The case Medos Services Corporation v. Ridout and Maybee
LLP 2013 FC 1006 is an example of what happens when the owner
of a registered trademark ignores a Section 45 notice.
As a basic premise a registered trademark must be used in order
to maintain those rights and a procedure exists under Section 45 of
the Trade-Marks Act to weed out dead wood from the
Register. Upon receipt of such a notice the registered owner
has three months to provide an affidavit or statutory
declaration showing, with respect to each of the wares or services
specified in the registration, whether the trademark was in use
during Canada at any time in the previous three years and, if not,
the date when it was last used and the reason why it has not been
In this case the Registrar of Trade-marks, at the request of the
respondent law firm, mailed a letter by Express Post to the
registered owner. No reply was received by the deadline and
the trademark registration was expunged.
This case was the appeal of that decision. The appeal is
helpful in clarifying numerous items important to owners of
registered trademarks including:
The registered owner should ensure that the address on file at
the Trade-marks Office is the correct and current address –
or appoint an agent and representative for service who has a
There is no basis for a submission that the registered owner
not afforded natural justice in ignoring or not responding to the
Section 45 letter as the law provides the owner a perfectly
adequate recourse, an appeal under Section 56 of the
Trade-Marks Act with new evidence.
The appellant was self represented. The Court and
respondent did not rely on many procedural irregularities but did
object to the appellant giving what was tantamount to
evidence. The Court noted the famous words of Lord Atkins in
Evans v Bartlam  AC 473,  2 All ER 646, at
The fact is that there is not and never has been a
presumption that every one knows the law. There is the rule that
ignorance of the law does not excuse, a maxim of very different
scope and application.
The evidence must show the connection between the alleged use
and the mark in relation to the claimed wares or services. On
the evidence the Court observed:
a bill from a telecommunications service provider does not
speak to the use of the mark if it does not show a connection to
correspondence with possible business partners that do not
mention the mark do not show use of the mark,
rental receipts which do not show use of the mark do not
provide evidence of use in advertising, and
correspondence relating to product maintenance that do not
refer to the mark were found not to be evidence of use of the mark
and even if they related to previously sold branded products (of
which there was no evidence) there was no indication that sales of
the branded products occurred in the prior three years
As a result the expungement decision was upheld on appeal.
The lesson for owners of registered trademarks is to take
correspondence from the Trade-marks Office seriously.
Ensuring that an agent and representative for service are appointed
can ensure that such important correspondence is received and acted
on in a timely manner.
A second lesson for all registered trademark owners is to pay
attention to the requirement for use of the mark in relation to the
claimed wares or services and maintain evidence of such use in the
event ever challenged.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).