VISIBLE YOUTH cancellation incorrect, rules Federal Court

In Jagotec AG v Riches McKenzie & Herbert LLP, the Federal Court of Canada has overturned an Opposition Board decision to expunge Jagotec AG's mark VISIBLE YOUTH, which had been registered in association with various skin care products. The court had to decide whether the Opposition Board erred in finding that the evidence of use of the mark during the relevant period was inadequate.

The relevant period within which Jagotec was required to furnish evidence of use of its VISIBLE YOUTH trademark in accordance with Section 45 of the Trademarks Act was from October 1999 to October 2002. In this case, as Jagotec became the owner of the trademark by assignment in 2001, the evidence was mostly to be provided by its predecessor in title, SkyePharma PLC.

At the opposition stage, the evidence provided by Jagotec was found to be inadequate by the hearing officer. As the appeal was afterward filed and based on two new affidavits, the court's standard of review was therefore based on correctness.

The new evidence described the sales process of SkyePharma's distributor. The distributor's Canadian orders were directed to a Toronto warehouse for subsequent shipment. SkyePharma was also the entity issuing the invoices and receiving payment from Canadian customers. Both filed affidavits and exhibits which included invoices issued during the relevant period, as well as sales records and pictures of the VISIBLE YOUTH products.

As is it not necessary in a Section 45 proceeding for a registrant to produce detailed and complete records of use, (the registrant must simply prove a prima facie case of use), the court noted that proof of a single sale made during the relevant period, in this particular case between October 1992 and October 2002, would be enough.

The court was, in this case, satisfied by the evidence filed on appeal as the affidavits showed use of the trademark through sales of the goods in Canada, at least prior to the assignment in 2001, in that such goods were sold in containers or packaging bearing the mark VISIBLE YOUTH.

Therefore, even though the invoices and sales records produced as evidence by Jagotec not by themselves prove use of the mark, the court found that they nevertheless substantiated the affiant's evidence that sales of the goods had occurred.

Finally, the fact that the words 'visible' and 'youth' appeared one above the other on the packaging did not convince the court that the trademark was not in fact used as registered. On that matter, the court was of the opinion that any casual observer would instantly associate the two words as being part of a global expression.

In light of the above, the court allowed Jagotec's appeal with costs.

Catherine Daigle, Léger Robic Richard LLP, Montreal