Decision highlights importance of documenting attempts to use or resume use of marks

Canada has a handy procedure for cancellation of registered marks that are more than three years old, and have not been used for three years (set out in Section 45 of the Trademarks Act). Many cases refer to this as a way of clearing 'deadwood' from the Register. In some cases, however, even where there has been no use of the mark during the relevant three-year timeframe, a registration can be maintained provided that the registrant is able to establish that special circumstances exist to excuse non-use.

Generally, a determination of whether an excuse qualifies as special circumstances involves analysis of three criteria:

1. whether non-use is for reasons beyond the control of the registered owner; and only if such reasons exist;
2. the length of non-use; and
3. whether there exists a serious intention to shortly resume use.

This test was recently considered in the case of Przedsiebiorstwo Polmos Bialystok Spolka Akcyjna v Underberg AG (2013 TMOB 133), which involved the trademark GRASOVKA for vodka. A federal government regulation restricts coumarin, a naturally occurring chemical found in bison grass, from alcoholic beverages. However, bison grass is apparently “fundamental” to the “unique, award-winning, spicy aroma” of the registrant’s vodka.

The evidence in this case was clear that there was no current Canadian use of the GRASOVKA mark, nor had there been any for the past six years. However, the registrant submitted special circumstances should excuse non-use since it was restricted from listing its vodka with retailers such as the Liquor Control Board of Ontario (LCBO) due to Health Canada’s restrictions on products containing coumarin. In addition, it claimed to be developing a coumarin-free version of its vodka, and that such work had commenced prior to issuance of the Section 45 notice.

The hearing officer noted that difficulties in complying with Canadian food standards have been held to be a special circumstance excusing non-use and, furthermore, efforts to comply with regulations and industry standards certification can be considered an external force and not the voluntary decision of a foreign importer. In this case, the hearing officer concluded that the Health Canada restrictions on coumarin constituted the reason for non-use of the mark and were beyond the registrant’s control, and that the length of non-use was reasonable in the circumstances. The hearing officer concluded that the registrant is, in fact, prepared to sell its product to Canadian consumers once it receives approval to do so by government-designated importers such as the LCBO.

This decision is significant in that it reinforces the office’s position that it is a registrant’s reasons to justify non-use which amount to special circumstances - and although mere intention to resume use cannot explain the absence of use of the trademark in the marketplace, a well-documented pattern of attempting to use the mark and evidence of the steps taken towards resuming use will go a long way towards keeping a mark on the Register. Trademark owners should ensure that they document steps taken to use and/or resume use of their marks.

Megan Langley Grainger, Bereskin & Parr LLP, Toronto