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Federal Court resurrects trademark registration for Red Maple Manufacturing

Red Maple Manufacturing Inc. (RMM) successfully appealed a decision of the Trademarks Opposition Board, which amended its trademark registration to delete the registered goods due to insufficient evidence of use. RMM presented new evidence of use on appeal, which led to the Federal Court overturning the Board’s decision.

RMM registered its design mark for use in association with oral preparations, nutritional supplements, and manufacturing services related to those goods. During the initial section 45 proceeding initiated on June 27, 2022, the Board required RMM to furnish evidence of use between June 27, 2019 and June 27, 2022. RMM provided the statutory declaration of Stephen Lee, President of RMM, which included evidence of sales and exports, accompanied by photographs of labelled products. However, this evidence lacked details regarding transactions, such as customer identities, and when and how the sales or exports occurred.

The Board concluded that the trademark was used sufficiently in association with RMM’s services but not its goods, leading to an amendment of the registration by deleting the associated goods.

RMM appealed the Board’s decision under section 56(1) of the Trademarks Act and presented new evidence demonstrating use of the trademark in Canada during the relevant period. RMM filed a further affidavit by the Co-Founder and Director of RMM, Michael Lee, which included evidence (1) of how the mark was used by explaining RMM’s business arrangements and (2) of when and to whom sales of the goods in Canada were made (i.e., invoices and shipping labels).

Under section 4(1) of the Trademarks Act, “use” of a trademark is defined as its normal course of trade usage, marked on goods or packaging during property transfer. The Court considered the appropriate standard of review and whether the new evidence established use of the design mark in association with goods during the relevant period, thereby justifying the maintenance of the registration for these goods.

Section 56(5) of the Trademarks Act allows the introduction of new evidence on appeal. The evidence must be material and add something significant to the evidence that was before the Board, such as by filling gaps or remedying an identified deficiency. The Court held that the new evidence in Michael Lee’s affidavit filled the gaps identified by the Board. The evidence was substantial, significant, and probative, materially affecting the Board’s initial decision. Detailed sales records, distributor agreements with Natural Vitamin Direct, and shipping documentation presented during the appeal satisfied the requirements of use in the normal course of trade under section 4(1).

The Court granted RMM’s appeal. The Board’s decision to amend RMM’s registration by deleting the goods was set aside, and its registration for goods and services was maintained.

The full decision is available here.