B.C. man registered Chinese company’s trademark in Canada so he could extort it, court rules
A federal court expunged a trademark registered by a Richmond, B.C. man, finding its sole purpose was to extort money from or profit from a Chinese restaurant chain .
In a ruling issued earlier this month in Toronto, Judge Angela Furlanetto ruled in favor of Beijing Judian Restaurant Co., which had applied to have Wei Meng’s trademark expunged.
The company has operated a chain of barbecue restaurants in China since 2005 and had “nearly 40” restaurants operating there as of July 2020, according to court documents.
Since 2018, the company has also expanded into Canada, opening restaurants in Vancouver, Toronto and Richmond. All of the restaurants display the company’s Ju Dian characters, which it sought to drop in November 2017.
“Unbeknownst to Plaintiff, on June 27, 2017, Individual Defendant…had already filed an application to register the JU DIAN trademark and design for use in association with ‘catering services; take-out food services” and “beer” on the basis of the proposed use. “, wrote Furlanetto in his decision.
“Around the same time, the defendant also applied, based on the proposed use, to register the trademarks of other restaurant chains in China.”
Meng’s trademark application was granted, and in April 2019 he began approaching the company alleging that its Canadian restaurants were infringing on his trademark, according to court documents.
At one point, Meng met with representatives of Beijing Judian at their Vancouver location and demanded $1.5 million for use of the mark, Furlanetto’s decision reads, noting that the company refused to pay.
Later, after failing to get the company to pay, the ruling says Meng posted a public advertisement on the Chinese-language online marketplace VanSky, offering the brand for sale to potential restaurateurs for an annual fee of 100 $000.
A Beijing Judian associate responded to the ad and received the following response, quoted in the decision:
“$100,000 a year is just one person’s salary, no other service charges. You won’t find another franchise as low as this price. If you open a store without a reputation, you will lose even more money. [than my asking price]. You can search JuDian Chuan Ba on Baidu and you will see how many stores are in Beijing. Anyone in the industry knows that strong brands attract customers. If you are interested contact me.”
This response, coupled with the fact that Meng’s trademark was identical to that of Beijing Judian and the fact that he had registered several other trademarks resembling the logos of other Chinese restaurant chains, led Furlanetto to accept the request of the business and to deregister Meng’s trademark.
“There is no evidence on the part of the defendant to rebut the inference created by the circumstantial evidence or to indicate any intention to use JU DIAN and Design Mark as a mark in association with its own catering services,” said writes Furlanetto. “On the contrary, all the evidence indicates the defendant’s intention to use the JU DIAN and the design to extort money from the plaintiff or to obtain money from other people.”
The judge, however, refused to grant the company’s request for $15,000 in exemplary damages, finding that “expungement of the mark is the appropriate remedy”.
She concluded that Beijing Judaian is entitled to legal costs.