Ruling rejects claim that respondent was not entitled to register challenged mark
Canada’s Federal Court has granted an application under s. 57(1) of the Trademarks Act, 1985 (TMA) to expunge a trademark registration based on the applicant’s grounds of bad faith and non-distinctiveness, but denied the applicant’s non-entitlement argument.
In FXSWEDE AB v. GENGBIN XU, 2025 FC 1864, the applicant used its brand, Tress Wellness, in association with home waxing kits and waxing accessories. The Swedish limited company used its Tress Wellness trademark in word form and with a design.
The applicant displayed its trademark on packaging for its waxing products sold in Canada. Specifically, it started selling Tress Wellness goods via Amazon’s North American remote fulfillment program in November 2020 and via the Amazon Canada marketplace in January 2021. It earned over $1 million in sales through both channels between Nov. 30, 2020, and Oct. 31, 2024.
On Nov. 30, 2020, the respondent applied to register the Tress Wellness trademark and three other marks. On Jan. 20, 2022, via trademark application no. 2161346, the applicant applied to register its Tress Wellness trademark for electric warmers to melt wax.
On Apr. 5, 2023, via trademark application no. 1,117,533, the respondent obtained registration for the Tress Wellness trademark for depilatory wax and preparations, among other goods.
In an undefended application, the applicant wanted to expunge the respondent’s trademark registration for Tress Wellness. The applicant alleged bad faith, non-entitlement, and non-distinctiveness.
Expungement granted
The Federal Court directed the trademarks registrar to strike trademark application no. 1,117,533 for Tress Wellness from the register for being invalid under ss. 18(1)(e) and 18(1)(b) of the TMA.
The court ordered the respondent to pay the applicant $6,500 in lump sum costs, including disbursements and taxes.
First, the court determined that the applicant met the low threshold of establishing that it was a “person interested” under ss. 2 and 57(1) of the TMA. The court noted that the applicant had applied to register its asserted trademark and had used it before the respondent registered the challenged trademark.
Second, the court ruled that the applicant properly served the respondent with its notice of application and met the requirements of r. 135 of the Federal Courts Rules, SOR/98-106, through service on the trademark agent.
The court relieved the applicant from further service. The court found that the applicant did not need to serve the respondent with additional documents regarding the proceeding under r. 145(a) of the rules, upon the expiration of the time to file a notice of appearance.
Third, the court held that the applicant failed to establish that the respondent was not entitled to register the Tress Wellness trademark. The court explained that the applicant was unable to show the requisite prior use.
However, the court decided that the respondent had applied to register the Tress Wellness trademark in bad faith and, through a purported representative, tried to sell the trademark to the applicant for $30,000, far above the reasonable costs of trademark registration.
Thus, the court found the applicant entitled to deem the registration void ab initio and request the expungement of the respondent’s trademark registration under s. 18(1)(e) of the TMA. The court added that the applicant had a legitimate commercial interest in the Tress Wellness trademark, as it generated more than $1 million in Canadian sales from 2020–24.
Lastly, the court saw no evidence that the Tress Wellness trademark was distinctive to the respondent or that the respondent had used the trademark in Canada or elsewhere. According to the court, given the applicant’s sales volume, its trademark had become known in Canada, sufficiently negating any potential distinctiveness to the respondent.
The court concluded that the applicant had successfully shown the sale of its branded kits in Canada and the association of the Tress Wellness trademark with its waxing kits, which overlapped with the goods described in the respondent’s challenged registration.
