A Tale of Two Trademark Appeals

In Clic International Inc. v. Convenience Food Industries (Private) Ltd., 2011 FC 1338, Clic International appealed a decision of the Registrar to expunge its trademark. The mark, which was used in association with the company’s line of canned fava beans, consisted of LAZIZA and an accompanying palm-tree design. Under s. 45 of the Trade-marks Act, a trademark may be expunged at the request of a third party if the owner cannot demonstrate use within the last three years. Here, Convenience Foods made the s. 45 request to the Registrar.

Before the Registrar, Clic attempted to show use of its trademark with evidence of the word LAZIZA on a can of fava beans. However, the Registrar noted that Clic had not used the accompanying palm tree logo (which was part of the trademark). The “evidence of modified use” did not constitute “use” for the purposes of s. 45, as far as the Registrar was concerned, and the trademark was expunged.

On appeal, Clic was entitled to provide new evidence and asserted that the change to its logo was within the scope of “cautious variations” that are allowed under current jurisprudence, citing, among other cases, Promafil Canada Ltee v. Munsingwear Inc, [1992] FCJ 611, which held that as long as the dominant features of a trademark are maintained and the differences are “so unimportant as not to mislead an unaware purchaser”, the use of the modified trademark should be enough to satisfy s. 45.

In response, Convenience Food pointed to Bierrsdorf AG v. Becton Dickinsons and Co., (1992), 44 CPR (3d) 151, where use of the word component and an altered design component were sufficient for s. 45, noting that Clic’s design component was done away with altogether.

The Court, agreed with Convenience Food, explaining that the logo being used was quite different than the registered trademark. Not only was there no palm-tree drawing, but LAZIZA was in a different font and was above an oval depicting some Arabic characters. This gave the whole mark quite a different look, which, according to the Court, departed from a “cautious variation”.

The Court was careful to refute Clic’s assertion that the trademark not be expunged because consumers still recognized the mark and associated it with Clic’s fava beans. This had no bearing on the issue of “use” for s. 45, and the correct consideration was whether the mark had been used in a substantially unchanged manner.

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In David M. Locke v. Osler, Hoskin & Harbourt LLP, 2011 FC 1390 the Registrar expunged a mark in the initial hearing, but the Court overturned that decision based on new evidence. Here, the Court did not have to consider a modified trademark. Rather the issue was much more straightforward; the trademark holder had not introduced any evidence at the initial hearing, but did on appeal.

The trademark in question here was SPORTSMAN’S CHOICE, which was used in association with a small, home-based sporting goods and pet accessories store. In the original s. 45 hearing, Locke did not put forth any evidence because he had not initially understood the nature of the claim, and only retained legal counsel just prior to the extinguishment of the trademark. The Federal Court held that a failure to adduce evidence during the underlying hearing was not a bar to introducing it on appeal. So, Locke was able to introduce evidence of his use of SPORTMAN’S CHOICE in the appeal, including labels affixed to pet food, labels on hunting clothes and gear, and tags on pet supplies.

In considering this evidence, the Court noted that the threshold for proving “use” is quite low, and a prima facie case of “use” is enough. Indeed, evidence of a single sale can suffice as long as it is not contrived for the purposes of the hearing.

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