A recent decision of the Federal Court confirms that an applicant for a trade mark must be in a position to show that it has continuously used the applied for mark from the date of first use until the filing date of the application.
The Facts
On April 22, 2003, Jose Cuervo, S.A. de C.V. (the Applicant) applied for RON CASTILLO Label Design (the “Mark”) based on use of the Mark in Canada since at least as early as July 1998 in association with rum. The Mark is shown below:
The Opposition
Bacardi & Company Ltd. opposed the application on the grounds that the Applicant, or its predecessors in title, had not used the Mark in Canada in association with rum since at least as early as July 1998, as claimed.
The Decision
The hearing officer said that the evidence suggested that the Applicant was not using any trade mark that included the word CASTILLO in Canada between November 24, 1999 and April 22, 2003. The issue was not whether the Applicant had abandoned its Mark but whether it had continuously used it in the normal course of trade between July 1998 and the filing date. The Applicant had ample opportunity to file evidence to counter the conclusion that the Mark was not in use in Canada between November 24, 1999 and April 22, 2003 but chose not to. Therefore the Applicant has not met its legal burden and the opposition was successful.
The Appeal
Corporativo de Marcas GJB, SA de CV, the successor to Jose Cuervo, S.A. de C.V appealed from the decision to the Federal Court.
The Standard of Review
The additional evidence filed on the appeal did not impact the basis for the hearing officer’s decision, namely, the lack of any evidence of continuous use. As a result the judge determined that the standard of review was reasonableness.
A court conducting a review for reasonableness considers the qualities that make a decision reasonable, referring both to the process of articulating the reasons and to outcome. Reasonableness is concerned mostly with the existence of justification, transparency and intelligibility within the decision-making process. But it is also concerned with whether the decision falls within a range of possible, acceptable outcomes which are defensible in respect of the facts and law.
Continuous Use
The judge observed that “use” is central to trade-marks and quoted Professor David Vaver remarks:
“Without “use” a trade-mark is nothing. It cannot be registered; if registered, it can be expunged. Anyone holding an unused mark probably cannot or does not want to invest in it, may just want to play dog in the manger and block competitors from using it, or may want to get into the business of selling marks, not goods or services. None of this is worth encouraging and the system treats him as an undesirable (David Vaver, Intellectual Property Law, 2d ed (Toronto: Irwin Law, 2011) at 471-72).
Perhaps this is something that our Government representatives have lost sight of when they drafted Bill C-31.
The Judge concluded that “continuous use of a trade-mark in the normal course of trade” was required to support an application. But such use may involve periods of non-use and that only when non-use falls outside the normal course of trade would it be sufficient to defeat an application for registration.
After reviewing the evidence the judge concluded that the hearing officer’s decision was reasonable and dismissed the appeal.
Comment
The judge said that without use a trademark cannot be registered. It remains to be seen how much longer this will remain to be the law in Canada.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.