The Top Line
In a recent trademark appeal, the Federal Court clarified that photographs or other representative images are not required to establish “use” of a trademark pursuant to s. 4 of the Trademarks Act in the context of a s. 45 cancellation proceeding. While a bare statement that a registered trademark was used in accordance with the statutory language will not meet the evidentiary threshold, a sworn statement describing the manner of use in Canada during the relevant time period may suffice.
Trademarks Opposition Board Expunges Registration for Failing to Provide Evidence of Use
Trademark owners who receive a notice under s. 45 of the Act risk losing their trademark registration(s) if they fail to provide sufficient evidence of “use” in Canada in association with the goods or services listed in the registration in the three years preceding the issuance of the s. 45 Notice.
- For further information on s. 45 notices, see our recent blog post.
Kazar Group Spólka z ograniczona odpowiedzialnoscia (Kazar Group), a Polish fashion brand, learned this the hard way when the Trademarks Opposition Board ruled that its registration for the word mark KAZAR ought to be expunged following summary proceedings under s. 45 (2024 TMOB 51).
The Board held that Kazar Group’s evidence failed to demonstrate use in association with any of the goods listed in the registration in the three-year period immediately preceding the date of the notice (or any special circumstances that would excuse the absence of use) and that, therefore, the registration ought to be expunged.
Federal Court Sets Decision Aside and Clarifies Evidentiary Standard
Kazar Group appealed the decision of the Board to the Federal Court under s. 56 of the Act. Relying on subsection 56(5), Kazar Group adduced new evidence addressing perceived gaps in its evidence before the Board. The Court confirmed that Kazar Group’s new evidence was material such that the Court should apply the correctness standard and conduct a de novo review of the evidence.
Even considering the new evidence, Justice Fuhrer held that, apart from “footwear namely men’s shoes”, Kazar Group failed to demonstrate use of the KAZAR mark in association with any of the goods covered by the registration (web printouts without evidence of actual sales were not sufficient).
With respect to the men’s shoes, the Board had found that an invoice evidencing a single sale of men’s shoes in Canada during the relevant period together with receipts confirming delivery and a sworn statement that KAZAR was marked on the shoes did not meet the standard required under s. 45. Relying on the Federal Court of Appeal decision in Plough (Canada) Ltd v Aerosol Fillers Inc (1980) (Plough), the Board held that the evidence was insufficient because it did not include a photograph or representative image of the goods and therefore did not “show” use.
The Court disagreed that Plough stands for the proposition that photographs or representative images are required under s. 45, and found that it was not clear the Board turned its mind to the possibility that a sworn statement describing the manner of use may be sufficient depending on the circumstances.
The Court concluded that Kazar Group’s new evidence (photographs of men’s shoes and their packaging bearing the KAZAR trademark, and numbers corresponding to the invoice in Kazar Group’s initial evidence) coupled with the evidence that was before the Board were sufficient to demonstrate use of the mark in association with men’s shoes. Therefore, the registration was maintained only in respect of “footwear namely men’s shoes”.
Since this case was decided on the totality of evidence (including these new photographs), it remains to be seen what the threshold is for showing use via a “sworn statement describing the manner of use” alone. But the decision seems to make clear that while a bare statement tracking the statutory language of the Act will not establish use, photographs or other representative images are not required to show use.
Ultimately, the type(s) of evidence required will depend on the circumstances and trademark owners and their agents should carefully consider the nature of the goods and services listed in the registration and the manner of use when considering what evidence is required to show use under s. 45 of the Act.
For further inquiries about trademark registrations, please contact a member of our Trademarks Team for assistance.