Federal Court of Appeal Dismisses Appeal to Expunge HORLICKS Trademarks

On May 26, 2020, the Canadian Federal Court of Appeal (FCA) dismissed an appeal by Bedessee Imports Ltd. (Bedessee) from a decision of the Federal Court dismissing an application brought by Bedessee to expunge GlaxoSmithKline Consumer Healthcare (UK) IP Limited (GSK)’s HORLICK’S and HORLICKS trademarks (the Marks) (2020 FCA 94).

The Federal Court dismissed Bedessee’s application to expunge the Marks on the basis that Bedessee failed to produce evidence that the distinctiveness of the Marks had been lost as a result of various assignments, as previously reported by the E-TIPS® Newsletter here.  The Federal Court also dismissed Bedessee’s claim that the Marks had been abandoned, as there was no evidence of lack of use or intention to abandon the Marks.

On appeal, the FCA upheld the Federal Court’s decision, holding that it cannot be inferred from the assignments themselves that the public would believe that HORLICKS products that originate with the assignee were actually derived from a prior trademark owner.  Therefore, the FCA concluded that Bedessee had not met its burden of proof in establishing that the Marks were not distinctive at the relevant date.

On the issue of abandonment, the FCA held that the Federal Court did not err in rejecting the evidence regarding intention to abandon as “inadmissible hearsay”. The FCA dismissed the appeal with costs.

Summary By: Michelle Noonan