What Evidence Of Use Is Required In A Section 45 Proceeding?

A recent decision by the Trademarks Opposition Board (the “Board”) sheds light on the nature of the evidence a trademark owner may rely upon when the Registrar issues a notice under section 45 of the Trademarks Act.

Section 45 allows anyone to request that a trademark registration be removed (i.e., expunged) from the Register of Trademarks on the grounds that it has not been used in Canada in association with the goods or services specified in the registration at any time during the preceding three-year period. When a section 45 notice is issued, the trademark owner has three months to provide evidence of use in the form of an affidavit or statutory declaration. In the absence of use, to avoid expungement, the owner may provide evidence that the non-use was due to “special circumstances.”

In Therrien Couture Joli-coeur S.E.N.C.R.L. v Oldcastle Building Products Canada, Inc./Les Matériaux de Construction Oldcastle Canada, Inc., the Board determined that the trademark owner in a section 45 proceeding had failed to meet the evidentiary threshold to show use for all but one of the registered goods. The trademark at issue – “LEXA” – had been registered in association with (1) concrete pavers, stones, retaining walls and edgers; and (2) concrete slabs. The owner’s affidavit contained no submissions in connection with retaining walls and edgers. Upon considering the evidence of use with respect to concrete pavers, stones, and slabs, the Board determined that the owner had only shown use of the LEXA trademark in association with concrete stones. The owner had provided invoices showing sales of concrete pavers, stones, and slabs, all displaying the LEXA trademark, but only the invoices for the concrete stones were dated during the relevant period. Evidence of use of the trademark for concrete stones was bolstered by photographs of these goods bundled and packaged on wooden pallets with the LEXA trademark displayed on the packaging. The Board rejected the owner’s evidence showing that the trademark was advertised in association with the goods. The Board noted that evidence of use of a trademark on goods required evidence showing that goods (bearing the trademark) were transferred, not evidence showing that such goods were offered for sale or advertised.

While the evidentiary burden on an owner to establish use in a section 45 proceeding is light, this decision serves as a caution for owners to provide more than bare assertions of use, to provide evidence of transfers as opposed to evidence of advertising, and to ensure that evidence of use is provided for each specific good. This decision demonstrates that evidence with respect to one specific good cannot generally serve to maintain multiple goods in a registration.

The decision may be accessed here.