• Failure to Provide Invoices Should Have Not Been Determinative in Section 45 Proceeding
  • October 27, 2016 | Authors: Jillian Brenner; Adrian J. Howard; Beverley Moore; Chantal Saunders
  • Law Firm: Borden Ladner Gervais LLP - Ottawa Office
  • Black & Decker Corporation v. Method Law Professional Corporation, 2016 FC 1109

    The Court allowed Black & Decker's appeal of the Registrar's decision amending its PIRANHA trademark to delete use of the Mark in association with power saw blades. The Registrar accepted that Black & Decker had shown use of the Mark on the registered wares and made the wares available for purchase to Canadians. However, the Registrar concluded that there was no proof of sale, and therefore no actual use of the Mark in Canada in respect of power blade saws. In this application, Black & Decker provided new affidavit evidence, attaching Canadian sales invoices for power saw blades from the Relevant Period.

    The Court concluded that the Registrar's decision was unreasonable based on the evidence originally presented at the hearing. The Court found that the evidence presented at the hearing showed that the Mark was indeed used in association with all the registered wares during the Relevant Period and that the Applicant's failure to provide invoices should not have been determinative. Rather, the Federal Court had previously recognized that it is not necessary to provide invoices in section 45 proceedings.

    The Court noted that any ambiguity as to use should have been resolved in favour of the registered owner, given the evidence provided by Affidavit. The Court also concluded that the new evidence presented at the appeal clearly establishes use under the Trade-marks Act, without any ambiguity whatsoever.