On February 19, 2019, the Federal Court (Court) issued its decision in Bedessee Imports Ltd. v. GlaxoSmithKline Consumer Healthcare (UK) IP Limited (2019 FC 206), dismissing an application brought by Bedessee Imports Ltd (Bedessee) to expunge GlaxoSmithKline Consumer Healthcare (UK) IP Limited (GSK)’s HORLICK’S and HORLICKS trademarks.

Bedessee sought to expunge GSK’s HORLICK’S and HORLICKS trademarks registered in 1917 and 1952 respectively (the Marks), on the basis that they:

  1. were not registrable on the date of registration;
  2. were not distinctive; and
  3. had been abandoned.

In order to demonstrate that the Marks were not registrable, Bedessee relied upon advertisements of the Marks from the relevant time of registration to argue that each of the Marks were used in a descriptive and generic manner.  However, Bedessee was not successful. The Court found the 1917 HORLICK’S mark valid based on binding precedent and found the 1952 HORLICKS mark valid based on competing historic advertisements and the presumption of validity.

With respect to distinctiveness, Bedessee argued that the Marks are no longer associated with the wares described in the original registrations and, as a result of the introduction of other related products, and various transfers of interest, the Marks are no longer distinctive.  The Court disagreed and found that Bedessee failed to produce evidence that the distinctiveness of the Marks was lost as a result of these various transactions.

On the issue of abandonment, the Court held that there had been “use” of the Marks in Canada and that there was no evidence that GSK intended to abandon the Marks.

Accordingly, the Court found that Bedessee had not met its burden of proof and dismissed the application with costs.

Summary By: Michelle Noonan

E-TIPS® ISSUE

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