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Getting Some SWAGGER Back

In Anashara v. Swagger Publications Inc., 2015 FC 1241, the Applicant appealed the decision of the Registrar of Trade-marks’ delegate to expunge the Applicant’s SWAGGER trade-mark (Registration Number TMA 723, 265) pursuant to section 45.

Background

The Applicant’s SWAGGER mark was registered for a variety of wares such as men’s, women’s and children’s apparel, jewelry, fragrance products, sunglasses etc. The Applicant had also registered the mark in association with the following services: publishing of magazines in print and electronic form accessible and downloadable via the internet.

In response to a section 45 notice, the Applicant, Mr. Anashara, was required to demonstrate with evidence the use of the SWAGGER mark, in Canada, in association with each of the wares and services specified in the registration during the relevant period. An unrepresented Mr. Anashara submitted a sworn affidavit but did not provide any other written submissions and did not attend the hearing.

The Registrar ordered that the registered SWAGGER mark owned by Mr. Anashara be expunged. The Registrar was not satisfied that Mr. Anashara had demonstrated use of the mark in association with the registered wares or services within the meaning of subsections 4(1) and 4(2) of the Trade-marks Act. Further, the Registrar was not satisfied that special circumstances existed to justify non-use in the relevant time period.

On appeal, Mr. Anashara provided further evidence in the form of an additional affidavit with exhibits (such as photos of goods sold) and sworn oral testimony to clarify his affidavit evidence, in order to change the Registrar’s decision.

The Appeal Decision

On appeal, Justice Campbell overturned in part the Registrar’s decision and ordered that the registration be maintained for some of the wares.

Justice Campbell noted the standard of review of an appeal made pursuant to section 56(1) of the Trade-marks Act depends on whether or not new evidence has been filed that would have materially affected the Registrar’s findings or exercise of discretion.

In coming to his decision, Justice Campbell noted that the burden on the applicant to demonstrate use is not high and he need only demonstrate a prima facie case of use and a single transaction may be sufficient where it is found to be bona fides during the relevant period in the normal course of trade.

Justice Campbell disagreed with the Respondent’s that the Applicant’s “new” evidence was simply a repetition of the evidence provided to the Registrar. Justice Campbell found that the Applicant had provided credible new evidence with respect to the use of the mark with respect to some of the wares and new evidence on what was the Applicant’s normal course of trade. Furthermore, Justice Campbell found that the new evidence produced would certainly have made a difference in the way the Registrar would have ruled with respect to some of the wares. Therefore, Justice Campbell allowed the appeal in part, ordering that the SWAGGER registration be maintain in association with some of the ware, namely: t-shirts, jeans, scarves, hates, sports bags, pull overs, shoes, and jackets

However, Justice Campbell also found that the Applicant had failed to provide sufficient new evidence to show the SWAGGER mark was used with the services and some of the wares as registered, and maintained the Registrar’s order with respect to the services and some of the other wares.

Justice Campbell’s decision is available here.