Corporativo de Marcas GJB, SA de CV v. Bacardi & Company Ltd.,2014 FC 323

This was an application for judicial review of a decision of the Registrar of Trade-marks. The Registrar allowed an opposition by Bacardi & Company Ltd. (the “Opponent”) and refused an application for the trade-mark RON CASTILLO LABEL design filed on behalf of Corporativo de Marcas GJB, SA de DV (“Marcas” or the “Applicant”). The judicial review turned on the issue of “use”.

The Opponent opposed the design mark on the ground that it did not satisfy the use requirement under subsection 30(b) of the Trade-marks Act (the “Act”). While there is an initial evidentiary burden on the Opponent to adduce sufficient evidence supporting its claim of non-compliance by Marcas, the Court held that the Opponent met that burden. The Court found that the record was “clearly inconsistent” with Marcas’ claim of continuous use, and therefore satisfied the evidentiary burden imposed on the Opponent. The Court also held that it was reasonable for the Registrar to draw an adverse inference from the lack of evidence of use filed by Marcas, and conclude that the evidentiary burden with respect to use had been met by the Opponent on that basis.

With the Opponent having satisfied its evidential burden, Marcas was then required to satisfy its legal burden with respect to the compliance of its application under section 30 of the Act. The Court found that it was reasonable for the Registrar to conclude that the design mark was not sufficiently used throughout the material time and, as a result, that Marcas had failed to satisfy its legal burden regarding the continuous use of the design mark during the relevant period. The Court noted that the evidence pointed strongly against continous use, and found that there were no reasonable explanations for the “total void of evidence of use for a majority of the material time”. The Court therefore dismissed Marcas’ application for judidical review.