SWAGGER case highlights effects of unrepresented trademark owners in Section 45 non-use proceedings

Businesses evolve and registered trademarks once used sometimes fall by the wayside. In Canada, Section 45 of the Trademarks Act is an efficient and expedient way to remove trademarks that have not been used for the past three years – a process, as the courts have stated, is meant to remove “dead wood” from the register.

In practice, most targeted trademark registrations become expunged because the trademark owner does not respond to the Trademark Office notice to produce factual evidence of use.

In other cases though, the process may turn out to have hidden depths as demonstrated in the recent decision of the Federal Court in Anashara v Swagger Publications Inc (2015 FC 1241), where the owner of the targeted trademark was self-represented.

At the opposition level Mr Anashara filed one affidavit, no written submissions and did not appear in person at the hearing. His evidence of use at the Opposition Board was found to be insufficient and the mark ordered expunged.

On appeal to the Federal Court, the issues were whether Mr Anashara provided new information and whether this new information would have materially affected the registrar’s decision.

Mr Anashara provided new evidence in the form of a heartfelt affidavit, some of which is reproduced as follows:

“I, Faisal Anashara, as the owner of the trademark SWAGGER, am appealing the registrar's decision pursuant to Section 56 of the Trademarks Act on the basis that the registrar made a mistake in cancelling my mark alleging non-use. I have spent a lot of money, time and effort on the SWAGGER trademark from the time that I filed an application to register the SWAGGER mark with the Canadian Intellectual Property Office on October 6 2006 to now for me not to use the mark or leave it idle. I have used the SWAGGER trademark on products and services and continue to use the mark […] Mr Allen seemed like a genuine person from his email. I am not sure if he is still behind Andrew Williams, 'swaggermagazine.com' and Swagger Publications Inc, but if he is, how does he feel about taking one man’s (Faisal Anashara) investment property and giving it to another man (Andrew Williams) who saw something that didn’t belong to him but liked the idea of owning it and gave no consideration to the fact that there is an original owner who started that dream, invested in it, sacrificed and worked so hard for so long before he, Andrew Williams, decided that he wanted to build something similar?" (Anashara v Swagger Publications Inc, court records: affidavit of Faisal Anashara)

He also provided oral testimony to fill in the evidentiary gaps in the affidavits he submitted to the Opposition Board and the Federal Court.

The court found him to be a credible witness and that the information in his testimony and affidavit provided “date, location and context to his evidence that sales of wares displaying the mark took place” (Anashara v Swagger Publications Inc, at Paragraph 38) within the relevant period.

This evidence is new and material as it would have impacted the registrar’s decision on whether certain wares were transferred in the normal course of trade, specifically the registrar would have maintained the registration for the wares where Mr Anashara had demonstrated use.

This case serves as a reminder to both trademark owners and practitioners the complex and unexpected nature of trademarks law.

For trademark owners who find themselves served with a Section 45 notice, this case is a reminder that the nuisances of trademarks law can be difficult to navigate without the help of a professional. Opting to self-represent may mean not achieving the desired result in the most expeditious and cost-efficient manner.

For counsel of the requesting party this case is a reminder that when facing an unrepresented party, the process may take longer than expected and may require assisting the court by proving statements of the law.

Toni Polson Ashton and Sisi Jia, Sim & McBurney - Sim Lowman Ashton and McKay LLP, Toronto