Don't Ignore that Notice!

November 12, 2013

The case Medos Services Corporation v. Ridout and Maybee LLP 2013 FC 1006 is an example of what happens when the owner of a registered trademark ignores a Section 45 notice. 

As a basic premise a registered trademark must be used in order to maintain those rights and a procedure exists under Section 45 of the Trade-Marks Act to weed out dead wood from the Register.  Upon receipt of such a notice the registered owner has three months to provide an affidavit or statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trademark was in use during Canada at any time in the previous three years and, if not, the date when it was last used and the reason why it has not been used since.

In this case the Registrar of Trade-marks, at the request of the respondent law firm, mailed a letter by Express Post to the registered owner.  No reply was received by the deadline and the trademark registration was expunged.

This case was the appeal of that decision.  The appeal is helpful in clarifying numerous items important to owners of registered trademarks including:

• The registered owner should ensure that the address on file at the Trade-marks Office is the correct and current address “ or appoint an agent and representative for service who has a current address.
• There is no basis for a submission that the registered owner not afforded natural justice in ignoring or not responding to the Section 45 letter as the law provides the owner a perfectly adequate recourse, an appeal under Section 56 of the Trade-Marks Act with new evidence.
• The appellant was self represented.  The Court and respondent did not rely on many procedural irregularities but did object to the appellant giving what was tantamount to evidence.  The Court noted the famous words of Lord Atkins in Evans v Bartlam [1937] AC 473, [1937] 2 All ER 646, at page 479:

The fact is that there is not and never has been a presumption that every one knows the law. There is the rule that ignorance of the law does not excuse, a maxim of very different scope and application.

• The evidence must show the connection between the alleged use and the mark in relation to the claimed wares or services.  On the evidence the Court observed:
  • a bill from a telecommunications service provider does not speak to the use of the mark if it does not show a connection to the mark,
  • correspondence with possible business partners that do not mention the mark do not show use of the mark,
  • rental receipts which do not show use of the mark do not provide evidence of use in advertising, and
  • correspondence relating to product maintenance that do not refer to the mark were found not to be evidence of use of the mark and even if they related to previously sold branded products (of which there was no evidence) there was no indication that sales of the branded products occurred in the prior three years

As a result the expungement decision was upheld on appeal.

The lesson for owners of registered trademarks is to take correspondence from the Trade-marks Office seriously.  Ensuring that an agent and representative for service are appointed can ensure that such important correspondence is received and acted on in a timely manner.

A second lesson for all registered trademark owners is to pay attention to the requirement for use of the mark in relation to the claimed wares or services and maintain evidence of such use in the event ever challenged.