TM fraud from error”

  1. Michael Hall
    February 4, 2009 at 9:52 am #

    Maybe this will cheer you up at least a little, Ron. On Thursday the Board issued a precedential decision holding explicitly that fraud only operates with respect to the class in which the goods/services fall, and does not invalidate an entire multi-class registration:

    “[A] multiple-class application can be viewed as a series of applications for registration of a mark in connection with goods or services in each class, combined into one application. As a general matter, the filer of such an application is in the same position it would be had it filed several single-class applications instead. [citing cases] In view thereof, we find that each class of goods or services in a multiple class registration must be considered separately when reviewing the issue of fraud, and judgment on the ground of fraud as to one class does not in itself require cancellation of all classes in a registration.”

    G&W Laboratories, Inc. v. G W Pharma Limited, Cancellation No. 91169571 (T.T.A.B. January 29, 2009) (dismissing fraud claim with respect to one of two classes in registration).

    • February 4, 2009 at 7:33 pm #

      Cheer me up?! It brings me to tears of joy, Michael! Bless you, my son!

  2. February 4, 2009 at 6:26 pm #

    “O Canada!” indeed!

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