Section 45 proceedings require solid and reliable evidence, says court

In Grapha-Holding AG v Illinois Tool Works Inc (2008 FC 959, August 20 2008), the Federal Court has ordered that the registration for the trademark MULLER be expunged in totality from the register.
Illinois Tool Works Inc (ITW) owns the trademark MULLER in association with various goods. Following a request by Grapha-Holding AG, on October 30 2003 the registrar sent a notice to ITW under Section 45 of the Trademarks Act requiring that the latter provide evidence that it had used the mark in Canada in the three years preceding the notice.
In response to the registrar’s notice, ITW filed as evidence the affidavit of Faruk Turfan, vice-president of ITW Canada Holdings Company, a wholly owned subsidiary of Illinois Tool. Turfan stated that:
  • the brochures attached to the affidavit concerned the goods sold in Canada in association with the trademark MULLER; and
  • at the time of sale, the trademark was affixed on the goods as shown in the brochure. 
Among other things, Turfan identified one of the brochures as being "currently in use" and "in use since about 2002".
Based on the evidence, the registrar found that the mark at issue had been in use during the relevant period and decided to maintain the registration of the mark in association with the majority of the goods covered by the registration.
Grapha appealed on the grounds that ITW’s evidence did not support a finding that the goods actually sold were marked with the MULLER mark. Grapha further submitted that there was no indication that the brochures referred to in Illinois Tool’s evidence accompanied the sale of the goods during the relevant period.
It was not contested before the Federal Court that the appropriate standard of review of the decision was reasonableness, since Illinois Tool did not file new evidence on appeal (see Mattel Inc v 3894207 Canada Inc ([2006] 1 SCR 772)). 
In its analysis, the Federal Court highlighted basic principles of Section 45 proceedings, such as the fact that:
  • the evidence submitted must supply facts from which a conclusion of use may follow as a logical inference (see Osler Hoskin & Harcourt v United States Tobacco Co ((1997), 77 CPR (3d) 475 (FC)); and
  • the evidence must also satisfy the registrar that the trademark has been used during the relevant time period, namely the three-year period immediately preceding the notice under Section 45 (see Boutique Limité v Limco Investments Inc ((1998) 84 CPR (3d) 164 (FCA)).
According to the Federal Court, the registrar did not have sufficient evidence before her to conclude that ITW’s mark has been used, within the meaning of Section 4 of the act, during the relevant time period. ITW’s evidence showed a lack of precision with regard to the dates on which the goods would have been sold. Evidence referring to use on dates that are contained both within and outside the relevant period (ie, "currently in use" or "in use since about 2002") cannot be considered clear evidence, as it does not allow the registrar to determine if any use has occurred specifically during the relevant period.
Furthermore, although the brochures attached to the affidavit showed where the mark was situated on the goods sold by ITW, the evidence did not indicate that these brochures had been distributed at the time of transfer of the property in, or possession of, the goods.
The Federal Court stated that the circumstances of administrative proceedings under Section 45 of the act create an obligation on the registered owner to file precise, solid and reliable evidence, which was not the case of the evidence furnished by ITW.
Catherine Bergeron, Léger Robic Richard LLP, Montreal

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