No 'great harvest' of evidence necessary in Section 45 proceedings

In Brouillette Kosie Prince v Great Harvest Franchising Inc (2009 FC 48, January 20 2009, released on August 30 2009), the Federal Court of Canada has upheld two trademark registrations owned by Great Harvest Franchising Inc.
Brouillette Kosie Prince requested that the registrar of trademarks expunge two figurative marks incorporating the words 'Great Harvest Bread Co', which were owned by Great Harvest. Each mark was registered in association with slightly different bakery-related goods and services.
Pursuant to the summary expungement procedure under Section 45 of the Trademarks Act, the registrar of trademarks asked Great Harvest to show use of the two marks in Canada during the preceding three-year period.
Great Harvest submitted evidence which showed that use of the marks had occurred on a single day in a Lethbridge (Alberta) shopping centre. There were photographs of:

  • a temporary table set up in the shopping centre;
  • a display of bread baskets;
  • a banner which included the first mark; and
  • informational brochures to potential franchisees featuring the first mark.
The second mark was printed on labels for the bread. There were also a number of bills relating to the sale of bread on that day. Advertisements in a franchise publication and business cards were also included as part of the evidence.
The registrar held that Great Harvest had used the first mark in relation to the “operation of retail bakery shops” and sustained the registration. However, the registrar deleted some goods associated with the second mark for lack of use (including cookies, muffins and clothing), but largely sustained that registration as well.
On appeal by Prince, the Federal Court reviewed the registrar’s decision on a standard of reasonableness. The court noted that Great Harvest had not taken advantage of the opportunity to file additional evidence on appeal, but commented that a trademark owner’s burden to show use was not a stringent one. The court concluded that the type of evidence submitted by Great Harvest was sufficient to show use of the trademark in association with the goods and services listed. The court also concluded that the registrar was correct in finding that Great Harvest’s temporary operation of selling bread in a shopping centre, albeit mainly to solicit interest in franchise sales, was nonetheless sufficient to prove use of the marks in association with bakery goods and services.
As a result, the court declined to intervene in the registrar’s decision to confirm the registration of the marks (as amended by the registrar in the case of the second mark).
Yuri Chumak, Cameron MacKendrick LLP, Toronto

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