The Supreme Court has dismissed Whirlpool's leave to appeal from 2015 FCA 232, a 2-1 decision delivered from the bench of the Federal Court of Appeal.
As we previously summarized the week of November 2, 2015, Alliance had successfully appealed a decision of the Federal Court (2014 FC 1224 and summarized here) that upheld a decision of the Registrar of Trademarks (2013 TMOB 218) which confirmed the registration of Whirlpool's trademark SPEED QUEEN. The registration was expunged as a result of the appeal.
The Supreme Court provided the following summary of the leave to appeal:
Intellectual property — Trade-marks — Proof of use — Evidence — Evidence necessary to establish use of a trade-mark — Whether the Court of Appeal substantially compromised the jurisdiction of the Registrar of Trademarks and transformed a simple, summary and expeditious administrative procedure into an adversarial process.
At the request of the Alliance Laundry Systems LLC, the Registrar of Trade-Marks forwarded a notice under s. 45 of the Trade-marks Act, R.S.C. 1985, c. T-13, to Whirlpool Canada LP, the registered owner of registration no. UCA15837 for the trade-mark SPEED QUEEN, requesting proof of use of the mark between October 5, 2008 and October 5, 2011. At the outset, Whirlpool Canada conceded that the registration should be amended to delete all but two wares (washing machines and dryers), and all services. It submitted an affidavit from Whirlpool Corp.'s Director/General Manager indicating that SPEED QUEEN had been used by Whirlpool Canada and its licensees (including Whirlpool Corp.) in association with washers and dryers in Canada in the normal course of trade within the relevant period; total sales figures for SPEED QUEEN washers and dryers in Canada in 2001-2010, an unspecified portion of which were affirmed to have occurred in the relevant period; a licensee's invoices dated shortly after the relevant period, said to be representative of the invoices issued during the relevant period; that Whirlpool Canada had retained direct or indirect control of the character and quality of SPEED QUEEN washers and dryers marketed and sold by its licensees in Canada since it acquired the mark in 2004. He also provided undated photographs of what appeared to be commercial, coin-operated washers and dryers prominently displaying the mark.
The Hearing Officer was satisfied that the affidavit had showed use of the mark during the relevant period within the meaning of s. 4(1) of the Trade-marks Act. The Federal Court dismissed Alliance's appeal, but the Federal Court of Appeal allowed Alliance's further appeal. It ordered that the Registrar of Trade-marks expunge registration no. UCA15837 in association with Whirlpool Canada's washers and dryers.