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 new evidence would have materially affected the decision of the Registrar.  At issue was whether the new affidavit filed by the Applicant was hearsay and, if admissible, whether the evidence would have affected the Registrar’s decision.

The Applicant’s new affidavit sought to introduce evidence that employees of the company had included promotional flyers bearing the trademark at issue when shipping other goods to customers.  On cross-examination the deponent acknowledged he was not personally involved with the flyers.  The Federal Court concluded that this evidence met the criteria of reliability and necessity required by the Supreme Court of Canada decision, R. v. Smith, particularly in the context of section 45 proceedings which are intended to be expeditious and straightforward.  The Court noted that other cases had accepted the reliability of evidence given by individuals who operate businesses.  The evidence was also necessary since requiring evidence from several employees would not be consistent with the summary procedure intended for section 45 proceedings.

The Court was also satisfied that the new evidence would have affected the Registrar’s decision.  The affidavit before the Registrar had used the present tense when explaining that promotional flyers were sent out and the Registrar could only conclude that the procedure was in place at the time the affidavit was sworn and not during the earlier three-year period at issue in the section 45 proceedings.  The new evidence specifically addressed that oversight.

Finally, given the low threshold of use required for a section 45 proceeding, the Court was satisfied that the trademark was used as registered. The use of a surrounding square and the addition of three letters connoting a product model identifier did not mean the trademark was not used as registered.