• Decision to Expunge Trademark Pursuant to Section 45 Quashed By Court
  • January 11, 2017 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Bauer Hockey Corp. v. Easton Hockey Canada, Inc., 2016 FC 1373

    This is an application for judicial review of a decision of the Trademarks Opposition Board (Board) in which the Board expunged Bauer's Trademark (Bauer's Skate's Eyestay Design, registered for use with ice skates). The Board decision related to an expungement proceeding pursuant to section 45 of the Trade-marks Act. Easton did not file written submissions nor appear at the hearing.

    The Court noted that the Board first considered whether the Trademark as used was the Trademark as registered, and accepted Easton's evidence that it had not used as registered because the Trademark as used included the word "BAUER". As a result, the Board found that the Trademark should be expunged. Although not necessary, the Board also determined that the Trademark was used in the registered owner's normal course of trade but that the use had not enured to the registered owner during the Relevant Period.

    The Court began its decision by finding that the new evidence would have materially affected the Board's findings and thus, the decision should be reviewed on a standard of correctness. Bauer made a number of arguments why the Trademark as used is similar to the Trademark as registered, which were accepted by the Court. This finding was made on the basis of two additional affidavits, including a survey on the perception of the Trademark by consumers. The Court thus concluded that the Board's decision does not meet the standard of correctness.

    With respect to the issue of whether the use of the Trademark enured to the benefit of the registered owner, the Court again had additional evidence relating to licensing agreements between the parties. The Court found that "when a licensing agreement contains a control provision, it is presumed that the registered owner of the trademark exerted direct or indirect control over the character and quality of the products". In this case, the licensing agreement contained a control provision. The Court quashed the Board's decision, without costs.