51.CA Inc v. Chun Huang, 2024 FC 1202
Justice Pallotta - 2024-07-29
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The applicant (51.ca) brings this application pursuant to section 57 of the Trademarks Act for an order striking trademark registration no. TMA722538 from the register. 51.ca also seeks injunctive relief to prevent the registered owner, the respondent Mr. Huang, from using the registered trademark in the future. ... 51.ca seeks a remedy for passing off as of the date TMA722538 is invalidated, not for past passing off. The six-year limitation period in subsection 39(2) of the Federal Courts Act does not bar injunctive relief for passing off as a continuing tort ... Turning to subsection 17(2) of the TMA, 51.ca did not commence this proceeding outside the five-year window. ... As 51.ca points out, an application to extend the goods or services covered by a registration has the same effect as an application to register the trademark with the goods or services specified in the extension application: TMA, s 41(2). ... The registered Trademark consists of a distinctly recognizable and dominant component of 51.ca’s unregistered composite marks that it has used since 2001, and the registration covers overlapping services. ... 51.ca has established that TMA722538 is invalid pursuant to paragraphs 18(1)(b) and 18(1)(d) of the TMA. The registration will be expunged.
Decision relates to:
- T-1945-22 - 51.CA INC v. CHUN HUANG