2011 FC 117 (February 1, 2011)
Overview
The Federal Court overturned a decision of the Registrar of Trademarks to expunge a trademark registration for all but a few wares further to a section 45 request after new evidence of use was provided on appeal by the owner. Nevertheless, costs were ordered against the successful appellant for its failure to file proper evidence before the Registrar.
Abstract
A trademark owner appealed a decision of the Registrar of Trademarks ("Registrar") deleting wares from its trademark registration due to the owner's failure to furnish sufficient evidence of use on a request under section 45 of the Trademarks Act ("Act"). The owner filed new evidence on appeal, and the Federal Court overturned the Registrar's decision. However, the Federal Court granted costs of $2,000 against the owner, judging that proper evidence of use should have been filed before the Registrar and not on appeal.
Case summary
Facts. On May 30, 2007, at the request of Borden Ladner Gervais LLP, the Registrar forwarded a notice under section 45 of the Act to Wonderfarm Biscuit & Confectionery SDN BHD, the registered owner of Trademark Registration No. TMA504,780. The owner provided an affidavit and evidence of use before the Registrar, but the latter found that insufficient evidence of use had been shown and deleted from the registration all the wares except for "preparations made from cereals, namely biscuits, wafers and cookies."
The owner appealed the Registrar's decision to the Federal Court and provided substantial new evidence of use.
Analysis. Due to the presentation of new evidence of use, the Federal Court restored all the wares deleted from the registration by the Registrar, except for "bread, pastries and spices" for which no evidence was provided. The Federal Court ordered costs of $2,000 against the successful owner, finding that the latter should have filed proper evidence before the Registrar and not undertaken an appeal in order to do so.
Conclusion
Trademark owners who do not furnish sufficient evidence of use before the Registrar in a section 45 proceeding who then provide sufficient new evidence of use in an appeal before the Federal Court may be condemned to pay costs in the appeal, even if they are otherwise successful on the appeal.
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