Declaring Control in Expungement Proceedings

In De Grandpré Chait v. Mead Products LLC, the Trademarks Opposition Board (the “Board”) maintained the registration for YEAR-IN-A-BOX (the “Mark”), which is registered for use in association with calendars. At issue was whether the registrant, MeadWestvaco (the “Registrant”), had demonstrated sufficient control over the entity selling the calendars in Canada in association with the Mark so as to maintain the registration of the Mark on the Canadian Trademarks Register. Importantly, Section 50(1) of the Trade-marks Act  states that if a trademark owner licenses the trademark for use by another entity and the owner has, under the license, direct or indirect control of the character or quality of the wares or services being provided by such entity in association with the licensed trademark, then the use of the trademark has the same effect as if used by the trademark owner itself.

In affidavit evidence accepted by the Board, the calendars associated with the Mark were manufactured in the United States by MWV Consumer & Office Products, a division of the Registrant. The calendars were then sent to Hilroy, a division of MeadWestvaco Canada LP, which sold the calendars to Canadian retailers. The Registrant’s affidavit evidence stated that MWV Consumer & Office Products, Hilroy and MeadWestvaco Canada LP were authorized to use the Mark pursuant to licenses under the terms of which the Registrant controlled the nature and quality of the calendars associated with the Mark. Importantly, the Registrant did not provide evidence detailing those terms of the license agreements which demonstrated control between the licensor and licensee. The party requesting expungement took the position that this evidence needed to be adduced so as to demonstrate sufficient control to satisfy Section 50(1). However, the Board held that it is possible to satisfy Section 50(1) of the Act by way of a declaration in which the owner or license holder simply attests to the fact that the control required by Section 50(1) indeed exists.

This owner-control scenario is a common one that faces many foreign owners of Canadian trademark registrations that are seeking to maintain marks on the Canadian Trademarks Register during an expungement proceeding. This decision highlights the importance of ensuring that control is demonstrated either by way of a declaration to such effect or, better yet, by filing evidence which includes a written license agreement detailing adequate control provisions.

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