The Federal Court in The Black & Decker Corporation v.
Method Law Professional Corporation, has reversed a decision of the Registrar of Trade-marks that
unreasonably elevated the standard of proof required in a section 45 proceeding.
The appeal of the Registrar's
decision was brought by Black & Decker ("B&D")
after the Registrar found that B&D's evidence with respect
to the use of its PIRANHA trade-mark in association with power saw
blades was ambiguous, and ordered that part of the registration to
be deleted. The evidence before the Registrar was contained in the
affidavit of Mr. Weston, the Commercial Marketing Manager with
B&D Canada. His evidence included representative copies of
blade sets containing the mark, sample Canadian price lists for the
years 2011-2014 listing PIRANHA branded wares for sale, invoices
showing sales of circular saw blades to Canadian retailers (but no
invoices for power saw blade), and printouts from retail websites
amazon.ca and walmart.ca displaying the circular and jigsaw blades
available for purchase in Canada. On its application before Justice
Diner, B&D submitted new evidence from Mr. Weston, consisting
of Canadian sales invoices for power saw blades from the years
Justice Diner acknowledged that a
deferential reasonableness standard applied to section 45
decisions, unless additional evidence was adduced on appeal that
would have materially affected the Registrar's findings of fact
or exercise of discretion, in which case the standard was one of
correctness. He also noted that the burden of proof on the owner of
a mark is not an onerous one: the owner "must simply establish
a prima facie case of use to satisfy use as defined under
Justice Diner concluded that the
Registrar's decision to delete the mark was unreasonable.
The applicant was not required to provide invoices to establish
use. If there had been any ambiguity as to use, the Registrar
should have resolved the ambiguity in favour of the owner, given
the evidence before the Registrar. Any ambiguity on the record
before the Registrar was resolved by the new evidence on appeal
which included actual invoices for the power saw blades during for
sales during the period 2011-2014. In the result, Justice Diner
ordered the Registrar to reinstate the registration.
$314,000 in damages, $66,000 in costs at first instance, plus solicitor-client costs on the appeal (which was found to be "without merit"). In Lam v. Chanel S. de R.L., 2017 FCA 38, the Federal Court of Appeal confirmed these awards for four instances of selling counterfeit CHANEL goods at a Toronto-area mall between 2011 and 2013
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