A previous blog commented on the importance of proper evidence of use when the registered owner of a Canadian trademark is faced with a potential expungement pursuant to section 45 of the Trade-marks Act.

Curb v. Smart & Biggar, on appeal to the Federal Court from a decision of the Registrar is a further illustration.  Mike Curb, a well-known American record producer was the registered owner of CURB RECORDS for use in association with wares described as “audio and audio-visual recordings; printed materials, namely posters; clothing, namely t-shirts and caps” and services described as “entertainment services provided by pre-recorded and live music; and the production, publishing and distribution of audio and audio-visual recordings”.  On the basis of the Affidavit evidence filed by the Senior Vice-President of Curb Records, the Registrar concluded there was use in association with audio and audio-visual recordings, but insufficient evidence of use in association with the other wares and all the services during the three years preceding the section 45 request.

As permitted, a further Affidavit was filed on appeal, which established a CD sale during the relevant period with a poster, pre-recorded music that could be accessed in Canada via the Internet, and a concert given during the relevant period, which resulted in the production of a music video.  Thus, the claimed services were established.

It was only use in association with t-shirts and caps that the registered owner was unable to prove.  Although the Court was asked to infer that paraphernalia such as t-shirts and caps would have been distributed at the live concert, the Court was not convinced in the absence of documentary evidence such as accounting records.

The case is another useful illustration of the need to locate and present clear evidence of use during the relevant three-year period when faced with a section 45 request.