Approach to affidavit evidence of use clarified

The Federal Court of Canada has clarified the approach to be taken to affidavit evidence in expungement proceedings.

The decision stems from the assignment by Al-Rifai Roastery (Mahmasat) Inc (Mahmasat) of its rights to the trademark AL-RIFAI ROASTERY (MAHMASAT) to its president Fares Jarawan. Upon hearing of the assignment, Smart & Biggar requested that the registrar of trademarks issue a notice to Mahmasat and Jarawan asking for evidence that the mark had been used in the previous three years in respect of coffee and roasted or otherwise processed nuts, in compliance with the requirements of Section 45 of the Trademarks Act.

On the basis of an affidavit filed by Mahmasat and Jarawan, the hearing officer held that the trademark in question was in use in Canada in association with each of the registered goods by means of its display on their packaging. Smart & Biggar appealed.

The Federal Court had to decide whether the hearing officer's findings were reasonable, given the proof of use that had been filed, namely the affidavit along with related exhibits.

A statement in the affidavit indicated that the goods associated with the MAHMASAT trademark were shipped to clients in boxes and bags and that the trademark was visible on such packaging. Mahmasat and Jarawan attached as an exhibit some photographs showing the MAHMASAT trademark on boxes in a warehouse. The affidavit also contained statements regarding annual sales for the goods made during the relevant time period, and it referred to an exhibit consisting of invoices from a company called Wake-Cup Coffee Depot Inc showing coffee sold to various retailers and displaying the MAHMASAT trademark.

However, the court was of the opinion that the affidavit and the photographs filed as an exhibit did not establish use because they failed to reveal:

• whether the pictures were taken within the three-year period or more recently;
  
  
• whether the pictures were taken in Canada or elsewhere; and
  
  
• whether the boxes actually contained the goods associated with the trademark in question or something else.

The court found the invoices filed irrelevant because they were not establishing that the goods sold bore the trademark in question, which is an essential requirement to show use within the meaning of the Trademarks Act.

In support of this view that what amounts to bare unsubstantiated statements of use are not acceptable, the court cited some excerpts of the decision in Aerosol Fillers Inc v Plough (Canada) Ltd (1979) 45 CPR (2d) 194. In that decision, the court stated that the affidavit, more particularly in cases of summary expungement procedures, should be precise and

"should not be susceptible of more than one interpretation; … if it is then the interpretation adverse to the interest of the party in whose interest the document was made should be adopted."

Accordingly, the court found that the hearing officer's conclusion was not reasonable and granted the appeal.

Marcel Naud, Léger Robic Richard LLP, Montreal