Gouverneur Inc. v. One Group LLC, (2016) 483 N.R. 1 (FCA)

• Judge: Pelletier, Gauthier and Scott, JJ.A.
• Court: Federal Court of Appeal (Canada)
• Case Date: March 08, 2016
• Jurisdiction: Canada (Federal)
• Citations: (2016), 483 N.R. 1 (FCA);2016 FCA 109

Gouverneur Inc. v. One Group LLC (2016), 483 N.R. 1 (FCA)

MLB headnote and full text

[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2016] N.R. TBEd. AP.013

The One Group LLC (appellant) v. Gouverneur Inc. (respondent)

(A-122-15; 2016 FCA 109; 2016 CAF 109)

Indexed As: Gouverneur Inc. v. One Group LLC

Federal Court of Appeal

Pelletier, Gauthier and Scott, JJ.A.

April 8, 2016.

Summary:

The One Group LLC/the appellant registered the trademark STK in association with "bar services; restaurants" in preparation for a restaurant opening in Toronto. During the three years following the registration, the appellant held discussions with various hotel chains to find a location for its restaurant. A hearing officer of the Trademarks Opposition Board (the Registrar) refused to expunge the appellant's trademark for non-use in the three years preceding the request for evidence. The Registrar concluded that there were special circumstances that excused the non-use of the trademark (Trade-marks Act, s. 45). Gouverneur Inc. appealed.

The Federal Court, in a decision cited as 2015 FC 128, allowed the appeal and ordered the Registrar to expunge the trademark. The One Group LLC appealed.

The Federal Court of Appeal allowed the appeal. Given that the Registrar's analysis considered every factor set out in the case law and that it was based on the whole of the evidence, the Registrar's conclusion fell within the range of possible outcomes.

Trademarks, Names and Designs - Topic 887

Trademarks - Registration - Expungement of mark - Grounds - Exceptions - Special circumstances - [See Trademarks, Names and Designs - Topic 889 ].

Trademarks, Names and Designs - Topic 889

Trademarks - Registration - Expungement of mark - Grounds - Lack of use or abandonment - The appellant company registered the trademark STK in association with "bar services; restaurants" in preparation for a restaurant opening in Toronto - During the three years following the registration, the appellant held discussions with various hotel chains to find a location for its restaurant - The Registrar refused to expunge the trademark for non-use in the three years preceding the request for evidence of use - The Registrar concluded that there were special circumstances that excused the non-use (Trade-marks Act, s. 45) - On appeal, the Federal Court judge ordered the Registrar to expunge the trademark - The Federal Court of Appeal allowed the appeal - The evidence could support the Registrar's finding that the appellant met its burden of proving that there were special circumstances that prevented it from using its trademark at any time during the three year period - The Registrar acknowledged that the period of non-use was minimal - He also considered an imminent agreement with a hotel chain - Last, he determined that the special circumstances explained the absence of use and were the reason for it - Moreover, the non-use was beyond the control of the holder of the Mark alone - Given that the Registrar's analysis considered every factor set out in the case law and that it was based on the whole of the evidence submitted to him, the Registrar's conclusion fell within the range of possible outcomes.

Counsel:

Peter Choe, for the appellant;

Marcel Naud, for the respondent.

Solicitors of Record:

Gowling Lafleur Henderson LLP, Toronto, Ontario, for the appellant;

ROBIC LLP, Montreal, Quebec, for the respondent.

This appeal was heard at Montreal, Quebec, on March 8, 2016, before Pelletier, Gauthier and Scott, JJ.A., of the Federal Court of Appeal. In reasons written by Scott, J.A., the Court delivered the following judgment at Ottawa, Ontario, on April 8, 2016, in both official languages.