More On Section 45

Last week we reported on a decision of the Federal Court, Trial Division. The Federal Court of Appeal has also handed down a recent section 45 decision referring to the section as the “‘use it or lose it’ provision for removing ‘deadwood’ from the Register”.

In Bereskin & Parr v. Fairweather Ltd. the Court refused the appeal on the basis that the trial judge’s application of the law to the undisputed facts disclosed neither a palpable and overriding error on a question of mixed fact and law, nor a readily extricable error on a question of legal principle.

The trial judge had allowed the appeal from the Registrar of Trade-marks decision to expunge the trademark TARGET APPAREL for use in association with “men’s clothing, namely, suits, pants, jackets and coats”. The trademark had been acquired by Fairweather Ltd. from another company. In front of the Registrar, Fairweather had failed to produce evidence demonstrating a serious intention to use the mark. Such evidence can constitute special circumstances and excuse the absence of actual use in the preceding 3 years. However, when Fairweather appealed under section 56 of the Trade-marks Act, it filed new evidence (which is allowed on a section 45 appeal) and provided the judge with preliminary design and artwork showing an ongoing intention to use the mark. There was also evidence of sales after the date of the section 45 notice that gave credibility to the evidence of an intention to use. Thus, use was established.

Clear Evidence of Use Required: Section 45 Appeal Allowed

Section 45 of the Trade-marks Act allows the Registrar, at the written request of any person, to give notice to the registered owner of a trademark requiring the registered owner to furnish, within three months, an Affidavit or Statutory Declaration showing that the trademark has been used in association with each of the wares and services specified in the registration during the preceding three-year period.

In 88766 Canada Inc. v. Monte Carlo Restaurant Limited Justice Pinard of the Federal Court allowed an appeal from the decision of the Registrar of Trade-marks and expunged the mark. The mark at issue was MONTE CARLO that was registered for use in association with the wares “pizza and spaghetti” and the services “operation of a restaurant, food take-out and catering, operation of a bar and operation of a banquet hall”. On the basis of the Affidavit evidence furnished by the owner of the mark, the Registrar struck out only “operation of a bar and operation of a banquet hall”.

The Court first noted, given there was no new evidence filed on the Appeal (an option where there is an appeal from a section 45 mark), that the standard on the Appeal was one of reasonableness. The Court then reviewed the Affidavit furnished by the registered owner and concluded that it did not clearly establish use during the relevant period. Thus, the mark was struck from the registry.

It was not sufficient to simply establish that advertising materials had been distributed in the previous five years.  The Court noted that there was nothing specifically stated regarding distribution during the preceding three-year period and noted that it was up to the owner of the mark to provide clear proof regarding use. The Court also referred to BMW Canada Inc. v. Nissan Canada Inc., a case that we previously commented on, for the proposition that the appearance of a trademark in an advertisement does not constitute use in association with wares unless the advertisement is distributed at the time of the transfer of the property in or the possession of the wares.

The Federal Court of Appeal Rules on Appeals from Decisions of the Registrar

In Sadhu Singh Hamdard Trust v. The Registrar of Trade-marks, the Federal Court of Appeal refused to interfere with a decision of the Registrar allowing the registration of a trademark, particularly where the Appellant had not exercised another more appropriate remedy.

When the trademark at issue was advertised the Appellant requested a two-month extension to file a Statement of Opposition. However, the request for an extension was overlooked by the Registrar and the trademark was allowed.

The Appellant then sought to appeal the Registrar’s decision to the Federal Court under section 56 of the Trade-marks Act. The Trial Court concluded there was no decision of the Registrar to be challenged and the Federal Court of Appeal agreed.

The Appellant had failed to invoke its right under section 39(3) of the Act which specifically provides that the Registrar may withdraw an allowance where it has failed to consider a previously filed request for an extension of time to file an opposition.

The Appellant, relying on the earlier case of Ault Foods v. Canada (Registrar of Trade-marks), argued that it was still open to the Court to rely on its discretionary power under section 18 of the Federal Court Act and set aside the registration.

However, the Court of Appeal noted that following Ault Foods, the Trade-marks Act was amended so as to add section 39(3).

The Court also noted that in seeking to set aside the Registrar’s decision the Appellant was in effect seeking expungement, which required a challenge on substantive grounds under section 57. In Bacardi & Co. v. Havana Club Holding S.A. the Court held that a registration may not be brought into question in the course of opposition proceedings, which was what the Appellant was seeking to do by appealing the Registrar’s decision under section 56.

City and Mayor Settle Up

In our posting of June 25, 2007 we reported on an application by the Mayor of the City of Vancouver to register the mark ECODENSITY in his own name. The application raised a few eyebrows because on the face of it, the program that the mark related to appeared to be one that the City had funded and it wasn’t clear why the Mayor would be filing an application in his own name rather than in the name of the City.

