August 19, 2020
In Spectrum Brands, Inc. v. Schneider Electric Industries SAS, 2020 FC 386, Spectrum Brands, Inc. (“Spectrum”) sought an Order extending the deadline for filing a Notice of Application (the “Motion”) to contest a split decision of the Registrar of Trademarks (the “Registrar”).
The decision concerned the trademark WISER and refused, in part, the registration of the trademark. The Federal Court ultimately found that the Motion did not satisfy the requirements to obtain an extension of time.
Schneider Electric Industries SAS (“Schneider”) had applied to the Registrar to register the trademark WISER. Spectrum opposed the application. On September 25, 2019, each party received notice of the Registrar’s split decision, refusing Schneider’s application with respect to certain specified goods, but allowing its application regarding others.
The parties were notified they had until November 25, 2019 to contest the part of the decision that was unfavourable to them. Schneider filed a Notice of Application on November 25, 2019, but Spectrum Brands failed to do so. On February 21, 2020, Spectrum Brands filed the Motion seeking an extension of time.
In denying the Motion, the Federal Court applied the following four-part test outlined in Canada (Attorney General) v Hennelly, which would require Spectrum to demonstrate:
a continuing intention to pursue its application;
that the application had some merit;
that no prejudice to Schneider would arise from the delay; and
that a reasonable explanation for the delay existed.
While the Court found Spectrum’s appeal might have some merit and that Schneider was not prejudiced by the extension, Spectrum failed to show a continuing intention to pursue its application and could not give a reasonable explanation for its additional two months’ delay.
The Court therefore dismissed the Motion.
Authors: Jaclyn Tilak and Emily Windrim