Ling Chi Medicine Co. ( H.K. ) Ltd. v. Persaud
T-64-95
Tremblay-Lamer J.
6/2/97
11 pp.
Application under Trade-marks Act, s. 57 for order expunging respondents' registration of trade-mark "Shiling Oil" from register of trade marks-Applicant manufacturing, selling "Shiling Oil" for over fifty years-Registered owner of trade mark "Shiling Oil" in Hong Kong, Benelux countries, Curacao, El Salvador-Respondent Universal Foods and Merchandise Co. (UFMC) manufacturing, selling own version of "Shiling Oil" in Canada-Entered into agency agreement with applicant to be applicant's exclusive distributor of "Shiling Oil" in Canada-UFMC applying for registration of trade mark "Shiling Oil"-Registration obtained on August 15, 1980-Applicant terminating agency relationship with UFMC-Challenging registration on ground respondents not persons entitled to secure registration within meaning of Act, s. 18(1)-Distributor, agent having no right to register trade mark owned by foreign principal under own name and for own benefit-Fiduciary duty owed by distributor, agent to foreign principal-Breach of fiduciary duty ground for trade-mark expungement-Fiduciary duty owed by distributor, agent to principal including duty of full disclosure-Rationale for disclosure requirement to allow principal to give informed consent-Respondents not disclosing all material circumstances-Respondents' letters dated February 12, March 11, 1980 vague-Respondents breached fiduciary duty-Not entitled to secure registration of "Shiling Oil" trade-mark-Whether applicant barred from relief based on principle of estoppel by laches or acquiescence-Defendant must establish delay has caused him to be prejudiced-Unreasonable delay alone not enough-Applicant informed of registration by letter from respondents dated September 6, 1984-Words used therein clear, unambiguous-Applicant only instituted legal proceedings on January 11, 1995-Unreasonable delay-Granting relief would cause respondents to be prejudiced-Application dismissed-Trade-marks Act, R.S.C., 1985, c. T-13, ss. 18(1), 57.