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
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
Appeal Allowed and Trade-mark Not Expunged Pursuant to Section
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
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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