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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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