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A triumph in trademark appeal: Backordered realities

Finastra International Ltd. v Fenestrae B.V. is an appeal from a Trademark Opposition Board decision to maintain certain goods and services on the register in connection with Fenestrae BV’s trademark, FENESTRAE, under section 45 of the Act (in connection with ‘software solutions’ provided on its Faxination and Udocx platforms). The Appellant, Finastra International Ltd., argued that the Hearing Officer made a palpable and overriding error in maintaining certain goods and services on the register in association with FENESTRAE and appealed seeking the deletion of all listed goods and services.

The Court first addressed whether an adverse inference should be made against Fenestrae for failing to bring new evidence that sales relating to FENESTRAE had been made in the normal course of trade. In finding no such inference was appropriate, the Court pointed out that a respondent need not adduce new evidence when an appellant contests a Hearing Officer’s decision. Since the Officer had been satisfied with the respondent’s evidence, and the appellant was seeking expungement of the trademark, there was no reason to draw an adverse inference against the respondent in this case.

The Court then dealt with whether Fenestrae’s evidence was sufficient to establish that certain sales had been made in the ordinary course of trade. Finastra took issue with the lack of particulars in Fenestrae’s evidence on sales or how the “normal course of trade” would be characterized for their industry. Specifically, the respondent had provided no shipping costs associated with invoices to Canadian clients. As such, according to the Appellant, there was inadequate evidentiary basis for the Hearing Officer to conclude that certain sales had been made in the normal course of trade. The Court reminded Finastra of the low burden to establish a sale has been made in the normal course of trade and pointed out that there was nothing in the evidence to raise doubts about whether the reported transactions were genuine. As such, it was reasonable for the Officer to infer that these invoices, which had been made to major corporate clients, were delivered to the shipping addresses provided.

Finastra finally argued that an overly broad description of Faxination and Udocx platforms made it possible for the Officer to interpret evidentiary ambiguities in Fenestrae’s favour. Finastra suggested that the invoices Fenestrae relied on as evidence of use were simply an order for services in the absence of proof that those services had been performed in Canada. The Court held that it was open to the Officer to infer the Faxination services had been performed, as the relevant invoices related to contracts with institutional government agencies who were usually on an annual subscription basis, and this was consistent with the supporting exhibit. However, there was evidence that Udocx licenses were backordered on the Canadian website, suggesting that these services were not in fact available during the relevant period. Fenestrae countered this suggestion by stating that Udocx software was also sold in Canada directly by the owner, without providing evidence of this alternative sale route. While it was open to the Officer to infer from the evidence that Faxination services had been performed, the Court held that she had erred in accepting a bald assertion of Udocx platform use in Canada without supporting evidence. For this reason, services associated with Udocx platform use were deleted from the register.

A copy of the decision can be found here.