Infringing Trademarks Cannot Remain on the Register

By Richard Stobbe

In a battle between the suitcase makers, the Federal Court of Appeal found that Travelway Group International Ltd. (Travelway), had infringed the trademarks owned by Wenger, and had passed off its own goods as Wenger’s. The Court granted Wenger a declaration of trademark infringement, ordered a permanent injunction prohibiting Travelway from using its infringing marks, and ordered Travelway to destroy or deliver up all wares, packages, labels and advertising material.

Basically, this was a complete victory for the well-known Swiss-cross style Wenger brand, depicted below.

travelway

However, the Federal Court of Appeal decision resulted in an anomaly: at the time of the trademark infringement lawsuit in 2013, the trademarks of both Wenger and Travelway were registered in Canada. In the appeal decision, the Court concluded, ultimately, that “each of the Travelway marks is confusing with each of the Wenger marks”, but the Court left the registrations in place, with the result that infringing, invalid trademarks were nevertheless maintained on the register in Canada.

The court in Wenger SA v. Travelway Group International Inc., 2019 FC 1104 (CanLII), corrected this, expunging the Travelway marks.

It’s also worth noting that the Travelway registrations were not found to be void ab initio, and thus benefited from the protection granted by section 19 of the Trademarks Act, which indicates that a registration is a defence to infringement. The court appears to have accepted Travelway’s argument that the protection of section 19 should extend to the variants of the Travelway marks, given that the Federal Court of Appeal found them to be permissible variants.

 

Related Reading: CANADA: Infringing Trademark Registrations Must Be Expunged, Court Finds

Calgary – 07:00 MST

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