The plaintiff, the Private Career Training Institutions Agency (Agency) is a provincial regulatory agency charged with overseeing career training institutions that operate throughout the Province of British Columbia.  Acting on complaints received from other career training institutions in the Province, the Agency sought an injunction against VCC’s practice of using the names and trademarks of those other institutions in VCC’s keyword advertising program, on the basis that such use was false, deceptive or misleading.  The Court held that VCC’s keyword advertising program was not false, deceptive or misleading and therefore no injunction was granted.

While framed as a false, deceptive or misleading advertising complaint, rather than a trademark infringement or passing off claim, the Judge in his reasons specifically referenced trade-mark and passing off concepts when looking at the issue of what is confusing or misleading in the context of alleged improper advertising.  The Judge found that what the defendants were doing did not amount to false, deceptive or misleading advertising.  The Judge also held in his reasons that: “I also accept VCC Inc.’s argument that its practice of using Keyword Advertising is no different than the time-honoured and generally accepted marketing practice of a company locating its advertisement close to a competitor’s in traditional media (e.g., placing its Yellow Pages advertisement next to or in close proximity to a competitor’s telephone number  in the same directory so that potential customers of that competitor discover there is another company offering a similar product or service and that they, the consumer, have a choice).”

The Agency has until June 28, 2010 to file an Appeal of the decision, should it choose to do so.

STENNER was registered as a trademark in the Canadian Intellectual Property Office (“CIPO”) in 2005.  The Application, filed in 2003, was objected to by the CIPO Examiner on the basis that the mark was primarily merely the surname of an individual.  That objection was overcome when the Applicant provided sufficient evidence of secondary distinctiveness – i.e. evidence that the mark was recognized as the source of the Applicant’s financial services and newsletters, as much or more than than it was recognized as a surname.  The Application was not opposed by anyone.

The Federal Court found that the evidence established that the registered owner had used the STENNER mark on and off over the years, commencing in the late 1980′s, though rarely, if ever, as a standalone mark and periods of use had been punctuated by lengthy periods of non-use.  In the early 2000′s, the principal of the registered owner had a bitter falling out with his two children who were also in the financial services industry and who also used the STENNER name in association with the performance of their services.  That falling out had been the subject of a separate lawsuit, however the Court in those proceedings specifically declined to rule on the validity of the trademark registration for STENNER.

The application to expunge the registration for STENNER was based on various grounds, but the argument that won the most favour with the Federal Court was that the mark was no longer distinctive (assuming it ever had been), due to extended periods of non-use, lack of use as a standalone mark and the results of expert evidence on the recognition of the mark as a source indicator for the registered owner’s services.   The expert evidence put forward showed that the mark was recognized by virtually no one outside of the Lower Mainland of British Columbia and even within that region, the recognition factor was very low.  Also, the use of the same mark by the two children in the same industry and geographic area also pointed to a lack of distinctiveness.

In the end result, the Federal Court ordered the expungement of the registration for the STENNER mark.  There is no indication yet of whether an appeal will be filed, though the deadline for doing so is fast approaching.

Those of us who provide trademark prosecution and counselling services—and particularly those of us who work with clients that have multi-national trademark portfolios—know that clients are sensitive to developments not only in Canadian practice, but also in other key markets around the world.  Many of my clients were concerned about a line of United States cases, decided over the last several years, that regarded innocent filing errors in applications, renewal forms, and other correspondence with the US Patent and Trademark Office as attempts to perpetrate a fraud on the Office, justifying refusal, expungement, or some other highly punitive penalty.  These decisions had effectively broadened the notion of “fraud” on the USPTO to include innocent mistake and negligence.

However, it appears generally acknowledged that this trend halted in 2009 with a decision titled In re Bose Corp. In the most general terms, Bose served to restore the concept of fraud on the Office to a more conventional meaning.  Now, only if an applicant knowingly makes a false, material representation with the intent to deceive does their action rise to the level of fraud, meriting harsh punishment.

