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Medos Services Corporation, Marathon Medical Inc., Alexander Vlasseros v. Ridout and Maybee LLP, 2015 FCA 77 (Noel C.J.)
March 18, 2015
Alexander Vlasseros for the Appellants, Medos Services Corporation, Marathon Medical Inc., and Alexander Vlasseros
Christopher D. Langan for the Respondent, Ridout and Maybee LLP
There were two issues in this appeal.
The first issue before the Court was “whether the Federal Court Judge erred in determining that any breach of natural justice that may have occurred in the proceedings before the Register of trade-marks (the Register) would have been cured by the proceedings in the Federal Court”. The Appellants argued that a breach of natural justice occurred as the burden of proof before the Register was lower than that before the Federal Court. This submission was rejected by the Court who held that the burden of proof in proceedings before the Registrar apply equally to proceedings before the Court. The Court of Appeal also held that any breach of natural justice could be cured by the procedure set out in section 56 of the Trade-marks Act. Chief Justice Noel stated that “in those cases where the issue is one of notice and the right to be heard before the Register, an appeal with new evidence under section 56 can allow for the breach to be cured”.
The second issue before the Court was whether the Federal Court Judge erred in his analysis of the evidence of use contained in correspondence with foreign suppliers. The Appellants relied on foreign e-mail correspondence which contained the word “medos” as evidence of use of the trade-mark “Medos” (the Mark). In one instance the word “medos” appeared in email communications as part of the e-mail address used by the Appellant, Alexander Vlasseros. The Court held that this was not use of the Mark because the Mark was not distinguished from the surrounding text. In another instance, the word “medos” was used as the company name in the body of an e-mail. The Court also held that this was not use of the Mark as “use as a company name is distinct from use as a trade-mark and particularly unhelpful in proving use as a trade-mark where the mark is not distinguished from the surrounding text”. The Court came to the same conclusion in cases where the Medos named appeared on fax transmissions which postdated the relevant period. In all such cases the Court held that “although the word “medos” appears in these communications, no mention was made of the trade-mark “Medos”.
Appeal dismissed.
By: Rosamaria Longo, Gardiner Roberts LLP