Following the advertisement of that application, the City of Vancouver Councillor’s Office filed an Opposition. According to the Canadian Intellectual Property Office online database, matters seem to finally have been resolved between the City and its Mayor, as the application has now been assigned to the City. As one of our readers has noted, the open question now is whether that application, which was based on proposed use, or any resulting registration will be valid, if in fact the Mayor, as he claimed in a news report at the time, never had the intention to use the mark himself.

Penny For Your Thoughts

The lowly Canadian penny (to be fair, it’s currently worth more than it’s American counterpart) has been the subject of some intense legal discussions lately, according to a recent story in the Globe and Mail. This story highlights the importance of protection for trademarks under both trademark and copyright law in Canada.

 The Royal Canadian Mint has taken issue with the apparently unauthorized use of a Canadian penny design by the City of Toronto as part of an ad campaign which appears on posters on buses and in bus shelters and on bumper stickers and buttons. The campaign is part of the City’s attempt to convince the Federal Government to provide more funding to municipalities, specifically one cent out of every six collected by the Federal Government through the Goods and Services Tax. The penny design is also featured on the City’s Onecentnow.ca webpage

According to the story, the Mint claims ownership of intellectual property rights  in the design of the penny and is demanding that the City stop all use of its design and payment of a licensing fee for past use. While the news story doesn’t get into the legal specifics, the Mint is likely  relying on both copyright and its Official Mark status for the penny design. The Mint caused the Registrar of Trade-marks to publish a notice in the Trade-marks Journal on June 2, 2004, of the Mint’s adoption and use of the penny design as an Official Mark. Once such notice is published, Section 9 of the Trade-marks Act prohibits any other person from adopting, using or registering that mark in connection with a business, as a trademark or otherwise – a very strong form of protection available only to Canadian public authorities – basically government entities and entities over which there is significant ongoing governmental control – and universities. From the article, it appears the City is asserting a defence that it is using the penny design for educational purposes, but it’s not clear that even educational use is permitted under Section 9 without the consent of the owner.

The Mint may also be able to assert its copyright against the City, irrespective of the Official Mark issue, assuming ownership, originality, subject matter, fair dealing and related issues are not a problem. Copyright provides a very different cause of action than trademark – once a copyright protected work is copied, it’s irrelevant to a claim of infringement whether the copy is being used in association with any wares or services.

Of London, Lithuania And A Popular Tree

A recent story in the London Free Press shows just how powerful Canadian trade-marks are becoming throughout the world – causing a country half a world away to drop a tree design that it had recently chosen to be the symbol for its latest tourism campaign. A similar tree design is the subject of an Official Mark Request advertised by the Canadian Registrar of Trade-marks at the request of the City of London, Ontario, known primarily, until now, as a centre for the insurance industry in Canada and as a University town. The design appears prominently on the City of London’s website.

Once notice of adoption and use of an Official Mark by a public authority has been advertised by the Registrar, the effect is that no other person is entitled, without the consent of that public authority, to adopt, use or register, in Canada, a mark that resembles the Official Mark, regardless of what wares or services that Official Mark is used in association with. The effect of such status is, however, limited to Canada.

Lithuania recently held a contest to choose a new symbol for its tourism campaign. The unofficial winner was submitted by a local advertising business. The winning design contains a tree design similar to the City of London’s tree design. Once this similarity was brought to the attention of the Lithuanian authorities, they, being courteous and perhaps overly cautious people, sought the consent of the City of London to use the tree design.  

Curiously, the response from the City of London was apparently a statement that such use would constitute infringement of the Official Mark – it’s not clear if they meant copyright or trade-mark infringement. Hard to reconcile that response with the territorial limitations of London’s Official Mark, at least on the trade-mark front, but the ever polite Lithuanians have apparently decided to ditch the tree design and run another contest. They say that they want something unique (which begs the question, why choose a tree design in the first place?) and don’t want to step on any political toes. The only problem is that the winner of the contest that submitted the tree design is now insisting it didn’t copy the design and is threatening to sue if their design is not chosen the winner.

Canucks Unveil New Logo

Only in a Canadian city, would the unveiling of a new logo for the local hockey team be the subject of such anticipation and discussion – particularly as the start of the season is over a month away. Today, before 8,000, yes 8,000 fans inside General Motors Place in downtown Vancouver, on one of the rare sunny and warm days the city has seen this summer, the Canucks finally unveiled their new jerseys to the adoring throngs.

Though nothing is showing up on the Canadian Intellectual Property Office online trade-marks database yet, no doubt, applications to register the new logo as a trade-mark have already been filed at the Canadian Intellectual Property Office.