At the request of the Respondent, the Registrar of Trade-Marks sent a notice to the Appellant, Spirits International B.V. (Spirits), requiring it to show that its trade-mark had been used in Canada in association with vodka in the previous three years. Upon consideration of the affidavits filed by Spirits, the Hearing Officer of the Trade-marks Opposition Board concluded the evidence was not sufficient to show the required use and the Registrar decided to expunge the trade-mark. This decision was appealed to the Federal Court who upheld the Registrar’s decision. A copy of the decision from the Federal Court is found here. A copy of our summary is found here. Spirits appealed further to the Federal Court of Appeal (FCA) who allowed the appeal and set aside the decision of the Registrar requiring expungement of the mark.
The Court held that in a Section 45 proceeding such as this one, the registrant must show use of the subject mark or that it was used by another person whose use accrued to the registrant’s benefit. However, this burden is not a heavy one.
The FCA considered the new evidence filed by the Appellant in the Federal Court and held that those facts, together with the inferences that could be reasonably drawn from them were sufficient to show the requisite use of the mark during the relevant period. The FCA held that it followed from that finding that the Hearing Officer reasonably could have decided that the mark should not have been expunged and thus, the new evidence could materially have affected the Registrar’s decision. The Judge should have considered the matter de novo and reached his own conclusion. Since he did not do so, the task fell to the FCA, whose analysis led to the conclusion that the requisite use during the relevant period was shown and that the appeal should be allowed.