Hutchingame Growth Capital Corporation v. Dayton Boot Co. Enterprises Ltd., 2019 FCA 152

Justice Gauthier; Justice Gleason; Justice Boivin - 2019-05-16

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Hutchingame appeals from the decision 2018 FC 316. At issue in the Federal Court’s decision was Canadian trademark registration No. TMA792915 for the word mark “DAYTON”. The trademark was originally registered in 2011 by Dayton Enterprises for use primarily in association with footwear, namely boots, since as early as 1947. In May 2016, the Registrar recorded a change in title for the trademark from Dayton Enterprises to Red Cat. The Registrar recorded another change in title later in August of that year, this time from Red Cat to Hutchingame. By way of an application before the Federal Court under section 18.1 of the FC Act and subsection 57(1) of the TM Act, Dayton Enterprises sought to have these changes in title struck out. Dayton Enterprises claimed that the initial assignment of the trademark to Red Cat had in fact never occurred, and that the corresponding change in title recorded by the Registrar had been done on an incomplete and misleading factual record. The Federal Court agreed with Dayton Enterprises and ordered that the “Registrar’s decisions to transfer the Dayton trade-mark from Dayton Boot Co. Enterprises Ltd. to Red Cat Ltd. and from Red Cat Ltd. to Hutchingame Growth Capital Corporation [be] set aside”. Finding the facts of the case “sufficiently troubling”, the Federal Court also awarded elevated costs against Hutchingame. Hutchingame, which, at the time the Federal Court’s decision was issued, was the registered owner of the trademark, appeals principally on the basis that the Federal Court erred by admitting and weighing in the context of a judicial review evidence that was not originally before the Registrar. Dayton Enterprises, which the register once again shows is the owner of the contested mark, defends the Federal Court’s decision because, in its submission, the Federal Court correctly identified the test for admitting new evidence and did not commit palpable and overriding error in applying it. For the reasons that follow, the appeal should be allowed.

Decision relates to:



Canadian Intellectual Property