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Executive Summaries Nov 11, 2021

Trademark Infringement and Passing Off: Trademark Registration as a Full Defence

On September 29, 2021, Canada’s highest court dismissed the Federal Court of Appeal’s appeal in Travelway Group International Inc. v. Group III International Ltd., which brought an end to the litigation that began in 2013.

The main focus of this case was the use and registration of cross logo trademarks in association with bags and luggage. Both parties had registered their respective trademarks in Canada before the action was instituted.

Wenger SA, Group III International Ltd. and Holiday Group Inc. instituted, notably, trademark infringement proceedings against Travelway Group International Inc. and sought a declaration of invalidity and expungement against Travelway’s registered trademarks. The Federal Court dismissed the action. On appeal, the decision was reversed, and the case was then returned to the Federal Court, which expunged Travelway’s marks but denied damages to the applicants.

The latter appealed this decision to the Federal Court of Appeal, which confirmed that Travelway could not be held liable for any damages that occurred while it owned registrations for its trademarks. Since Travelway had not registered the marks fraudulently or in bad faith, those registered marks were deemed valid and Travelway was entitled to use them in Canada. The Court also stated that this defence applies to passing off actions as well.

The Supreme Court’s dismissal of the appeal upholds the Federal Court’s decision.

Lessons to be learned 

A registered mark is so valuable! This case clearly demonstrates that a trademark registration can be used as a full defence in trademark infringement and passing-off cases. This interesting benefit complements the many other benefits of a trademark registration. So why would one want to take the risk and choose not to register its mark?

Contact our trademark team for more information on how to protect and register your trademark.

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