In a recent decision of the Federal Court of Appeal (“FCA”), the FCA took the rare opportunity to consider an appeal from a section 45 expungement proceeding. In One Group LLC v Gouverneur Inc, the FCA reviewed the Registrar’s decision…
Trademark Summary Expungement Proceedings: Evidentiary Issues
In 1459243 Ontario Ltd. v. Eva Gabor International, Ltd., the Federal Court set aside the Registrar’s decision expunging a trademark under section 45 of the Trade-marks Act. The parties agreed that the standard of review was one of correctness, unless…
No Summary Expungement of Trademark if Sublicensing Properly Documented
In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP, a section 45 summary expungement action, the Registrar was satisfied that Tucumcari Aero, Inc., the owner of the trademark MOTO MIRROR & Design, had established use of the mark in…
Special Circumstances Excuse Non-Use of Trademark
Cobalt Brands, LLC v. Gowling Lafleur Henderson LLP concerned the registration of the mark USQUAEBACH & Design for use in association with blended Scotch Whiskey. The mark was registered in 1977 by a U.S. company which suspended production and sales…
Malcolm Parry’s VANCOUVER LIFE Fails to Impress Federal Court
The Federal Court recently issued its decision in Sim & McBurney v. Malcolm Parry. This case was an appeal by Sim & McBurney from a decision of the Trade-marks Opposition Board, relating to Sim & McBurney’s Section 45 challenge to…
Evidentiary Omissions Lead to Trademark Appeal
The recent Federal Court case of Sanders v. Smart & Biggar Intellectual Property and Technology Law is a good example of the difference that well prepared evidence can make. The Trademarks Opposition Board expunged the applicant’s trade-mark, “UGGLY BOOTS” pursuant to section 45…
No Trademark Expungement Although Language Describing Wares Outdated
Loro Piana S.P.A. v. Canadian Council of Professional Engineers is a further example of the importance of providing proper evidence in response to a Registrar’s notice requiring evidence of use within the previous three years pursuant to the summary expungement…