There were five Canadian trade-mark cases of note in October. Interestingly, in four of them the Federal Court allowed appeals from the Opposition Board and in three of those cases the appeal was allowed on the basis of new evidence allowed to be filed at the appeal stage.

City Optical Holdings Inc. v. The United States Shoe Corporation was an appeal from a decision of the Opposition Board which refused registration of THE INVINCIBLES for use in association with eyeglass lenses and related wares on the basis that it was confusing with the opponent’s mark, INVISIBLES for  ophthalmic (sic) lenses. The Applicant filed further evidence on appeal, as it was entitled to do. The Opponent chose not to contest the appeal. The Court allowed the appeal on the basis of the further evidence since there was no evidence of actual confusion and different channels of trade.

The appeal from the Registrar in Minolta-QMS, Inc. v. Tsai was also allowed, again on the basis of new evidence filed on appeal. Minolta’s opposition to the registration of MAGICOLOR in association with electrical wire, namely shielded, unshielded and insulated electric wire, cable and cord was dismissed by the Opposition Board. Minolta had not filed evidence in chief and the Board ruled that much of the evidence filed in reply by Minolta was not proper reply evidence. On the basis of the new evidence filed on appeal, it was clear that as of the date Minolta filed its opposition the MAGICOLOR mark was not distinctive, Minolta having had previous use.

In Fairweather Ltd. v. Registrar of Trade-marks, the Court, also on the basis of new evidence allowed on appeal, set aside the Registrar’s decision under section 45 expunging Fairweather Ltd.’s mark TARGET APPAREL. Fairweather had acquired the mark following the receivership of another company and the Opposition Board was not satisfied that the mark had been used or that there was a serious intention to use the mark. The new evidence on appeal demonstrated that Fairweather had taken concrete steps, including the development of artwork by employees of a related company. There were also actual sales, although these were subsequent to the issuance of the section 45 Notice.

In Smart & Biggar v. Jarawan the Court allowed the appeal from the Opposition Board’s decision that the Registrant of the mark, AL-RIFAI ROASTERY (MAHMASAT) had demonstrated use in the last three years in accordance with section 45 of the Trade-marks Act. The Court noted that the standard of review was one of reasonableness.  Given the vague and imprecise Affidavit filed by the Registrant, it was not reasonable for the Hearing Officer to have concluded there was use.

Petrillo v. Allmax Nutrition Inc. was a motion for summary judgement. The Court concluded that no genuine issue for trial existed against the personal defendant Mr. Kichuk for the alleged infringement of the ISO-FLEX trade-mark. The Court examined the law regarding the personal liability of directors and officers and the principles governing summary judgement, concluding there was no evidence to support the assertions in the Statement of Claim that Mr. Kichuk incorporated his companies or pursued a course of conduct through the companies intended to infringe the Plaintiff’s trade-mark.