Evidence of use must show connection with mark owner, court affirms

In Foot Locker Group Canada Inc v R Steinberg, the Federal Court of Canada has ordered the cancellation of the plaintiff's WOOLWORTH trademark in relation to retail store services. The court held that although the plaintiff had provided evidence of use of the mark, it had failed to demonstrate that this use was by the plaintiff or its predecessors in title during the relevant period.

R Steinberg applied to the Trademarks Registry for the cancellation of Foot Locker Group Canada Inc's (formerly known as Venator Group Canada Inc) WOOLWORTH mark on the grounds of non-use. Pursuant to Section 45 of the Canadian Trademarks Act, the hearing officer issued a notice requesting that Foot Locker provide evidence of use during the relevant period, namely the three-year period preceding the date of the Section 45 notice. Foot Locker filed an affidavit making various statements and also attached as an exhibit a photograph showing the trademark used in a sign affixed to the front of a store in the city of Toronto. The hearing officer said that the statements in the affidavit were vague and did not prove use during the relevant period. The hearing officer therefore ordered the cancellation of the mark.

On appeal to the Federal Court, Foot Locker filed a further affidavit. The same photograph was attached as an exhibit and Foot Locker also provided sales figures. The Federal Court was not convinced by the evidence. It held that it did not show who the user of the trademark was. No connection was made between Foot Locker (or its predecessors in title) and the store where the mark was used. Furthermore, there was no explicit connection between the sales figures and Foot Locker. The court noted that because Foot Locker had chosen to demonstrate use by reference to "a specific store at a specific location and by reference to sales figures", it was "particularly crucial" to connect the registered owner of the mark to those specific facts.

Accordingly, the court found that the evidence did not establish prima facie evidence of use of the mark by Foot Locker.

Toni Polson Ashton, Sim Hughes Ashton & McKay, Toronto