In Parfums de Coeur, Ltd. v. Asta, 2009 FC 21, the Federal Court dismissed an application for expungement of a trade-mark registration that had been amended to address a material misstatement. The Court found that there was a clear difference between United States and Canadian TM law as the U.S. doctrine of fraud does not require actual fraud to find a material misstatement in the declaration of use. In the U.S., finding a material misstatement is enough to render the entire registration void, while in Canada, s.57 of the Trade-Marks Act does not specify that a material misstatement renders the TM registration void.

Christopher Asta, an Ontario resident allegedly doing business as Asta Hairstyling School, applied in 1999 for the trademark “BOD” in hair care, skin care, and body care products, and subsequently began using the TM for wares in only the first of these categories. Parfums de Coeur (PDC), an American corporation who had been selling body sprays and fragrances under the name “BOD MAN” since 2000 in the U.S. and 2002 in Canada, informed Asta of an intent to cancel his trademark for misuse.

Asta filed for an amendment to narrow the scope of his own mark to the shampoos and conditioners he was actually selling. PDC, after discovering that Asta’s amended registration in hair care barred their registration of “BOD MAN” as a trademark in body care and men’s fragrances, applied to the Federal Court to have the trademark struck as an inaccurate representation of Asta’s rights per s. 57 of the Trade-marks Act (TMA). They argued that the initial overbroad scope of Asta’s registration represented an inaccurate expression of use regardless of the subsequent changes and that there was confusion surrounding the ownership of the TM. The Court, examining Asta’s ownership of the TM, found faults in the documentary evidence but accepted them in context, weighing the balance of evidence in favour of Asta’s ownership and first use of the mark.

The Court further examined the existing jurisprudence for the applicability of s.57 of the TMA to the misstatements. Citing General Motors Canada v. Decarie Motors Inc. ([2001] 1 F.C. 665 (F.C.A.)), the Court confirmed that registrations could be invalidated by fraudulent misstatements, or innocent misstatements with the specific effect of securing a registration otherwise impossible under s. 12. However, the Court accepted Asta’s evidence of innocent mis-belief as a basis for his initial misstatement.

The Court held, citing the example of WCC Containers Sales Ltd. v. Haul-All Equipment Ltd. (2003 FC 962), that the misstatement of claiming use in skin care and body care did not render the mark invalid in relation to the hair-care wares that were actually used, and subsequently claimed in the amended registration. The innocent defect in the initial registration was cured by s. 45 of the TMA, which provides that where the misstatement is innocent and in good faith, there is an opportunity to amend the registration, The resulting registration was valid when the application to strike was filed. The American-based policy rationale advanced by PDC for punishment was seen by the Court as unjustified by Canadian law in the absence of Parliamentary statement to the contrary and the application was thus dismissed.