- Appeal Granted Where, Inter Alia, Findings Were Contentious Matters Unsuited to Resolution under the Summary Process of Section 45
- January 26, 2017 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
- Law Firm: Borden Ladner Gervais LLP - Ottawa Office
Mcdowell v. Laverana GmbH & Co. KG, 2016 FC 1276
The Federal Court granted an appeal of a decision of the Trademarks Opposition Board (TMOB). In the decision below, the TMOB was satisfied that the Appellant demonstrated use of the trademarks in relation to the registered "services", but not to the goods described in the registrations. The Respondent chose not to respond to the appeal.
The Court held that the new evidence offered in support of the appeal fully addressed the gaps identified by the TMOB. Apart from the new evidence, the Court also found that the TMOB's conclusion that the Appellant could not demonstrate use of her trademarks in association with the goods was not reasonable. The TMOB had made several contested findings regarding the evidence presented including, inter alia that the branded hang tags were essentially price tags, and therefore did not distinguish the goods but only the retailer's services. The Court noted that these determinations were contentious matters that were unsuited to resolution under the summary process envisaged by section 45 of the Trade-marks Act. Furthermore, the Court pointed out that hang tags and labels attached to the goods would ordinarily be sufficient to demonstrate that a trademark was displayed in association with the goods during the relevant period.
Lastly, the Court found that TMOB's conclusion that the ambiguity in the evidence should be resolved against the interests of the trademark owner was clearly wrong; any ambiguity in the evidence should have been resolved in favour of the Appellant, the registered owner.