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 Judge found that there was no evidence produced by CDC to establish 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 form the Register.

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Name:   Kulraj Kamta, Trademark Agent, Attorney at Law
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