Appeal court affirms unfair competition finding, refusal to expunge copyright registration
The Federal Court of Appeal has upheld a Federal Court’s refusal to declare that the plaintiff Canadian corporation owned an unregistered trademark, that the US-based defendants engaged in unfair competition, or that the defendant company’s copyright was invalid.
The individual defendants/respondents were spouses and US residents. The husband owned the defendant Park Enterprises Worldwide Inc., a California-based company that sold and distributed clothing at the wholesale level.
The wife was involved in all aspects of Park’s business operations. Park was the registered owner of a Canadian copyright registration for an artistic work titled “wanakome mountain,” which served as a logo.
Wanakome Inc., the plaintiff/appellant, applied for the trademark WANAKOME for use in association with goods such as bags and clothes. It brought an action under the Trademarks Act, 1985, and sought to expunge the allegedly invalid copyright registration for the logo.
The plaintiff claimed that it owned the unregistered trademark WANAKOME and that the defendants engaged in unfair competition prohibited under ss. 7(b), (c), and (d) of the Trademarks Act. The defendants opposed the application.
Plaintiff’s action denied
On May 6, 2024, in Wanakome Inc. v. Martin, 2024 FC 688, the Federal Court dismissed the action, as it did not deem the plaintiff entitled to any of the requested remedies.
First, the court could not find that the plaintiff owned all rights, title, and interest in the trademark. The court also could not attribute all use of the trademark to the plaintiff.
Second, the court determined that the plaintiff failed to satisfy the s. 7 allegations. The court explained that the evidence did not establish unfair competition.
Third, the court saw insufficient evidence to expunge the copyright registration for the logo.
The plaintiff appealed the Federal Court judgment on the grounds of reviewable errors. The plaintiff alleged that the Federal Court:
- misapplied the law
- exceeded its jurisdiction by effectively determining matters relating to a shareholder dispute and trademark opposition proceedings when deciding whether the plaintiff owned the trademark
- misapprehended the evidence in dismissing the unfair competition claim and in declining to expunge the copyright registration
Plaintiff’s appeal fails
On Jan. 21, 2026, in Wanakome Inc. v. Martin, 2026 FCA 12, the Federal Court of Appeal dismissed the appeal with costs. The appeal court saw no palpable and overriding error to overturn.
Regarding ownership of the trademark, the appeal court ruled that the Federal Court:
- properly found that it had jurisdiction to tackle the issue and the authority to interpret the contractual documents in the evidence
- correctly cited the legislative sources of its jurisdiction in the Federal Courts Act, 1985; the Trademarks Act; and the applicable jurisprudence
- carefully measured its words to avoid going beyond its authority
Regarding the finding of no unfair competition, the appeal court held that the Federal Court applied the relevant legal tests, carefully reviewed the evidence, and made well-supported factual findings that deserved deference.
As for the refusal to expunge the copyright registration, the appeal court saw no reason to interfere. The appeal court noted that the Federal Court found that the wife authored the logo and that Park validly registered the copyright in the artistic work on her behalf.
