Federal Court Dismisses Application To Invalidate Geox’s AMPHIBIOX Trademark

On September 13, 2024, the Federal Court of Canada (the Court) in Giuseppe De Luca v Geox S.P.A., 2024 FC 1441, dismissed Mr. De Luca’s (the Applicant) application to invalidate Geox S.P.A.’s (the Respondent) trademark AMPHIBIOX.

The Applicant sought the expungement of the Respondent’s AMPHIBIOX trademark and argued that it was invalid because it was not distinctive at the time the expungement application was commenced on March 28, 2022.  

The Court noted that the Applicant did not file any evidence of use of the ANFIBIO mark in Canada on March 28, 2022, and therefore the Applicant had failed to demonstrate that the ANFIBIO mark was known to some extent or that its reputation in Canada was substantial, significant or sufficient on March 28, 2022.  The Applicant attempted to rely on evidence he filed in a separate non-use cancellation (section 45) proceeding relating to his ANFIBIO mark.  However, the Court agreed with the Respondent that evidence before the Registrar of Trademarks in that proceeding was not before the Court in this proceeding, the conclusions that the Registrar drew from the evidence could not be used as evidence in these proceedings, and the section 45 proceeding dealt with a separate period of time (April 2012 to April 2015).

Ultimately, the Court held that the Applicant did not provide sufficient evidence to prove that the AMPHIBIOX mark was not distinctive at the relevant date, nor did he adequately establish the reputation of his own ANFIBIO mark to negate the distinctiveness of the AMPHIBIOX mark.   

As a result, the Court concluded that the Applicant failed to meet the burden of proof necessary for his application to expunge the AMPHIBIOX mark, and costs were awarded to Geox.

Summary By: Amy Ariganello