A recent decision of the Federal Court raises the bar concerning the evidence required in section 45 proceedings.

Section 45 Proceedings

Under section 45, the Registrar of Trade-marks (the "Registrar"), on written request, made after three years from the date of a registration, by any person, will give notice to the registered trade mark owner, requiring the owner to furnish within 3 months, an affidavit or statutory declaration showing with respect to each of the wares or services specified in the registration whether the trade mark was in use in Canada at any time during the three year period immediately proceeding the date of the notice.

Where as a result of the evidence furnished, or the failure to furnish evidence, it appears to the Registrar that the mark, either with respect to all of the wares or services or with respect to any of the wares or services, was not in use in Canada, the registration will be expunged or amended accordingly.

The purpose of this section is to provide a summary procedure for trimming the register of dead wood, which may preclude new applications. In order to preserve the summary nature of the proceeding, the requesting party cannot file evidence or cross-examine on the affidavit or statutory declaration.

The Decision

The Registrar, after a disputed Hearing, maintained the registrant’s trade mark in association with some but not all of the wares. In the affidavit submitted on behalf of the registrant, reference was made to brochures advertising the wares in issue. The affiant swore that the trade mark in issue was marked on the wares as shown on the brochures. It was also stated there had been substantial sales of the wares in issue.

Mr. Justice Beaudry referred to the obligation under the section as being a requirement on the registrant to supply facts by way of an affidavit, from which on balance, a conclusion of use may follow as a logical inference. He also referred to the fact that under the Act, in order to demonstrate use in association with wares, it must also be shown that the brochures were given to a purchaser at the time of transfer of the property in or the possession of the wares.

While the representative of the Registrar was prepared to infer that sales of the wares occurred and that the evidence as a whole showed use of the mark, unfortunately, for the registrant, the Court did not agree. The evidence did not indicate that brochures had been given to purchasers at the time of transfer of the property in or the possession of the wares.

In addition, the affidavit was not sufficiently precise when it came to showing use during the relevant three year period. Section 45 creates an obligation on the Registrar to ensure the evidence adduced is solid and reliable. As this had not been done and the affidavit was insufficiently precise, the appeal was allowed and the registration was expunged in totality.

Comment

The case emphasizes that when responding to proceedings under section 45, a registrant must provide precise evidence which is both solid and reliable.