TINT KING mark resurrected after owner's death

In Tint King of California Inc v Registrar of Trademarks, the Federal Court of Canada has allowed, in part, an appeal from a decision by the registrar of trademarks that expunged the trademark TINT KING from the register. The court found that although the evidence filed was not sufficient to establish use of the mark in association with goods, it was sufficient to establish use in relation with services.

The procedural aspects that led to the appeal in this case are particularly noteworthy, even if the main issue relates to whether or not the mark owner provided acceptable evidence of use in order to meet the requirements set by the Canadian Trademarks Act.

On June 14 2005 a notice sent to the mark owner by the registrar requested the filing of evidence to show that the mark was in use in Canada at any time during the three-year period immediately preceding the date of the notice.

Since the owner did not respond to the notice, the registrar sent a letter dated October 20 2005 to inform the owner that the mark would be expunged. However, the owner's sole officer, director and shareholder never had the chance to read the notice nor the subsequent decision to expunge the mark because he had passed away several months before, in December 2004. His widow, Mrs Starkman, explained in her affidavit that she did not read business correspondence sent to the owner during a period of bereavement following the death of her husband. As a result, she became aware of the expungement proceedings only in November 2005.

Section 56 of the act provides that:

"[a]n appeal lies to the Federal Court from any decision of the registrar … within two months from the date on which notice of the decision was dispatched by the registrar or within such further time as the court may allow, either before or after the expiration of the two months."

In this case, the court found that the fact that Starkman did not read business correspondence sent to the owner during a period of bereavement did not bar her from making an appeal on behalf of the owner. Starkman was also not prevented from submitting, on appeal, evidence that was not before the registrar, even if the affidavit had been sworn by her instead of the sole director of the mark owner. In support of this finding, the court relied on the case of Roebuck v Registrar of Trademarks, 15 CPR (3d) 113, 13 CIPR 75 (FCTD).

At the hearing of the appeal to reinstate the mark, the owner's counsel requested an adjournment to allow time to provide clarification (ie, additional evidence) on use of the mark, as he came to realize that the court viewed the evidence submitted as "somewhat slim" considering the 11 branches in Canada listed in the original affidavit. The court exercised its discretion in favour of the owner, because it felt that the circumstances of the case warranted admitting a supplemental affidavit, even if the evidence was already available at an earlier date.

However, despite such supplemental affidavit, the court found that the invoices and advertisements submitted as evidence of use of the mark both in association with the goods and the services could only be considered evidence of use in association with the services, and not with the goods. This was essentially because (i) the invoices displayed the mark at the top to identify the seller rather than in the description to identify the goods sold; and (ii) advertisement of goods is generally not sufficient in Canada to constitute use of a trademark.

Therefore, the court ordered that the decision of the registrar with respect to the expungement of goods from the register be upheld, but that the mark be restored with respect to the services.

Marcel Naud, Leger Robic Richard LLP, Montreal