Federal Court reviews burden of proof in Section 45 proceeding

In Brouillette Kosie Prince v Orange Cove-Sanger Citrus Association (207 FC 308, December 18 2007), the Federal Court has dismissed Brouillette Kosie Prince's appeal against the registrar of trademarks' decision to maintain the registration of the trademark POM-POM pursuant to Section 45 of the Trademarks Act. Brouillette challenged the quality of the evidence submitted by the owner of the POM-POM mark, the Orange Cove-Sanger Citrus Association.

As proof of use of its POM-POM trademark in association with fresh citrus fruits in Canada, Orange Cove filed before the registrar an affidavit evidencing the nature of the registered owner's business (ie, grower and packer of citrus fruits). As such, Orange Cove is a grower of citrus fruits and a member of Sunkist Growers Inc, a cooperative which assists its members in the distribution and invoicing of citrus fruits. The POM-POM trademark appears on fruit boxes sold to Canadian distributors.

Although new evidence was adduced on appeal, the Federal Court held that the evidence would not have materially affected the registrar's decision, as it was simply a confirmation of the evidence already filed with the registrar. Therefore, the standard of review applied by the court was that of reasonableness.

In analyzing Brouillette's arguments that the quality of the evidence submitted by Orange Cove was insufficient to demonstrate use of the POM-POM trademark in association with fresh citrus fruits, the court found that the registrar's decision was reasonable and that, overall, the submitted evidence supported the determination that the trademark was used during the relevant period. While it would have been possible for Orange Cove to prove use of its trademark with additional relevant documentation, the court noted that the trademark owner's burden in a Section 45 proceeding was not a stringent one. Moreover, as the evidence brought by Orange Cove went beyond being a mere broad statement of use of the POM-POM trademark, the court was unable to find any error warranting its interference. Accordingly, the court rejected Brouillette's appeal.

Catherine Daigle, Léger Robic Richard LLP, Montreal