Case Law Development.
The assignee and proprietor of a Trinidad & Tobago and a Venezuelan
Trademark respectively had their TM expunged from the register by an order
of Mr Justice Lionel Jones of the Trinidad & Tobago High Court of Justice
on Sept.,11.1997. In a well reasoned thirty four pages judgement destined
for the law reports His Lordship made an order of expunction against
Caribbean Development Company (hereinafter referred to as CDC)the assignee
of the Trade Mark "Pola Beer" which was registered by Walters Trinidad
Brewery Co Ltd in 1961 and assigned to CD in 1992. Both the assignor and
assignees are Trinidad & Tobago Companies.
A simliar order was made against Cerveceria Polar CA, (hereinafter
referred to as CPCA) a Venezuelian Company which had its Trademark Pola
registered in Trinidad & Tobago in 1992.Under section 35 of the TM
Act a mark may be expunged on an application to the High Court by any
aggrieved person on the grounds stipulated in the statute. The assignee of
Pola Beer and registered proprietor of Pola had their respective
applications heard together by the Learned Judge who considered the
affidavit evidence and also permitted cross examination of the deponents.
Both applicants alleged that up to one month before its application to
expunge the other had no bona fide intention that its TM should be used in
relation to the goods in question and in fact there was no bona fide use
of the other TM up to one month before the date of one month of the
application to expunge. Both alleged that the other did not use its TM for
a continuous period of five years or longer which had elapsed during which
time there was no bona fide use in relation to the goods in respect of
which the TM was registered by the respective owner or assignee. CDC based
its case on an additional ground that the CPCA TM Polar was entered
without sufficient cause and or so nearly resembles the TM of CDC in respect
of the same goods or description of goods as to be likely to deceive or
cause confusion.
On the law the learned Judge reasoned that the Applicants had to show that
each of them was aggrieved. Further they had to show that the other TM
was registered with no bona fide intention to use it. That there must be a
firm intention to use the respective TM.Furthermore under section 35 (1)
each applicant was required to discharge the onus that the other had not
made bona fide use of its respective TM for a continuous period of five
years from the date of registration . Neither party can succeed if the
non use was due to special circumstances in the trade and not an intention
to abandon the TM. For one to prove intention it must be demonstrated that
there is a form intention to use. The failure of an applicant to prove lack
of intention is not determinative of the case but the Court was concerned
about the ultimate burden which both applicants had discharged on all
the evidence. In coming to his conclusion the Learned Judge relied on the
English case of Ducker ( 19211 1 CH 113 which provided a definition of
intention to use.
On the facts the Learned Judge that both parties were aggrieved. In
analysing the evidence in a meticulous and systematic fashion the Learned
CPCA had no intention in using the TM Polar at the time of registration.
However from the conduct of CPCA the Judge found that that there was no
firm intention to use the TM Polar. The Learned Judge reasoned that CPCA
a bona fide intention to use its TM in respect of the class in which it was
registered at the time of registration. Similarly as against the assignee
CDC the Judge found on the evidence that CDCP had no intention to use the
mark Polar Beer. Orders were made to expunge both Trademarks from the
Register.
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Name: Kulraj Kamta, Trademark Agent, Attorney at Law
Address: Box 346, Port of Spain, Trinidad, West Indies