Federal Court Infers Intent To Abandon A Trademark In Expungement Proceedings. Can We 'Infer' That The Opposition Board 'Intends' To Follow The Court's Lead?

In Beijing Jingdong 360 Du E-Commerce Ltd. v. Yue Zhang [2019 FC 1293] (“Beijing Jingdong”), the Federal Court, per Justice Brown, ordered the expungement of the registered mark JD Design, after finding that the registration had been abandoned.

Expungement for abandonment is rare - parties generally use the less technical and often more efficient non-use cancellation proceedings set out in s. 45 of the Trademarks Act. Significantly, the Justice was prepared to infer an intention to abandon based on surrounding circumstances, and without any direct evidence from the registrant of its intent.

Will Justice Brown's reasoning have relevance in opposition proceedings, where lack of an intent, or more specifically a proposal, to use a mark, is relevant to the valid registration of that mark under the recent amendments to the Trademarks Act?

Registrations not in use may be expunged by the Registrar and the Federal Court

Trademark registrations can be expunged by the Registrar for non-use under s. 45 of the Trademarks Act (“Act”), or by the Federal Court for abandonment under s. 18 of the Act (which also includes several other grounds of expungement). Section 45 proceedings are far more common, since these proceedings are started with a simple written request to the Registrar (accompanied by the necessary fee) made any time after the third anniversary of registration. On receipt of such a request, the Registrar will give notice to the registrant that it must show use of the mark in Canada for all registered goods and services. The onus is on the registrant to file evidence of use of the registered mark in the three years prior to the date of the notice, or if there is no use, evidence of special reasons to excuse non-use. These proceedings take place before the Opposition Board, acting for the Registrar. The requesting party may not file its own evidence and cannot cross-examine the registrant on its evidence. Written representations may be filed by both parties, and while an oral hearing is possible, it is not required. There is only one issue - whether the mark is in use in Canada, or not. These proceedings are intended to be summary, although many prove not to be.

Seeking expungement of a registration for abandonment under s. 18 of the Act is relatively rare. The procedure is commenced by application to the Federal Court, with the ability of both parties to file evidence and conduct cross-examinations. In addition, both the criteria at issue...