Notable Trademark Decisions In 2020

• Published date: 29 January 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Goldman Sloan Nash & Haber LLP
• Author: Mr John McKeown

2020 has been a difficult year for trademark owners and their advisors. The pandemic has tested us all in profound and unexpected ways. We also continue to be faced with unacceptably long processing delays and waits for hearing dates in the Trademarks office.

Despite these impediments, there have been several notable decisions. Decisions have considered the status of official marks, what is required to show use of a mark in section 45 proceeding, standard of review in appeals under section 56, the onus in expungement proceedings under section 57 and the impact of a registered trademark on pre-expungement claims when the registered mark has been expunged by the court.

In Ontario (Energy) v. Quality Program Services Inc. 2020 FCA 53 the court referred to subparagraph 9(1)(n)(iii) of the Trademarks Act which prohibits the use of a mark that has been "adopted and used by any public authority in Canada as an official mark for goods and services" where "the Registrar has, at the request...of the...public authority...given public notice of its adoption and use". The court said the subparagraph allowed public authorities to seek recourse against those who use an official mark. In no way did the subparagraph confer on a public authority any protection against claims for trademark infringement or other claims under the Act. A public authority that uses a mark that is confusing with a registered trademark does so at its peril. Clear legislative wording would be required to effect a different result. An application for leave to appeal to the Supreme Court of Canada was dismissed.

In Pentastar Transport Ltd. v FCA US LLC 2020 FC 367 the Federal Court confirmed and reminded us that section 45 provides a simple, summary and expeditious method for removing from the register trademarks that have fallen into disuse. It is designed to clear dead wood not to resolve issues in contention between competing commercial interests, which should be resolved in expungement proceedings under section 57. The evidence put forward by a registrant need supply only facts from which, on balance, a conclusion of use may follow as a logical inference.

In The Clorox Company of Canada, Ltd. v. Chloretec s.e.c 2020 FCA 76 the appellant had filed additional evidence under subsection 56(1). The court said that the recent decision of the Supreme Court in Vavilov did not affect the standard of review to be applied when examining the Federal Court's finding in relation to the materiality of such new...