A decision of the Federal Court illustrates how section 45 can impact a trademark owner. Vass v. Leef Inc. 2022 FC 1192
Section 45
The purpose of the section is to provide a summary procedure for trimming the register of “dead wood.” Frequently, proceedings under the section will be instituted by third parties who are prevented from obtaining a registration for a desired mark by a registration which is perceived not to be in use.
The section provides that after three years beginning on the day on which a trademark is registered, unless the Registrar sees good reason to the contrary, the Registrar shall, at the written request of any person who pays the prescribed fee — or may, on his or her own initiative — give notice to the registered owner of the trademark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to all the goods or services specified in the registration or to those that may be specified in the notice, whether the trademark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
The Facts
The registrant owns the trademark registered for use in association with the following:
Goods
Residential and commercial furniture, namely: movable office furniture partitions, furniture of metal, furniture for displaying goods, display stands, display boards, furniture screens, seats, seating furniture.
Services
Design and custom manufacturing of residential and commercial furniture, furniture partitions, movable office partitions, furniture of metal, furniture for displaying goods, furniture, namely sales and display units, furniture screens and seating furniture, custom store fixtures, point of purchase displays, custom enclosed structures for use as reception area, training structure or lounge incorporating audio visuals, scents, sounds and projection or custom graphics and standoffs for custom display, namely a portable structure clad with fabric, plastic, wood or metal on metal frames.
The colours blue and grey are claimed as a feature of the mark. The mark consists of a blue and grey stylized leaf pattern of four leaves with the word Leef in blue.
The Registrar issued a notice under s 45. The registrant submitted the affidavit of its manager of marketing and communications.
The Decision of the Hearing Officer
The Registrar found that the affidavit established the registrant’s use of the mark to only a limited extent. The Registrar was satisfied that use was established in association with the goods “movable office furniture partitions” and “furniture screens”, and the services “design and custom manufacturing of […] furniture partitions, movable office partitions [… and] furniture screens”.
The mark was not placed on the Goods themselves, but it was prominently featured on the invoices and materials typically shown to customers at the time of purchase. The Registrar found no evidence of use in association with the remaining registered goods and ordered that the registration be amended to delete them from the registration. The sales brochures and evidence of two sales indicated use of the mark in association with the above services. There was no evidence of use in association with the remaining services, and the registration was amended accordingly.
The Appeal
The Requesting Party appealed from this decision to the Federal Court. In response the registrant filed an additional affidavit. The additional affidavit clarified the involvement of a licensee of the mark and new evidence of quotations featuring the mark that were provided to customers. The quotations were for mobile health care screens and custom desktop tempered glass shields.
If an appeal does not include new evidence, or if there are no extricable questions of law, the applicable standard of review is palpable and overriding error. Where new material evidence is filed, the Court must consider de novo the issues to which the new evidence relates. The Judge was satisfied the additional affidavit filed by the registrant was material to the two issues to which it related, and these issues were considered on a de novo basis.
The Evidence of Use
Despite arguments to the contrary the evidence supported the fact that the goods were sold in association with the mark during the relevant period.
A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. Where the trademark owner is willing and able to perform its services in Canada, use of the trademark in the course of advertising those services meets this requirement.
The registrant’s evidence made it clear that custom design and manufacturing services for furniture screens and movable office partitions were offered in association with the mark. Consistent with the Registrar’s findings, this was sufficient to establish use of the mark in association with the services during the relevant period.
Deviating Use
It has been previously recognized that variations which do not change the dominant feature of a registered mark are acceptable deviations from the mark as registered. This includes displaying a mark in different colours. The test is whether the differences are so unimportant that an unaware purchaser would likely infer that both marks, despite their differences, identify goods or services that have the same origin.
The mark as registered and the mark as it appears on the invoices are shown below:
The two versions have consistent dominant characteristics. The mark as used fell within the range of acceptable deviation.
The appeal was dismissed with costs.
Comment
A trademark owner needs to be aware of the rules relating to using a trademark and monitoring the extent of use of the trademark with the goods and services specified in the registration to avoid being left in the position of being unable to support the mark. Similarly, a mark should be used in the form in which it is registered. If non legal issues require that a variant be used, an application should be filed for a separate registration of the variant.
Toronto, August 2022
If you have questions, please contact me at mckeown@gsnh.com.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are general in nature and not intended to provide legal advice as
individual situations will differ and should be discussed with a lawyer.
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