The Importance Of Obtaining A Trademark Registration

A decision of the Federal Court of Appeal, released on December 9, 2020, Group III International Ltd. v. Travelway Group International Ltd. [2020] FCA 210, clarifies the law concerning the impact of a registered trademark on pre-expungement claims when it has been expunged by the court. The decision emphasizes the importance of obtaining a trademark registration and opposing applied for trademarks when advertised.

Facts

This case has been before the courts on several occasions and most recently in 2019. In substance the applicant successfully expunged two trademark registrations owned by the respondent but was unsuccessful in obtaining damages for infringement during the period the respondent used the trademarks because the defendant could rely on the fact that it obtained registrations. Our comment which summarizes the facts is here http://www.gsnh.com/damages-after-expungement/