Removing Deadwood from the Register – Challenging Registration for Non-Use of a Trade-Mark In Canada

Gilbertson Davis LLPTrademark Infringement0 Comments

In Barrette Legal Inc. v. Lawee Enterprises, L.L.C., the requesting party, (“Barette”), sought to remove the owner’s (“Lawee”) Mark, from the trade-mark register for non-use, pursuant to section 45 of the Trade-marks Act (“Act”).

Lawee was the registered owner of the trade-mark “Smart For Life Cookie Thin”, which it used to describe and advertise cookies it sold (“goods”). Barrette challenged this registration for alleged non-use in Canada in between May 18, 2013 – May 18, 2016, at para 3.

What Constitute “Use” of a Trade-Mark

Section 4(1) of the Act states that a trade-mark is deemed to be used in association with goods, if at the time of the transfer of the property in, or possession of the goods, in the normal course of trade, it is marked on the goods or its packaging, or in any manner in which notice of the association is provided to the person whom the property or possession is transferred.

Cancellation Proceedings

The purpose and scope of section 45 of the Act is to provide a “simple, summary, and expeditious procedure for removing deadwood from the register. As such, the evidentiary threshold that the registered owner must meet is quite low”, at para 5.

Evidence Tendered by the Owner, Lawee

In his affidavit, the founder and creator of the Mark, stated that the cookies were sold to the public as part of its company’s weight management program. The packaging on the cookies bearing the Mark were sold through distributors in Canada during the relevant time period.

In support of his affidavit, the founder and creator of the Mark, furnished:

  1. Licence Agreement between Lavee and its Canadian distributors;
  2. photographs of sample wrappers of the cookies, bearing the Mark; and
  3. partially redacted invoices dated during the relevant time period for cookies bearing the Mark sold in Canada, at para 11.

Arguments Made by the Requesting Party, Barette

In its submissions, the requesting party contended that:

  1. the exhibited invoices failed to establish sales due to the redaction of the prices on the invoices;
  2. the exhibited wrapper images did not show that the goods were “transferred”, the exhibited invoices did not display the Mark; and
  3. the exhibited wrapper images did not show the Mark as registered, at paras 14 – 20.

Trademarks Opposition Board (TMOB)(“Board”) Findings:

The Board held that the Owner demonstrated use of the Mark in association with the registered goods within the meaning of section 4 and 45 of the Act. In doing so, the Board held that:

  1. the redaction of prices was not determinative;
  2. the invoices reference the exhibit wrappers, which display the Mark and were sold to weight management centers; and
  3. the composite marks on the exhibited wrappers did not render the individual Mark indistinguishable, at paras 28 – 32.

How Gilbertson Davis LLP Can Help You

If you require legal advice and representation in respect to an trade-mark opposition hearing or trade-mark dispute, please contact us for an initial consultation.

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