However, I am becoming concerned we may be seeing the start of a trend in Canada toward permitting challenges to applications for alleged lack of good faith akin to what our US friends experienced pre-Bose.  In decisions released over the last two years, the Canadian Trade-marks Opposition Board appears to be breathing new life into the ability of opponents to challenge applications on the basis of good faith.

Now, to be clear, opposition proceeding claims that an application has not been filed in good faith, and therefore does not conform to the requirements of the Trade-marks Act, are nothing new.  Many opponents’ counsel have been inserting claims to this effect in statements of opposition for years, if not decades, almost as a matter of course.  Seemingly frustrated by the claims’ prevalence in the 1974 case of Sapodilla Co. Ltd. v Bristol-Myers Co. (15 C.P.R. (2d) 152), the Canadian Trade-marks Opposition Board queried whether such claims actually created a valid ground of opposition, and expressed regret that the provision was so commonly asserted in opposition proceedings where “it serves no purpose other than to clutter up the proceedings.”

What is new, however, is that the Board now appears increasingly willing to entertain claims challenging the truthfulness of statements contained in applications, and to refuse applications where the Board has suspicions about the verity thereof, independent of other grounds.  Two recent decisions of the Board illustrate this.

The first—Cerveceria Modelo, S.A. de C.V. v. Marcon (2008, 70 C.P.R. (4th) 355)—was issued in 2008.  There, the Board upheld an opposition brought by Cerveceria Modelo against Marcon’s application to register the trademark CORONA for use in association with both a variety of beverages and with beverage bottling services.

Marcon’s application was opposed on several grounds, including alleged confusion with Cerveceria Modelo’s familiar CORONA trademark. Additionally, the opposition was also founded on Marcon’s alleged failure to comply with s. 30(i) of the Trade-marks Act, which provides that an application must contain a statement that the applicant is satisfied that he “is entitled to use the trademark in Canada in association with the wares or services described in the application.”

Certain trademark commentators, including the esteemed Hugues Richard, have previously suggested that the requirement to include this statement in an application amounts to a representation on the part of the applicant to the public that the application has been submitted in good faith, and that the applicant approves of the application.

In Marcon, relying upon an earlier decision purported to suggest that s. 30(i) challenges could be successful in “exceptional circumstances”, the Board concluded that the opponent had adduced sufficient evidence to properly support its allegation relating to s. 30(i), by:

• establishing that Marcon had filed applications for a number of other allegedly well-known marks contemporaneously with or following his application for the CORONA mark; and
• pointing out that when initially filed, Marcon’s CORONA application claimed beer, just as was claimed in the CORONA registration owned by the opponent, even though the statement was later revised to remove these directly overlapping wares, which Marcon claimed under cross-examination to have been included by mistake.

In addition, the Board appeared to draw a negative inference from Marcon’s failure to have approached a manufacturer to produce many of the proposed wares he desired to offer in association with the trademark.  In the Board’s view, these facts together constituted the sort of “exceptional circumstances” to put the good faith “entitlement” issue into question, requiring Marcon to establish grounds for his belief in his entitlement.

Despite some efforts to establish his bona fides as an entrepreneur (from which, it appeared, he hoped the Board would infer his genuine interest in using the marks), Marcon failed to persuade the Board of his good faith belief.  Instead, the Board queried “how any reasonable person would be satisfied that he/she was entitled to file trademark applications for over 18 arguably well known marks for arguably related wares and/or services.” Of course, this is not the proper analysis: the consideration ought to focus on the good faith entitlement assertion for the particular application in which it appears—and in this regard, it is worth noting that the Examiner initially assigned to consider Marcon’s application didn’t think its claims to be entirely unreasonable, approving the application for advertisement, which ultimately lead to the opposition proceeding.  In any event, the Board found the opponent’s arguments persuasive, and Marcon’s application was refused.

