Canada: Continuous Use Required

Last Updated: July 16 2012
Article by John McKeown

A recent decision of the Trade-marks Opposition Board upheld an opposition on the basis that the applicant had not used the applied-for mark since the date set out in the trade-mark application.

The Facts

The applicant applied to register the trade-mark RON CASTILLO LABEL DESIGN based on use in Canada since at least as early as July 1998 in association with rum. The trade-mark is reproduced below.

The Opposition

The opponent opposed the application on the grounds that the application did not comply with the Trade-marks Act in that the applicant or its predecessor in title had not used the mark in Canada in association with rum since at least as early as July 1998.

The Act requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed. The applicant bears the onus of establishing, on the balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the opponent to present sufficient admissible evidence from which it could be reasonably concluded that the facts alleged to support the ground of opposition exist. The burden is lighter concerning the requirement to show use of the mark, since the facts relating to such use are within the knowledge of the applicant.

It appears that the applicant and opponent have been involved in a previous dispute relating to the trade-mark CASTILLO for use with rum. The opponent, as its evidence in the opposition, filed certified copies of the affidavits filed and reasons for judgement in a section 45 proceeding involving the same parties or their predecessors. The section 45 proceeding related to the trade-mark CASTILLO registered for use in association with rum. In that proceeding, the applicant's predecessor in title was required to show that the trade-mark CASTILLO was being used in Canada in association with rum between the October 26, 2002 and October 26, 2005.

It appeared from the affidavits that the applicant was not using the trade-mark CASTILLO in Canada between November 24, 1999 and August 4, 2008. The Hearing Officer found that use of the trade-mark RON CASTILLO LABEL DESIGN would qualify as use of the trade-mark CASTILLO and the affidavits were the equivalent of saying that there was no use of the applied for mark during the period November 24, 1999 and August 4, 2008.

The Hearing Officer found that the statements contained in the affidavits filed in the section 45 proceedings were admissions against interest and admissible in the opposition. This evidence suggested that the applicant was not using any trade-mark that included the word CASTILLO in Canada between November 24, 1999 and April 22, 2003.

The issue was not whether the applicant had abandoned its mark, but simply whether it had continuously used it in the normal course of trade. As it appeared that the applicant was not using the mark during the period set out above, the opponent had satisfied its initial evidential burden.

The applicant chose not to file any evidence and accordingly the opposition was allowed and the application was dismissed. An appeal to the Federal Court is pending.

Comment

When an application for a trade-mark is based on use, the applicant should be in a position to show continuous use of the applied for trade-mark in the normal course of trade since the date claimed.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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