July 8, 2020
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In Sim & McBurney v Gordon, 2020 FC 710, the Federal Court allowed an appeal from a decision of the Registrar of Trademarks and struck two marks from the register.
Registrar of Trademarks’ Decision
Gayle Gordon (“Gordon”) was the owner of two trademarks registered in association with gold and silver jewellery products: “FORGET-ME-KNOT” and “LOVE-KNOT” (the “Marks”).
Sim & McBurney had challenged the Marks pursuant to s. 45 of the Trademarks Act (the “Act”), which requires that, upon the written request of any person, the registered holder of a trademark must furnish evidence to the Registrar of Trademarks (the “Registrar”) that the trademark was in use in Canada at any time during the past three years.
In response to this written request, Gordon provided only limited evidence of the Marks’ use to the Registrar. The Registrar nonetheless maintained the Marks’ registration based on a “series of inferences” regarding the Marks’ use over the previous three years.
Appeal to Federal Court
Sim & McBurney appealed the Registrar’s decision to the Federal Court (the “Court”), arguing that the evidentiary record was insufficient to prove the Marks’ use and that the Registrar’s decision was therefore improper.
The issue to be determined on appeal was whether Gordon demonstrated use of the Marks during the relevant period, the requirements for which are set out in s. 4(1) of the Act:
4(1) A trademark 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 themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
The Court applied the test set out in its 2018 decision of Geox SPA v De Luca to determine whether Gordon had met the requirements under s. 4(1):
The mark must be a trade mark as defined in s. 2 [of the Act], that is, used for the purpose of distinguishing the wares;
The mark must be associated with the wares so that notice of the association is given; and
The transfer of the property or possession therein must occur in the normal course of trade.
The Court found that the third requirement could not be met. Gordon’s general assertion that she sold the items of jewellery in the normal course of trade was not adequately supported by the affidavits and invoices she provided.
Namely, Gordon’s evidence did not clarify: (i) the nature of her business; (ii) the manner in which the items were shipped; (iii) the nature and location of her purchasers; or (iv) her total volume of sales. Moreover, these factual deficiencies had been identified by the Registrar – even though the Registrar decided to overlook them – and Gordon had failed to file any further evidence to address such factual deficiencies.
As a result, the Court stated that the Registrar’s inferences were unsustainable based on the evidence and allowed the appeal:
Given the unsatisfactory state of the evidentiary record before this Court, the Registrar’s inferences that the Respondent used the Marks in the normal course of trade are no longer sustainable. The appeal is allowed, and the registrations of the Marks are ordered to be struck from the register of trademarks.
Authors: Scott Kerr and Luke Devine