The Proceedings

Kamsut Inc. (“Kamsut”) brought proceedings in the Federal Court seeking to expunge the registration of the trade mark KAMA SUTRA owned by Jaymei Enterprises Inc. (“Jaymei”) for use in association with chocolates, among other things.

Kamsut claimed the registration was invalid. It was alleged that Jaymei was not entitled to the registration because at the date of its application on February 19, 2002, and on the date of Jaymei’s first use in 1994, the registered trade mark was confusing with Kamsut’s KAMA SUTRA trade mark which had previously been used in association with its chocolate mint oil of love product.

Both parties filed evidence. Kamsut stated that they had sold chocolate flavoured products, including chocolate body soufflé, chocolate body paint and chocolate body oil in association with the trade mark KAMA SUTRA since 1988. Jaymei’s evidence showed that it had sold KAMA SUTRA chocolates in Vancouver since at least as early as 1994.

The Onus

The Trial Judge said that the burden was on Kamsut to establish by cogent evidence, on the balance of probabilities that Jaymei was not entitled to register its KAMA SUTRA trade mark because, when Jaymei first used it or at the time of its application to register the mark, the mark was confusing with Kamsut’s KAMA SUTRA mark in Canada which enjoyed prior use or was well known in Canada. The onus was on Kamsut to prove this, not for Jaymei to disprove it or for the Court to presume it.

Trade Mark Use

The Trial Judge also observed that Kamsut’s onus required it to prove sales of its product by detailed and specific evidence of use which met the requirements of section 4 of the Trade-marks Act (the “Act”). Section 4 provides a specific closed definition of trade mark “use” for wares. 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 such 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 the association is then given to the person to whom the property or possession is transferred.

When the Trial Judge reviewed all the evidence, he was not satisfied that Kamsut had satisfied the onus on it to show use of its trade mark as required by the Act. It was not sufficient for Kamsut to simply state that sales of their products had been made.

While this finding was sufficient to dispose of the application, the Trial Judge also found that there was no likelihood of confusion between Kamsut’s chocolate flavoured products and Jaymei’s chocolates.

Comment

Trade mark “use” is of fundamental importance under the Act since rights are determined by it. As this decision shows, there is a mandatory requirement on the part of an applicant for expungement based on prior use to clearly show trade mark “use.”