New evidence of use overturns trademark expungement

In this trademarks appeal brought pursuant to section 56 of the Trademarks Act, the Federal Court overturned a decision by the Registrar of Trademarks to expunge a trademark after considering new evidence of use.

The mark “MINT”, owned by Isaac Bennet was registered for use in association with a variety of clothing and accessories. The Registrar issued a notice to file evidence of use within the relevant period between November 9, 2019, and November 9, 2022. After failing to receive such evidence, the Registrar expunged Isaac Bennet’s trademark registration.

On appeal, new evidence was filed in the form of an affidavit from the CFO of Isaac Bennet. The affidavit demonstrated that Fairweather, a licensee of Isaac Bennet, used the mark in Canada in association with clothing and accessories sold during the relevant period. The affidavit included photographs of goods displaying the mark, as well as sales reports demonstrating Canadian sales during the relevant period.

Mint Green argued that the sales reports related to sales dated November 9, 2019, to November 19, 2022, a period that extended 10 days beyond the relevant period, and therefore did not establish sales. Mint Green further argued that the sales could have occurred in the last 10 days, considering that the sales volumes were relatively small and related to a large number of stores.

The Court acknowledged that while theoretically possible for all the sales in the sales report to have occurred in the 10-day period following the end of the relevant period, it was highly unlikely:

[40] … [I]t is improbable that those sales occurred in that short period of time, with no sales at all in the prior three years, unless they were a result of a deliberate effort by the Applicant and its related companies to avoid expungement of the Mark by making use of it in the 10 days immediately following receipt of the Notice. It is also not logical that the Applicant would have gone to that deliberate effort to create sales and then failed to file the evidence thereof with the Registrar in response to the Notice.

The Court further stated it was “trite law that the purpose of section 45 of the Act is to create a summary procedure for clearing the register of marks that have fallen into disuse”. As such “evidentiary overkill is not required”.

The Court found that the Isaac Bennet’s evidence met the threshold of demonstrating use of the mark, in association with the relevant goods during the relevant period. Notwithstanding Isaac Bennet’s success in the appeal, costs were award to Mint Green because the appeal would not have been necessary if Isaac Bennet had responded to the notice from the Registrar.

A copy of the decision can be found here.