May 2012

Trademark applications: Never provide false or inaccurate information

By Josée Tourangeau Lawyer

A trademark registration may prove invalid if the information provided in the application process is inaccurate.

A trademark registration certificate does not create rights for the holder but rather confirms them. The rights are established and maintained through usage over time by means of goods and/or services. If the information provided when registering is false or erroneous, the legitimacy of the trademark may come into question.

On February 6, 2012, ruling in ANDRÉ RODRIGUE PEINTRE DÉCORATEUR INC. v. RODRIGUE PEINTRE DÉCORATEUR LTÉE (2011 QCCS 6797 (CanLII)) , the Superior Court of Québec declared that two trademark registrations were unenforceable against the defendants because of the false statements made by the plaintiff in the registration process.

ANDRÉ RODRIGUE PEINTRE DÉCORATEUR INC. (hereinafter ANDRÉ RODRIGUE) sought a permanent injunction ordering RODRIGUE PEINTRE DÉCORATEUR LTÉE (hereinafter RODRIGUE PEINTRE) to cease the use of two trademarks registered to the plaintiff in 2009 by the Canadian Intellectual Property Office (CIPO), the federal agency that oversees the registration of Canadian trademarks.

In this case, two photos used by ANDRÉ RODRIGUE to promote its services were trademarked. The images depicted the family business, which was founded by the grandfather of the individuals who are currently running the businesses involved in the dispute.

ANDRÉ RODRIGUE stated that the trademark registrations ensure the exclusive use of the photos by the company, excluding RODRIGUE PEINTRE.

In its defense and counterclaim against the permanent injunction, RODRIGUE PEINTRE sought to have the registrations declared invalid due to the false statements made by ANDRÉ RODRIGUE when registering the photos.

The defendant claimed that ANDRÉ RODRIGUE falsely declared that the company had begun using the photos on October 12, 1988, when it had actually started doing so later.

RODRIGUE PEINTRE also affirmed that ANDRÉ RODRIGUE misrepresented itself when communicating with the CIPO regarding an objection raised by an examiner with regards to section 9(1) k) and l) of the Trade-marks Act.

Section 9 (1) k) of the act stipulates that "No person shall adopt in connection with a business, as a trade-mark or otherwise, any mark consisting of, or so nearly resembling as to be likely to be mistaken for any matter that may falsely suggest a connection with any living individual" and 9 (1) l) with "the portrait or signature of any individual who is living or has died within the preceding thirty years."

A representative of ANDRÉ RODRIGUE fallaciously told the examiner that the people on the photograph could not be identified.

In fact, it was revealed that ANDRÉ RODRIGUE first used one of the photographs on its website in 2000 and on its company trucks in 2004, contrary to what a representative had affirmed during the registration process. RODRIGUE PEINTRE had therefore used the photographs before ANDRÉ RODRIGUE. It was also determined that the second photograph was of the grandfather and his son George, who died less than 30 years ago.

The Superior Court ruled that these elements warranted the refusal of the injunction sought by ANDRÉ RODRIGUE and the upholding of the reasoning by RODRIGUE PEINTRE that the registrations were invalid.

It is therefore important to rigorously follow the trademark process set out by the CIPO, since false information could invalidate a registration.