The Federal Court of Canada's recent case of Norsteel
Building Systems Ltd. v. Toti Holdings Inc. highlights the
importance of doing one's due diligence prior to using and
registering a trademark in Canada.1 The Court confirmed in its ruling
the longstanding tenet that prior use of a trademark by a third
party in association with the same or similar goods or services can
result in a trademark registration being deemed invalid.
The Facts
Toti Holdings Inc ("Toti") is an
Ontario company, incorporated in 2006.2 Norsteel Building Systems Ltd
("Systems") is a British Columbia
company, incorporated in 1992. The parties are both involved in the
business of manufacturing pre-engineered steel and metal. Both
parties (through themselves and their predecessors) co-existed for
years and, unbeknownst to one another, each used the trademark
NORSTEEL in association with their respective, yet similar
businesses in separate parts of Canada for years. In 2011, the
parties became
