In a recent decision, the Federal Court of Canada has had an opportunity to consider and clarify the important issue of what level of prior use is required to invalidate a confusing trade-mark registration.
In J.C. Penney Company, Inc. v. Gaberdine Clothing Co. Inc., J.C. Penney (represented by Glen Tremblay of our Ottawa office) successfully expunged Gaberdine’s registration for the trade-mark ARIZONA BLUES JEANSWEAR CO. based upon J.C. Penney’s prior use of the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY in Canada.
Although J.C. Penney had established two individual sales of its garments in Canada under the confusing trade-mark prior to the date of filing of Gaberdine’s proposed use trade-mark application, it was also necessary to overcome a prior decision of the Federal Court which held that a single use of a trade-name prior to filing a proposed use application was not sufficient to expunge a registration.