This decision is somewhat troubling insofar as the rights of applicants are concerned: arguably, it has the effect of requiring an applicant to have a knowledge of the niceties of trademark law—and specifically,  questions around confusion and scope of protection—that the legislation does not require.  Under cross-examination Marcon made clear that he did not believe that he should have the right to claim CORONA in association with beer, but believed that no one would be confused as to the source of CORONA-branded water, juice or even wine products he might offer.  In this light, it appears Marcon turned his mind to the entitlement issue, and came to a (seemingly) honest, but (arguably) incorrect, conclusion.  Nonetheless, the Board concluded that Marcon’s actions brought his good faith into question, tainting the application.

In this way, the decision appeared to open the door to a slightly different line of attack against applications than had previously been available, imposing a standard not merely of the presence of the required s. 30(i) statement, but extending to the need for both some evidence of the bona fides of the applicant’s belief in his entitlement, and the correctness of that belief in entitlement at law.

The Board seemingly took another troubling step in this direction in a subsequent decision— FreemantleMedia North America Inc. v Wright Alternative Advertising Inc. (2009 77 C.P.R. (4th) 311).  In this case, the Board considered Freemantle’s opposition to Wright’s application to register the trademark CANADIAN IDOL.  Freemantle is the North American affiliate of the co-owner of the British Pop Idol television series, which developed the popular American Idol, Canadian Idol and World Idol television programs.

Wright, a marketing and advertising agency, had been engaged by Sears Canada to assist in the development of a national youth talent competition which it proposed be called CANADIAN IDOL.  The competition was to involve an open audition call: the top 20 performers from each region would compete at their local Sears store, with shoppers choosing the winner. Sears representatives suggested to Wright that they would like to see the competition receive some television exposure.

Wright filed an application to register CANADIAN IDOL for use in association with “entertainment services namely, television talent show, talent search show, national contest searching for talented individuals, and talent search services.” Freemantle opposed the application on a variety of bases, including that the application did not conform to s. 30(i) of the Act.

Relying upon its own decision in Marcon, the Board took the position that it could look behind an applicant’s s. 30(i) statement in “exceptional circumstances”, like those where “there is evidence of bad faith on the part of the applicant.”  However, the Board then redefined the test to an examination of “whether there was sufficient evidence …to suggest there may have been bad faith” [emphasis added]—arguably, a lower standard.

In applying the test to the facts at hand, the Board redefined it further.  The Board noted testimony by a Wright employee, unfamiliar with the niceties of Canadian trademark prosecution, who advised that a reference to television talent shows was inserted in the application before she had discussed the topic with Sears.  As the employee explained, the hope was simply that Sears would be happy and that Wright would get the work, and that she did not have any specific thoughts about making television programs at that time.  The Board took this as evidence that “raise[s] suspicion about the Applicant’s good faith in submitting the application”—again, a different standard than first expressed—and therefore required Wright to establish grounds for its belief in its entitlement as expressed in s. 30(i).

As was the case in Marcon, Wright failed to convince the Board of its bona fides with respect to its belief in its entitlement to use the CANADIAN IDOL mark in Canada in association with the claimed services. Despite testimony that its investigations led it to believe that no “Canadian Idol” program would be introduced in Canada—and in fact, no public announcement had been made in this regard prior to the time of Wright’s filing—the Board concluded that Wright had not sufficiently established that it was satisfied that it was entitled to file the application for CANADIAN IDOL, nor that its intentions were bona fide when it did so.

This decision too is troubling: in recasting the threshold to be met to put s. 30(i) into question from “exceptional circumstances” where there is “evidence of bad faith” to one merely requiring evidence that “raise[s] suspicion about the Applicant’s good faith”, the Board appears to have materially lowered the standard required to bring s. 30(i) into play on its own.

Whether these decisions are mere anomalies, or whether they signal the start of trend where the bona fides of an applicant’s s. 30(i) claims will, in and of themselves, regularly be in play remains to be seen.  Certainly the success of the opponents in these two cases will do nothing to stem the practice of “cluttering up the proceedings” with the sort of s. 30(i) challenges that the Board itself complained about in the Sapodilla decision, so many years ago.

