In past blogs, we have discussed various Federal Court decisions made pursuant to section 45 of the Trade-marks Act, which is intended to be a summary and expeditious procedure for cleaning up the trade-mark register of trade-marks that have fallen into disuse.

In Grapha-Holding AG v. Illinois Tool Works Inc. the Federal Court, Trial Division allowed an appeal from the Registrar of Trade-marks, finding that the evidence the Registrar relied upon did not support her conclusion that the trademark in issue had been used during the previous three-year period. Read more

In Scott Paper Limited v. Smart & Biggar, the Federal Court of Appeal overturned a string of case law that deviated from the wording of section 45. The appellate court agreed with the trial judge that the Registrar erred in deciding not to expunge the trade-mark “VANITY” despite 13 years of non-use. We previously discussed different aspects of this “use-it or lose-it” provision.

The issue in this case was whether plans to use the trademark in the immediate future saved an unused trademark from expungement. In determining that future use amounted to special circumstances, the Registrar purported to rely on the three criteria laid down in Registrar of Trade-marks v. Harris Knitting Mills, namely the length of time during which the trademark has not been in use, whether reasons for the absence were due to circumstances beyond the control of the owner, and a serious intention to shortly resume use.

However, the Federal Court of Appeal found that the Registrar was “in fact, relying upon the gloss put upon Harris Knitting Mills in … Lander Co v. Alex E MacRae and Co.. Later in the Scott Paper judgment, the Federal Court of Appeal explained that “[i]t is important to distinguish between explaining an absence of use and excusing an absence of use”. Thus, special circumstances must explain the absence of use and the three criteria are used to determine if the absence is excused. Read more

In a recent decision, See You In – Canadian Athletes Fund Corporation v. Canadian Olympic Committee, the Federal Court of Appeal agreed with the decision of the application judge which we reported on last May.

The Court of Appeal also concluded that the Canadian Olympic Committee (“the COC”) had not proved use of its official marks, “See You in Torino”, “See You in Beijing” and “See You in Vancouver”, because there was no clear evidence of a public display of the marks at issue and the COC’s evidence on this point was equivocal at best.

The appellant, See You In – Canadian Athletes Fund (“the SYI Fund”) argued, even though it was successful before the application judge, that the judge should not have dismissed its argument that the COC was a licensee of the International Olympic Committee and could therefore not register the official marks. The Court of Appeal declined to consider this argument noting that where an appellant obtains the relief sought, the appellant is not normally allowed to appeal the judge’s reasons. A decision on this point would have been useful to the SYI Fund, and presumably others seeking to challenge official marks registered by the COC.