Lending Tree, LLC v. Lending Tree Corp., 2007 FCA 70

Date: 20070212

Docket: A-172-06

Citation: 2007 FCA 70

CORAM:       LÉTOURNEAU J.A.

                        SEXTON J.A.

                        EVANS J.A.

BETWEEN:

LENDING TREE, LLC

Appellant

and

LENDING TREE CORP. and

ALEX HADITAGHI DOING BUSINESS AS LENDING TREE CORP., and

THE MINISTER OF INDUSTRY (REGISTRAR OF TRADE-MARKS) and

THE ATTORNEY GENERAL OF CANADA

Respondents

Heard at Toronto, Ontario, on February 12, 2007.

Judgment delivered from the Bench at Toronto, Ontario, on February 12, 2007.

REASONS FOR JUDGMENT OF THE  COURT BY:                                                 SEXTON J.A.

Date: 20070212

Docket: A-172-06

Citation: 2007 FCA 70

CORAM:       LÉTOURNEAU J.A.

                        SEXTON J.A.

                        EVANS J.A.

BETWEEN:

LENDING TREE, LLC

Appellant

and

LENDING TREE CORP. and

ALEX HADITAGHI DOING BUSINESS AS LENDING TREE CORP., and

THE MINISTER OF INDUSTRY (REGISTRAR OF TRADE-MARKS) and

THE ATTORNEY GENERAL OF CANADA

Respondents

REASONS FOR JUDGMENT OF THE COURT

(Delivered from the Bench at Toronto, Ontario, on February 12, 2007)

SEXTON J.A.

[1]               This is an appeal from the decision of Dawson J. who decided that the Trade Mark  Opposition Board (Board) had jurisdiction to consider the issue of whether there had been a valid amendment  by the Registrar of Trade Marks changing the name of the applicant for a trade mark, and that the Board was the appropriate body to consider that issue in the circumstances.

[2]               In error, Mr. Alex Haditaghi had filed his application for a trade mark in the name of “Lending Tree Corp.” which had not been incorporated as of the application date.  When the Appellant filed an opposition to the application, Mr. Haditaghi realized his error and applied to amend the application by replacing the corporate name with his own name.  The Appellant was given notice of the application.

[3]               The Registrar of Trade Marks permitted the amendment and also informed the Appellant that if it considered that an amendment to its statement of opposition was required, it could request leave to do so.

[4]               The Appellant then launched an application for judicial review of the decision of the Registrar of Trade Marks to allow the amendment.

[5]               The Application’s Judge held that the issue of the propriety of the amendment of the application was a matter that could be raised and considered in the opposition proceedings and that the Appellant should, in the absence of special circumstances raise the issue in that forum.

[6]               Since the issue of whether the applicant for a trade mark has used the trade mark at the time of the application is one which must be considered by the Board we see no reason to disagree with the Application’s Judge.

[7]               Section 38 of the Trade Mark Act sets out the grounds on which an application for a trade mark can be opposed.  One of these grounds is that the application does not conform to the requirements of Section 30.

[8]               Section 30(b) of the Trade Mark Act deals with the date from which the Applicant has used the trade mark.

[9]               The Appellant has already  argued in its statement of opposition that Lending Tree Corp. was not and could not have been using the name Lending Tree Corp. because it did not exist at the date of alleged use.

[10]           In order for the Board to consider the Appellant’s ground of opposition that the applicant for the trade mark had not and could not have used the mark on the date alleged in the application, the Board must necessarily determine whether the application was validly amended.  Accordingly the Board has jurisdiction.

[11]           The Appeal will therefore be dismissed with costs.

                                                                                                            “J. Edgar Sexton”

FEDERAL COURT OF APPEAL

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                          A-172-06

(APPEAL FROM AN ORDER OF THE HONOURABLE MADAM JUSTICE DAWSON, FEDERAL COURT, DATED MARCH 22, 2006, T-588-05)

STYLE OF CAUSE:                          LENDING TREE, LLC

Appellant

                                                            and

                                                            LENDING TREE CORP. and

                                                            ALEX HADITAGHI doing business as LENDING TREE CORP., and THE MINISTER OF INDUSTRY (REGISTRAR OF TRAD-MARKS) and THE ATTORNEY GENERAL OF CANADA

Respondents

DATE OF HEARING:                      FEBRUARY 12, 2007

PLACE OF HEARING:                     TORONTO, ONTARIO

DATE OF HEARING:                       FEBRUARY 12, 2007

REASONS FOR JUDGMENT

OF THE COURT BY:                       (LÉTOURNEAU, SEXTON & EVANS JJ.A.)           

DELIVERED FROM THE

BENCH BY:                                       SEXTON J.A.

APPEARANCES:

SOLICITORS OF RECORD: