A recent decision involving proceedings under section 45 of the Trade-marks Act (the "Act") raises an interesting issue concerning trade mark use.
Section 45 Proceedings
Under section 45, on written request made after three years from the date of registration of a trade mark, the Registrar must give notice to the registered owner requiring the owner to furnish, within three months, an affidavit showing, with respect to each of the wares specified in the registration, whether the trade mark was in use in Canada at any time during the three-year period immediately preceding the date of notice.
The purpose of this section is to provide a summary procedure for trimming the register of "dead wood." This section requires an affidavit, not merely stating, but "showing" sufficient facts so as to demonstrate trade mark use within the meaning of the Act. The affidavit must also describe the nature of the business and the normal course of trade of the owner of the trade mark.
Trade Mark Use
Under the Act, a trade mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed, or it is in any other manner so associated with the wares that notice of association is then given to the person to whom the property or possession is transferred. This definition is restrictive in nature.
In this case, the trade mark owner owned the trade mark ENVIROSEAL registered for use in association with organic and chemical binding agents, emulsions and surfactants used in the agglomeration of waste; and organic and chemical emulsion coatings used for surface sealing waste. The owner filed an affidavit which included a sales brochure which contained a description of ENVIROSEAL wares. In addition, copies of invoices which referred to the ENVIROSEAL trade mark were included with the affidavit.
The Hearing Officer accepted that there had been sales in Canada of the registrant's products in the normal course of trade during the relevant period. However, that alone did not satisfy the requirements of the section 45 since the registrant had to show that the mark was associated with the wares at the time of the transfer of the possession of the wares.
The registrant argued that it was inappropriate to require that the mark be associated with the wares at the time of transfer as the wares were bulk liquids that were typically loaded into rented trucks. The Hearing Officer observed that this did not prevent the association of the mark with the wares upon delivery by means of paper work which accompanied the delivery. Unfortunately for the registrant, there was no evidence that the invoices accompanied the wares at the time of delivery.
The Hearing Officer referred to a previous decision where our firm had acted for the successful requesting party. In that case, it was stated that in order to satisfy the requirements of the Act, the trade mark must be visible at the time of the transfer of the wares in the normal course of trade. Applying this decision, the Hearing Officer expunged the registration as the registrant had not provided sufficient evidence concerning how the registrant associated the mark with its wares at the time of transfer of possession.
While the result in this case may seem overly technical, a trade mark owner should ensure that they are using their trade marks in the manner required by the Act.