Leave To Appeal To SCC: Alliance Laundry Systems LLC v
Whirlpool Canada LP (FCA)1
On May 5, 2016, the Supreme Court of Canada dismissed Whirlpool
Canada LP's ("Whirlpool") application for leave to
appeal from the decision of the Federal Court of Appeal in:
Alliance Laundry Systems LLC v. Whirlpool Canada LP, 2015 FCA 232.
The Federal Court of Appeal had allowed Alliance Laundry Systems
LLC's ("Alliance") appeal from the Federal
Court's decision. The Federal Court of Appeal ordered that
Whirlpool's "SPEED QUEEN" trademark (Registration
Number UCA15837) be expunged.
The trademark was registered in 1941 in association with a set
of wares and services. The set included laundry washing machines
and laundry dryers. Whirlpool acquired the trademark in 2004. At
Alliance's request, the Registrar of Trademarks issued a notice
to Whirlpool under subsection 45(1) of the Trademarks Act. The
notice required Whirlpool to show use of the trademark within a
specified three-year period.
In response, Whirlpool filed an affidavit with four exhibits. In
the affidavit, Whirlpool testified that: 1) the trademark was used
in the normal course of trade within the three-year period; 2) the
trademark was used by being prominently displayed on the front of
the appliances; 3) SPEED QUEEN washers and dryers were sold by
Whirlpool and its licensee's during said period; and 4)
Whirlpool has retained direct or indirect control of the character
and quality of the washers and dryers. The exhibits included: a)
undated photos showing the trademark displayed on washers and
dryers; and b) a pair of invoices issued 11 weeks after the end of
the three-year period, for the sale of a number of the washers and
The Registrar expunged the registration of the trademark for all
wares and services except laundry washing machines and laundry
dryers. The Registrar concluded that the Whirlpool had established
use of the trademark in association with these wares during the
three-year period. Alliance appealed to the Federal Court. It
sought a finding that the Registrar's decision was not
reasonable. Alliance argued that the Registrar committed an error
in law by basing its finding of use on irrelevant evidence and on
vague and ambiguous statements in Whirlpool's affidavit.
Alliance acknowledged that the evidentiary threshold on the
registrant in "not very high," but submitted that
"it is still incumbent upon the [registrant] to show use, that
is to say how, when and where the trade-mark has been used"
(citing Plough (Canada) Ltd v Aerosol Fillers Inc (1981),
53 CPR (2d) 62).
The Federal Court reviewed the decision of the Registrar on a
reasonableness standard. The Court held that "although the
[Registrar's] interpretation of the evidence is controversial
... the outcome reached by the [Registrar] falls within the range
of acceptable outcomes defensible in fact and in law." In
support of this conclusion, the Court held that "even though
the evidence was somewhat general and lacked specificity, the
[Registrar's] findings have an evidentiary basis."
The Federal Court of Appeal reversed the Federal Court's
judgment on the basis that "the evidence of ... Whirlpool ...
[did] not, even on a generous view of its contents, meet the low
threshold of evidence required to show use of the trade-mark at
issue in association with [Whirlpool's] goods." The Court
held that the conclusion that Whirlpool's evidence was
sufficient to establish use of the trademark was unreasonable.
Today, the Supreme Court of Canada denied leave to appeal the
decision of the Federal Court of Appeal.
1 2015 FCA 232.
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).