Federal Court Of Canada Expunges TRAVEL LEADERS Trademark

On March 8, 2023, the Federal Court of Canada (the Court) issued its decision in Travel Leaders Group, LLC v 2042923 Ontario Inc. (Travel Leaders), 2023 FC 319, expunging the trademark registration for TRAVEL LEADERS owned by 2042923 Ontario Inc. (Ontario Inc.) because it was abandoned by the owner.

In 2008, Travel Leaders Group, LLC (TLG) filed for registration of TRAVEL LEADERS in Canada based on proposed use.  Ontario Inc., which had allegedly operated under the business name “Travel Leaders”, opposed TLG’s application and rejected TLG’s offer to purchase the TRAVEL LEADERS trademark for $4,000 plus a license back to Ontario Inc.  TLG’s application was eventually abandoned.

In 2010, Ontario Inc. filed an application to register the TRAVEL LEADERS trademark, claiming use in Canada since 2005; its application was registered in 2011.  TLG offered to purchase the registration from Ontario Inc. for $25,000, or in the alternative, the business at its fair market value.  Ontario Inc. counteroffered at $850 million, and later posted an online advertisement for sale of the trademark registration for $80 million.

On February 14, 2017, TLG filed its Statement of Claim, asserting that Ontario Inc.’s registration was invalid and should be expunged from the Canadian Trademark Register (the Register).

In assessing TLG’s expungement claim, the Court noted that use of a trademark requires evidence of both its use in connection with services provided and its communication to the relevant consumers.  The Court found that there was “copious evidence” pointing to an inactive business, including investigative evidence showing that Ontario Inc. had not used its office space with any regularity.  The Court also stated that Ontario Inc. provided no evidence of its use of the TRAVEL LEADERS trademark in association with the performance of its travel services.  The Court maintained that the mere existence of signage, although displayed in Ontario Inc.’s office space prior to the relevant date, “does not establish that it associates in clients’ minds Ontario Inc.’s travel services with the TRAVEL LEADERS trademark”.

The Court therefore found that Ontario Inc. had not used the registered trademark in association with its travel services for a lengthy period prior to the relevant date and that such non‑use continued through the ensuing period. The Court also concluded that this supported an inference that Ontario Inc. intended to abandon the mark.

After dismissing the other claims regarding material misstatement, bad faith, infringement, depreciation of goodwill, and passing off, the Court ordered that Ontario Inc.’s TRAVEL LEADERS trademark be declared invalid and struck from the Register.  The Court awarded TLG $2,000 in nominal damages and $20,000 in punitive damages.

Summary By: Steffi Tran