Yet, neither of these two recent decisions appears to be well-supported by jurisprudence.  Somewhat curiously, both the Marcon and Freemantle cases in fact rely upon the Sapodilla decision to support the approach of alleging defects in the bona fides of an applicant’s s. 30(i) as a legitimate and independent ground of opposition.  Review of Sapodilla suggests that such an interpretation is not clearly tenable.

Moreover, the Federal Court has previously endorsed the view that an opponent cannot properly successfully oppose an application by merely challenging the verity of an applicant’s s. 30(i) claim without some other shortcoming first being found.  As the court put it:

Scholarly analysis also appears to indicate that unless a person alleging the validity of a trade mark can base his argument on other grounds, he cannot rely on s. 30(1)(d)(i) [as it then was, now s. 30(i)] simply by saying that the applicant does not have the right to use the trade mark. That is simple common sense. If the applicant is entitled to registration of his trade mark in accordance with the relevant provisions of the Act, a fortiori he is entitled to say that he is the person authorized to do so. (Optagest Canada v. Services Optometriques (S.O.I.) (1991), 37 C.P.R. (3d) 28 at 32)

In any event, until the Board eschews this approach—or until there is new jurisprudence from the Federal Court clearly pronouncing on the ability of an opponent to challenge the bona fides of an applicant’s s. 30(i) claims independent of other grounds—it remains clear the allegation will stay a part of many statements of opposition.  The trend, though, is unfortunate: it serves to introduce more indeterminacy in the law, which will make pre-filing application due diligence slower and more expensive, and will most likely claim self-represented filers as victims.

In the interim, applicants ought to be reminded of the need to take care in confirming both the propriety of their belief to their entitlement to use a trademark in Canada in association with prescribed wares and services, and to ensure the availability of evidence to support such a claim.

Cobalt Brands appealed. Cobalt Brands agreed the mark had fallen into disuse, but argued that special circumstances excused the non-use and the Court agreed.

The Court noted that Cobalt Brands was not prohibited from adducing evidence before the Federal Court simply because none was produced before the Registrar and that it was entitled to produce more than one affidavit.

The Court cited Scott Paper Ltd. v. Canada (Attorney General) for what constitutes “special circumstances”, noting that it must consider the duration of the absence of use and the likelihood of its continuation along with the extent to which the absence of use is due to a deliberate decision on the part of the owner (not permissible) or factors outside the owner’s control (permissible).

The mark had not been used for nine years, but the Court concluded that the ownership of the mark was plagued by a series of unfortunate events, including the deaths of the principal owners and a lengthy liquidation process. Cobalt Brands, upon acquiring the mark, immediately took steps to recommence production and distribution, but this involved locating a Scottish distiller and complying with the regulatory scheme in each Canadian province. These events were largely beyond the control of the registered owner. Moreover, while an intention to resume use does not excuse the absence of use, there was clear evidence the period of non-use was coming to an end. Thus, the registration was restored.

During the summer months of 2000 through 2007 the Plaintiff operated a popular Asian night market in Richmond, British Columbia.  The market was held on land leased by the Plaintiff, and the Plaintiff in turn leased space to vendors selling a wide variety of food products and merchandise.  The Plaintiff created a logo which included the text “Richmond Night Market Summer Festival” in English and “Richmond Summer Night Market” in Chinese characters.  The market was popularly known as “Richmond Night Market” and the Plaintiff applied for that name as a trademark in English and Chinese, although only the English mark was registered at the time of the hearing of the court action.

In 2007, when the Plaintiff was unable to renegotiate its lease at a favourable price, it announced that the market might not be held in 2008, unless the Plaintiff located an alternative space, which it was unable to do.  The Defendants became aware that the space the Plaintiff had been leasing was available, negotiated a lease, obtained the necessary permits from the City and sought out vendors.  However, the Defendants adopted a name similar to that which the Plaintiff had been using, and copied various documents the Plaintiff had created, including a vendor application form and a plan for the market showing the location of food and merchandise booths.

