Application stayed until final determination on trademark ownership

Registrar ordered to add notice indicating ownership of trademark was in dispute

FEDERAL COURT OF APPEAL - Intellectual Property – TRADEMARKS -Transfer of interest

Trademark was originally registered by D Ltd.. Registrar of Trademarks recorded change in title for trademark from D Ltd. to R Ltd.. Registrar recorded another change in title, this time from R Ltd. to H Corp.. By way of application before Federal Court under s. 18.1 of Federal Courts Act and s. 57(1) of Trademarks Act, D Ltd. sought to have these changes in title struck out. D Ltd. claimed that initial assignment of trademark to R Ltd. had in fact never occurred, and that corresponding change in title recorded by registrar had been done on incomplete and misleading factual record. Federal Court agreed with D Ltd. and ordered that registrar's decisions to transfer trademark from D Ltd. to R Ltd. and from R Ltd. to H Corp. be set aside. H Corp. appealed. Appeal allowed. Federal Court erred in holding that s. 18.1 of Federal Courts Act was appropriate jurisdictional vehicle. Appropriate vehicle was s. 57 of Trademarks Act. D Ltd.'s application was stayed until final determination as to ownership of trademark had been made. Registrar was ordered to add certain notice to register in respect of entries relating to transfers to R Ltd. and H Corp., indicating that ownership of trademark and validity of transfers were in dispute.

Hutchingame Growth Capital Corporation v. Dayton Boot Co. Enterprises Ltd. (2019), 2019 CarswellNat 2012, 2019 FCA 152, Johanne Gauthier J.A., Richard Boivin J.A., and Mary J.L. Gleason J.A. (F.C.A.); reversed (2018), 2018 CarswellNat 1111, 2018 CarswellNat 1267, 2018 FC 316, 2018 CF 316, R.L. Barnes J. (F.C.).

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