We recently reported on a number of section 45 decisions, the purpose of which is to remove “deadwood” or outdated registered trademarks from the Register. In such proceedings, the burden of proof is on the registered owner of the trademark to demonstrate “use” during the previous three year period in order to maintain the mark on the register.

In the recent Federal Court of Appeal case of Brouillette Kosie Prince and Orange Cove-Sanger Citrus Association, the applicant (the party challenging the registration) appealed the decison of the Registrar with respect to a proof-of-use proceeding. The applicant objected to the quality of the evidence submitted by the respondent (the owner of the registration) both before the Registrar and before the Federal Court of Appeal. The respondent was a grower member of Sunkist Growers, a cooperative that assists in the distribution of its members’ products including invoicing such products to buyers on behalf of its members. The Registrar maintained the registration of the respondent’s mark POM-POM on account of its appearance on packaging when the wares were sold to Canadian distributors. The Federal Court held that it was not necessary for the mark to be seen by the consumers who purchased the wares from the respondent’s customers and the Court of Appeal agreed with this conclusion.

The Federal Court of Appeal held that it need only decide on the issue de novo when additional evidence is adduced that would materially affect the Registrar’s finding of fact or the exercise of his discretion. If new evidence added nothing of significance, but was merely repetitive of existing evidence, the issue was whether the Registrar’s decision could survive a probing examination. As the evidence submitted on the appeal did not raise any new issues, the case was dismissed given the reasonableness of the Registrar’s decision in maintaining the registration of the POM-POM mark.

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