Summary of Section 45 Decision – VENOM
Main Takeaway
While technical deficiencies in an owner's evidence should not be a bar to a successful response to a section 45 notice, the evidence filed by a registered owner must still constitute "an affidavit or statutory declaration" in order to comply with section 45(1) of the Trademarks Act.
Background
At the request of Miller Thomson LLP (the Requesting Party), the Registrar of Trademarks issued notice under section 45 of the Trademarks Act in respect of Registration No. TMA859,751 for the trademark VENOM (the Mark), owned by Industrial Cycle Inc. (the Owner), and registered in association with the following goods: Bicycles and bicycle frames.
Decision
In Venom Powersports Ltd. and Industrial Cycle Inc., 2023 TMOB 186 (CanLII), the Registrar of Trademarks expunged the registration in respect of all goods.
Reasoning
In response to the Registrar’s notice, the Owner furnished a document signed and dated June 20, 2022, and bearing a jurat dated July 9, 2022. The Requesting Party submitted, and the Hearing Officer agreed that that the document did not comprise an affidavit or statutory declaration, as required by Section 45(1) of the Act, and was therefore not admissible as evidence in the proceeding.
While Section 45 proceedings are intended to be summary in nature, and mere technical deficiencies in an owner's evidence should not be a bar to a successful response to a section 45 notice, the Hearing Officer determined that the deficiencies in the Owner's evidence in this case were so fundamental that they amounted to more than mere technicalities, and instead rendered the Owner's evidence inadmissible. The Hearing Officer also noted that the Owner took no steps to try to correct the alleged issue (for example, by requesting a retroactive extension of time to file a corrected affidavit or statutory declaration) when it was made aware of the deficiencies by way of the Requesting Party’s written representations.
Despite the inadmissibility of the Owner’s evidence, the Hearing Officer still considered the contend of the document submitted, which appeared to allege that special circumstances existed which ought to excuse non-use of the Mark, and concluded that the reasons set out did not support such a claim since there was nothing to suggest that the lack of use owing to a transition following the sale of the Owner’s bicycle division was not a voluntary business decision, and which would not therefore amount to circumstances that were unusual, uncommon, and exceptional. The Owner also failed to meet the criteria required to establish whether any alleged special circumstances excused the period of non-use.
