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.

Illinois Tool Works (“ITW”) used the trade-mark MULLER in association various machines that they produced. ITW submitted an affidavit from the vice-president of their Canadian subsidiary stating that at the time of sale the trade-mark was marked on the machines as shown in their brochures, one of which was attached to the affidavit, and that the sales of the machines in association with the trade-mark in Canada during the three-year period had been significant and continuous, in excess of $10 million per year. The Registrar maintained the registration of the mark in association with most of the machines, finding that it was apparent from the evidence provided in the affidavit, including the brochures and the sales figures for the relevant period, that sales of the machines did occur. The Registrar inferred that the sales of the machines occurred and stated that invoices for the sales of the machines were not necessary because the evidence as a whole showed use of the mark.

The Federal Court held that the Registrar did not have sufficient evidence before her to demonstrate the use of the mark, finding that the allegations in the affidavit were not precise enough. The jurisprudence required a precision with regard to the dates on which the machines would have been sold and clear evidence on which the Registrar could base her determination that the trade-mark was in use. Words in the vice-president’s affidavit such as currently sold in Canada, currently in use, currently marked on were not sufficient to meet this test. Further, although the brochures contained in the affidavit revealed where the mark was situated on the various machines, the evidence did not indicate, as required by the jurisprudence, that these brochures had been given at the time the property, or possession of the property, was transferred.

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