In lengthy reasons, Madam Justice Simpson of the Federal Court carefully examined the various allegations of passing off and copyright infringement.

The Court found that the Plaintiff had acquired rights in four trademarks:  RICHMOND NIGHT MARKET, RICHMOND NIGHT MARKET SUMMER FESTIVAL and Chinese characters for each of these.  The trademarks were originally merely descriptive, but by January 2007 they were valid trademarks because they enjoyed substantial goodwill and had acquired distinctiveness in association with the Plaintiff and the location of the market.  However, the Court also concluded that the distinctiveness was not durable, and the marks lost their distinctiveness and associated goodwill when the Plaintiff failed to open another night market in 2009.

The Court then examined the allegations of passing off, taking into account the elements of confusion listed in section 6(5) of the Trade-marks Act, including the surrounding circumstances.  The Court concluded that the visitors, but not the vendors, would have been confused by the Defendants’ actions and thus passing off was established (the key elements of the tort being the existence of goodwill, deception due to a misrepresentation and actual or potential damage).  However, given that the Defendants lost money in their endeavor, there could be no accounting of profits; further, given that the Plaintiff had not operated a market in 2008 or 2009, the Plaintiff had not lost money as a result of the Defendants’ activities.  However, the Plaintiff did recover damages for copyright infringement for use by the Defendants of the Plaintiff’s site plan and application forms, but the total amount was only $15,000.00 plus costs and interest.

Thus, the Defendants had failed to adequately distance themselves from the Plaintiff’s former business when trying to take advantage of the opportuntity presented by the Plaintiff’s cessation of services.  As a result, the Court found both copyright infringement and passing off, although in the circumstances the damages were small.

If research discloses that an applied for trademark consists of a professional designation, the examiner will apply a first impression test to determine whether a consumer would assume the goods and services are produced by a professional with a designation similar to the applied-for trademark and if so, the trademark will be unregistrable, being clearly descriptive of the persons employed in the production of the wares and services.  The addition of an abbreviation, acronym or initial to the professional designation will not make the trademark registrable.

A trademark that consists of or contains an abbreviation, acronym or initial will be considered unregistrable if considered as a whole and if as a matter of first impression the abbreviation, acronym or initial is clearly descriptive or deceptively misdescriptive of the wares and services.  Moreover, the addition of an abbreviation, acronym or initial to a clearly descriptive word or phrase will not render it registrable as a trademark.

The changes arise in light of a recent Federal Court decision, College of Traditional Chinese Medicine Practitioners and Acupuncturists of British Columbia v. Council of Nature Medicine College of Canada, that considered some 39 trademark applications and registrations containing abbreviations, acronyms and initials and allegedly confusing with certain professional designations.

The Plaintiff, a provincial body set up under British Columbia’s Health Professions Act to regulate the practice of traditional Chinese medicine and acupuncture, granted and controlled the use of various titles, including Doctor of Traditional Chinese Medicine (Dr. TCM) and Registered Acupuncturist (R. Ac.).  The Defendant was set up as a non-profit company under federal legislation and created educational programs and examinations in the field of traditional Chinese medicine which were offered by private schools.  The Defendant also proceeded to apply for and register trademarks for the various educational programs and licence graduates of the programs to use the trademarks.  The trademarks the Defendant registered included D.C.T.M. (DOCTOR OF TRADITIONAL CHINESE MEDICINE), REGISTERED D.P.C.M., D.P.C.M. (DOCTORATE IN PHILOSOPHY IN CHINESE MEDICINE), R. AC (REGISTERED ACUPUNCTURISTS).  There were a total of some 39 marks, some registered, some only applied for, although 24 of the marks were not ruled on by the Court because they were not set out in the Statement of Claim.

