What Every Owner Of A Registered Canadian Trademark Needs To Know

A recent decision of the Federal Court in Live! Holdings, LLC1 is a worthwhile opportunity to consider some things that trademark owners should be doing to protect the investment they have made in their trademark portfolio.

The Trademarks Act (“Act”) protects trademarks, whether they are registered or unregistered. The range of remedies that is available for a registered trademark is broader than the range of remedies available for an unregistered trademark. However, under the Act there is a mechanism to remove trademarks from the register whenever the owner is unable to establish that it has been using the trademark. The concept is summed up in the statement “use it or lose it”2.

Section 45 of the Act provides that anyone may request the Registrar of Trademarks to require the owner to provide evidence of use of the trademark within the three years preceding the notice it receives. This three-year period is frequently referred to as the “relevant period”. If the Registrar issues the requisite notice, the owner of the registered trademark has three months within which to file affidavit of evidence showing use of the trademark, in the normal course of trade, with respect to each of the goods and services for which the trademark is registered.

The events as they unfolded in Live! Holdings is, sadly, not uncommon in many such cases. Live! Holdings did not respond to the notice. The Registrar notified Live! Holdings that its registration would be expunged due to the failure to file evidence of use. Again, Live! Holdings did nothing, and the appeal period expired. The registration was subsequently expunged. At this point, Live! Holdings finally took action, and its lawyers were able to obtain an order extending the time for it to appeal the Registrar's decision. Luckily, the appeal process for such a decision allows the trademark owner a right to file additional evidence. In most appeals, new evidence is admissible only if the evidence could not have been uncovered with reasonable diligence at the time of the original hearing.

It seems from the description in the decision of the evidence that Live! Holdings filed on the appeal that it may have been put together in some haste. The person who swore the affidavit was not an employee of Live! Holdings, but worked for an affiliated company. How that affiliate related to Live! Holdings was apparently not explained in his affidavit. His knowledge of Live! Holdings' business was also somewhat lacking...