Gouverneur Inc. v. One Group LLC, 2015 FC 128 (Mme. Justice Bédard)
February 3, 2015
Marcel Naud (Robic, S.E.N.C.R.L.) for the Applicant, Gouverneur Inc.
Jaimie Bordmand and David M. Wray (R. William Ray & Associates) for the Respondent, The One Group LLC.
Gouverneur initiated non-use cancellation proceedings against One Group’s registration for STK for bar services and restaurants. One Group submitted affidavit evidence that it had been in discussions with Gansevoort Hotel Group and Thompson Hotel Group to establish a STK restaurant in Toronto. At some point during these discussions, both Gansevoort and Thompson aborted their plans to open hotels in Toronto, thereby frustrating One Group’s plan to find a suitable location for a STK restaurant in Toronto. Based on the evidence, the Registrar held that One Group had established special circumstances excusing non-use of the mark STK and therefore maintained the registration. Gouverneur appealed to the Federal Court of Canada.
The Federal Court found that the Registrar had applied the wrong test for special circumstances excusing non-use and allowed the appeal. The Court ordered the Registrar to expunge One Group’s registration.
The Court clarified the test as follows. First, the Registrar must determine why the registrant did not use its trade-mark during the Relevant Period. Second, the Registrar must determine whether the reason for non-use constitutes “special circumstances” by being uncommon, unusual or exceptional. Third, the Registrar must determine whether the special circumstances excuse the non-use by considering the three criteria set out in Registrar of Trade Marks v. Harris Knitting Mills Ltd (1985), 4 CPR (3d) 488 (FCA).
By: Hung Nguyen, Deeth Williams Wall LLP