Registrar can issue a second trademark expungement notice

In Cassels Brock & Blackwell LLP v Registrar of Trademarks, the Federal Court of Canada has upheld a hearing officer's decision to issue a second expungement notice requiring Italian company Montorsi Francesco e Figli SpA to provide further evidence of use of its mark in Canada. The court stated that although second notices are rare, the hearing officer had discretion to issue the notice and was justified in doing so.

Following a request by Canadian law firm Cassels Brock & Blackwell LLP, a hearing officer acting for the registrar of trademarks issued a summary expungement notice under Section 45 of the Canadian Trademarks Act requiring Montorsi to prove use in Canada of the registered trademark DANIEL and design in association with San Daniele ham.

Section 45 provides for a summary procedure meant to clear the register of marks that are not in use in Canada. Failure to show use in Canada during the three years prior to the January 15 2001 date of the notice or special circumstances explaining non-use during that time rendered the DANIEL registration subject to expungement. The mark had originally been registered in 1989 on the basis of an Italian registration but was never used in Canada.

Montorsi's affidavit evidence sought to establish that the failure to use the trademark in Canada was due to special circumstances, with the result that the registration should be maintained. In particular, Montorsi argued that use had been delayed as the Italian consortium that controls the production of the ham, the Italian government and Montorsi had to take a number of steps before the ham could be exported to Canada. The hearing officer accepted the evidence and held that that such efforts constituted special circumstances allowing the registration to be maintained.

However, the hearing officer went on to note that the evidence was vague in a number of respects, in particular, it failed (i) to specify the reason why all members of the consortium must comply with Canadian government requirements before Montorsi could sell the ham in Canada, and (ii) to provide information about efforts made to determine when the certification process would be completed. As a result, the hearing officer issued a second Section 45 notice requiring Montorsi to prove use of the mark in Canada or explain the reason for non-use.

Cassels Brock & Blackwell appealed to the Federal Court on several grounds, including challenging the jurisdiction of the hearing officer to issue a second Section 45 notice. The issuance of a second notice appears to be rare, but the court held that the registrar has discretion at any time to issue such a notice and, in this particular case, the decision to do so was adequately explained and appeared reasonable in the circumstances. The court added that the issuance of the second notice appears to have been intended to acquire further information concerning prospective use of the mark in Canada, which serves the overall purposes of Section 45 of the act. Accordingly, it dismissed the appeal.

Arnold Ceballos, Smart & Biggar/Fetherstonhaugh & Co, Toronto