Federal Court Of Canada Expunges Chinese Character Trademarks On The Basis Of Confusion With Prior Registrations And Bad Faith

On February 8, 2023, the Federal Court of Canada (the Court) issued its decision in Cheung’s Bakery Products Ltd. v Easywin Ltd., 2023 FC 190, in which it expunged two Chinese character trademark registrations owned by Easywin Ltd. (Easywin) on the basis of confusion with prior trademark registrations and bad faith.

The parties are competitors in the field of bakery goods and related services.  Cheung’s Bakery Products Ltd. (CBP) sought to expunge two trademark registrations in the name of Easywin on the basis that Easywin was not entitled to secure the registrations because the marks were confusing with CBP’s trademark registrations (marks shown at right), and the applications were filed in bad faith.

On the issue of confusion, the Court was satisfied that CMP had established a likelihood of confusion between CBP’s registered trademarks and Easywin’s subsequently registered marks.  The Court noted that the issue of confusion must be assessed from the perspective of persons who are likely to buy the goods or services associated with the trademarks in the particular market in which those goods or services are offered.  In this case, the Court concluded that the relevant consumer was “an average, casual Canadian consumer who can read and understand Chinese characters, albeit with varying degrees of fluency.”

On the question of bad faith, the Court noted that, at the time of filing, Easywin was familiar with CBP and knew that they targeted the same consumers and sold the same types of bakery-related goods and services.  Further, Easywin was aware of a dispute between a related corporate entity and CBP regarding similar issues, and therefore, the Court concluded that Easywin could not have been satisfied that it was entitled to apply for the trademarks, and “Easywin simply ignored the very facts that should have given it pause before filing the trademark applications.”

The Court declared Easywin’s registrations invalid and ordered the Registrar to expunge the registrations.

Summary By: Michelle Noonan