Extensive evidence was lead regarding the regulation of traditional Chinese medicine and, more importantly, the licences granted by the Defendant, the Defendant’s assertion that the Plaintiff was infringing its trademarks and the confusion arising in respect of the use of the trademarks by the Defendant’s licencees.

The Court agreed that the matter could proceed by summary trial and accepted the Plaintiff’s argument that the marks were contrary to section 12(1)(b) of the Act, being clearly descriptive or deceptively misdescriptive at the time they were applied for.  The Court noted that terms such as Dr. TCM and D.T.C.M. had been used in Yellow Page advertisements since 1995 to refer to a doctor of traditional Chinese medicine and trademarks such as REGISTERED D.P.C.M. were so similar that they remained descriptive, particularly when REGISTERED had been disclaimed.

Moreover, the Court was not convinced that the acronyms served to distinguish any of the trademarks because there was also a descriptive phrase dominating the trademarks. The Court concluded that an everyday user, faced with the acronyms and descriptive phrases, would conclude that doctors and acupuncturists delivering services in association with the trademarks were regulated as a professionals.  Thus, the marks were not registrable.  The Court then went on to find that the marks were contrary to section 10 of the Act (which prohibits adoption as a trade-mark of a mark that has by ordinary commercial usage become recognized as designating the kind, quality, quantity, destination, value, place of origin or date of production of any wares or services), as well as 7(d) of the Act (which prohibits a person from using a description in association with wares or services that is false in a material respect or likely to mislead the public).

Thus, the Defendant’s attempt to circumvent a provincial regulatory body by registering and licensing trademarks that appeared to be professional designations was not acceptable as a matter of trademark law.  To ensure that the Trade-marks Office does not approve similar marks in the future, CIPO is seeking to clarify in the proposed Practice Notices just when professional designations and acronyms will be contrary to section 12(1)(b).

In Drolet v. Stiftung Gralsbotchaft (2009 FC 17) the court was tasked with considering a range of copyright and trademark issues.  The litigants were all involved in the Grail Message movement—a religious movement centred around a series of writings prepared in Germany in the 1920s and 1930s. The plaintiff sought to expunge the defendant’s Canadian trademark registrations pertaining to the title of a book central to the movement for reasons relating to descriptiveness.

First applying the conventional analysis proscribed under s. 12(1)(b) of the Trade-marks Act (the “Act”) to determine if the mark was “clearly descriptive”, the court concluded the mark did not meet this test, as the title did not convey to a consumer a clear indication of the book’s contents or subject matter.  However, writing for the court Mr. Justice de Montigny went on to assert:

I am nevertheless of the opinion that the title of a literary work is inherently descriptive not because it conveys information on the content of the work but because it is the only way to identify the work in question.  Thus the title cannot be dissociated from the work itself.  Indeed, how could a publishing house identify a book it publishes other than by its title?

Additionally, though the court noted that the definition of wares as set out in the Act includes reference to “printed publications”, it was not persuaded that this was evidence of Parliament’s intention that books (and by extension, their titles) were registrable under the Act.  The court observed that even if the reference to “printed publications” did include books, the other tests for registrability of a mark under the Act had still to be applied, and a book title would not be registrable for reasons of descriptiveness.

Finally, the court turned to the Canadian Copyright Act to support its conclusions, noting the rights afforded under that legislation are provided for a limited period.  Once that period expires, the court noted, Parliament’s intent was for the work to become part of the public domain.  The court argued (unconvincingly, in this writer’s opinion) that if a book title was registrable under the Trade-marks Act, this would have the effect of defeating Parliament’s intent in the Copyright Act.

The potential impact of this decision is significant: prior to it, Canada was one of only a handful of countries that permitted the registration of book titles as trademarks. More broadly, the court’s logic in this case would also seem to apply to movie titles and other non-serialized, copyright-protected works.  Yet, despite the decision’s import, only a few other commentators have discussed this aspect of the case.

