Registrar's Decision Denying Third Request For Extension Of Time To File Evidence Upheld (Intellectual Property Weekly Abstracts Bulletin — Week of August 29 )

Trademark Decisions

Registrar's decision denying third request for extension of time to file evidence upheld Trademark Tools Inc. v. Miller Thomson LLP, 2016 FC 971

The Court dismissed Trademark Tools' appeal of the Registrar's decision denying its third request for an extension of time to file evidence. Pursuant to subsection 45(1) of the Trade-Marks Act, Trademark Tools was called upon by the Registrar of Trademarks to provide evidence of the use of its trademark within a specified time frame. Following two requests for extensions of time to file this evidence, the Registrar denied Trademark Tools' third request and expunged Trademark Tools' trademark for failure to show use.

While Trademark Tools' new affidavit was admissible at the Hearing, the Court found that it did not provide evidence of use. The Court also noted that the use of a variant of the trademark did not qualify as use. Apart from the use of the word and spelling of "logix", the updated mark did not maintain the dominate features of the registered trademark. Finally, the Court found that there were no special circumstances that would excuse non-use of the mark at issue. The appeal was dismissed.

Copyright Decisions

Repeat offender ordered to pay $100,000 in damages for selling five infringing copies of Microsoft software Microsoft Corporation v. Liu, 2016 FC 950

Microsoft has been awarded damages and an injunction against the unauthorized copying of several of its programs by the individual defendant. The Court awarded $50,000 in statutory damages, $50,000 as exemplary and punitive damages, $40,000 in costs, plus interest.

Prior to this application Microsoft and Mr. Liu had settled two separate instances of copyright infringement, one in 2010 and the other in 2012. The 2012 settlement included a court ordered injunction on consent. A third alleged instance occurred a month after the Federal Court had issued the injunction, but this does not appear to form part of this application.

The within proceeding related to further alleged infringements occurring in October 2013 and February 2015. In 2013 a private investigator visited a retail store where he was offered a computer containing Microsoft software that would not come with a DVD or a licence. The private investigator paid cash for the computer and obtained a business card from the proprietor, Mr. Liu.

In February 2015 the private investigator returned to the store and bought a refurbished computer with Microsoft software...