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.
 
 

Copyrighted :
Name:   Kulraj Kamta, Trademark Agent, Attorney at Law

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