It remains to be seen if subsequent courts will follow the lead of the Federal Court in Drolet.  Though it aligns Canadian law with that of other countries on this point, certain aspects of the decision appear at odds with the Act—particularly that which finds a book title’s “inherently descriptive” nature is sufficient to cross the “clearly descriptive” threshold set out in the Act relating to registrability.

According to the story, VANOC “has serious concerns of the public being misled into believing there is an association between the 2010 Winter Games and [Scotiabank's] campaign”, though it is unclear as to the specific issues upon which VANOC’s concerns are based.

As evidenced by VANOC’s previous complaints about Lululemon’s winter marketing campaign, VANOC clearly remains concerned about ambush marketing, and is focused on protecting its sponsors.  The Royal Bank of Canada, one of Scotiabank’s competitors,  is an official sponsor of the 2010 Games.

The story indicates that Scotiabank officials and VANOC are in communication “to arrive at a mutually agreeable solution”.

The clothing line in question features various items in the national colours of Canada, the U.S., Sweden and Germany. Notably, the Canadian hoodies feature gold zippers while the zippers in the colours of other countries have silver zippers. Lululemon lost out to the Hudson’s Bay Company in its bid to be the official apparel supplier to the Canadian Olympic team for the Summer and Winter Games during the period from 2006 to 2012.

Readers of the Knowledge Bytes newsletter will be aware of the legislative hammers that are at VANOC’s disposal to enforce its trademark rights against both would-be infringers and ambush marketers alike. These include the Olympic and Paralympic Marks Act, which contains lists of specific words that either can’t be used at all, or that can’t be used in combination with other specific words–for example the combination of “Vancouver” and “2010″.

Lululemon, for its part says that it carefully did its legal homework and selected a brand that doesn’t fall afoul of any legislative prohibitions. VANOC appears to have conceded this point, indicating that it will use non-legal tactics to attempt to persuade Lululemon to back off.

As the start of the Winter Games quickly approaches, VANOC will no doubt have its hands full with other creative ambush marketing ploys. VANOC has published spectator guidelines about what will not be tolerated at the Winter Games event venues, including “Ambush marketing of any kind, distribution of leaflets, pamphlets and non-approved publications, promotional material and wearables”.

3082833 Nova Scotia Company (“3082″) owned the registered mark ENTRE NOUS for use in association with “telecommunication services, namely long distrance telephone services”.  The mark was originally owned and used by 3362426 Canada Inc. (“3362″) carrying on business as Primus Telecommunications Canada Inc. (“PTC”).  3082 acquired the mark in the course of a reorganization and the mark was used by PTC, which had become 3082′s wholly owned subsidiary.

In response to a section 45 summary expungement, 3082 put forward invoices issued by PTC as evidence of use, but the Registrar concluded that they only referred to “Primus Canada” and there was no evidence that 3362 or 3082 had used the mark and no evidence of a licence.

On appeal, 3082 filed a further affidavit stating that PTC was licenced by 3082 to use ENTRE NOUS.  This was all the evidence the Court required and the appeal was allowed.  In its reasons, the Court addressed the section 45 requirement that the owner must show use, as well as section 50, the licensing provision, which allows an owner to show use where a trademark is used by a party that is licensed or authorized to do so by the owner and the owner retains control of the character or quality of the wares.

In considering 3082′s reliance on the licence, the Court briefly reviewed the case law regarding licences as evidence of use noting that it is not necessary to produce a formal licensing agreement to prove the existence of a licence under section 50 (Wells’ Dairy, Inc. v. U L Canada Inc. and TGI Friday’s of Minnesota, Inc. v. Canada (Registrar of Trade Marks), that a licensing agreement can be inferred from the facts and that the agreement need not be in writing (Cushman & Wakefield, Inc. v. Wakefield Realty Corp.); and that common control between companies is not sufficient proof (Cheung Kong (Holdings) Ltd. v. Living Realty Inc.) and evidence of control must also be adduced.