Canada: Trade-marks Expunged As Registrations Were Invalid; But No Acquiescence (Intellectual Property Weekly Abstracts Bulletin - Week Of May 7, 2012)

Last Updated: May 15 2012
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders and Beverley Moore


Trade-marks Expunged as Registrations were Invalid; but No Acquiescence

Precision Door & Gate Service Ltd. v. Precision Holdings of Brevard, Inc.

In this case, the Applicant sought expungement of the Respondent's trade-marks from the Register. The Applicant had used its mark since 1997, whereas the Respondent applied for its marks in 2002 and became the registered owner of them in 2009. The Applicant applied for its mark in 2005; however, this application was refused due to the Respondent's marks. The Court ordered that the registrations were invalid and should be struck from the Register.

The Court held that a person who has used and registered a trade-mark in its country of origin is entitled to register it in Canada unless another person in Canada previously used a confusingly similar trade-mark or trade-name. The burden lies on the challenger to displace the presumption that the registrations are valid in this case. The Court held that although there were problems with some of the Applicant's evidence, there was good evidence of use prior to the filing of the Respondent's trade-marks. The Court then held that the marks were confusing. Therefore, the Respondent's registrations were invalid because it was not the person entitled to register them.

The Court did dismiss the Applicant's argument that the Respondent acquiesced in the registration of the trade-marks and could not challenge them now due to it waiting five years to challenge the marks. In order to prove acquiescence, the Applicant would have had to show that the Respondent did something more than just delay and the evidence only shows delay. Thus, there was no acquiescence.

Appeal Allowed and Trade-mark Not Expunged Pursuant to Section 45

Spirits International B.V. v. BCF S.E.N.C.R.L.

At the request of the Respondent, the Registrar of Trade-Marks sent a notice to the Appellant, Spirits International B.V. (Spirits), requiring it to show that its trade-mark had been used in Canada in association with vodka in the previous three years. Upon consideration of the affidavits filed by Spirits, the Hearing Officer of the Trade-marks Opposition Board concluded the evidence was not sufficient to show the required use and the Registrar decided to expunge the trade-mark. This decision was appealed to the Federal Court who upheld the Registrar's decision. A copy of the decision from the Federal Court is found here. A copy of our summary is found here. Spirits appealed further to the Federal Court of Appeal (FCA) who allowed the appeal and set aside the decision of the Registrar requiring expungement of the mark.

The Court held that in a Section 45 proceeding such as this one, the registrant must show use of the subject mark or that it was used by another person whose use accrued to the registrant's benefit. However, this burden is not a heavy one.

The FCA considered the new evidence filed by the Appellant in the Federal Court and held that those facts, together with the inferences that could be reasonably drawn from them were sufficient to show the requisite use of the mark during the relevant period. The FCA held that it followed from that finding that the Hearing Officer reasonably could have decided that the mark should not have been expunged and thus, the new evidence could materially have affected the Registrar's decision. The Judge should have considered the matter de novo and reached his own conclusion. Since he did not do so, the task fell to the FCA, whose analysis led to the conclusion that the requisite use during the relevant period was shown and that the appeal should be allowed.


The PMPRB has released the April 2012 issue of its quarterly NEWSletter.

CIPO has issued a practice notice indicating that it will accept applications for sound marks.

CIPO has an ongoing consultation regarding a Proposed Change: Accelerated examination of an industrial design application where priority has been claimed. The consultation is open until May 31, 2012.

The TPD and the BGTD have released the Summary Report of External Consultations on Phase II of the Summary Basis of Decision (SBD) project.

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