Background:
IBS Inc. (the “Applicant”) appealed a decision of the Registrar of Trademarks expunging its Trademark Registration No. TMA846350 for MINT under section 45 of the Trademarks Act for failure to file any evidence of use of the mark in association with all of the following goods:
Lingerie, undergarments, bathing suits, scarves, hats, toques, gloves, mitts, socks, shoes, boots, slippers and sandals; handbags and purses, sunglasses; belts.
Decision
In IBS INC. v. Mint Green Group Inc., 2024 FC 606, the Federal Court accepted the Applicant’s new evidence of use in allowing the appeal to maintain the MINT registration in association with the goods of “toques, boots, slippers; belts”. Notwithstanding the Applicant’s success in the appeal, costs were awarded to Mint Green Group Inc. (the “Respondent”) because the appeal would have not been necessary if the Applicant had filed evidence in response to the initial section 45 notice.
Reasoning
Although the standard of review for appeals under section 56 of the Trademarks Act is generally the appellate standard of review, if an applicant leads new material evidence in an appeal of a decision of the Registrar of Trademarks, the Federal Court must review the portion of the decision to which the evidence applies on a correctness standard, as opposed to the more deferential standard of palpable and overriding error. Here, the Federal Court was satisfied that the new evidence submitted by the Applicant to show use of the mark in association with the goods of “toques, boots, slippers; belts” was material.
The Respondent raised a technical argument regarding concerns as to the corporate status of the originally named Applicant, Isaac Bennet. However, the Federal Court was satisfied that the mistake in the name of the Applicant in the appeal was not the type to cause a reasonable doubt as to the identity of the party, and the repeated references to “Isaac Bennet” as the current owner of the mark in the Applicant’s evidence did not undermine its credibility. Therefore, the Federal Court corrected the style of cause in the Judgment to use the Applicant’s current corporate name of IBS Inc. in accordance with Rule 77 of the Federal Courts Rules which permits the Court to allow such an amendment under Rule 76 notwithstanding the expiration of a relevant limitation period.
The Respondent also tried to argue that since the summary sales reports submitted by the Applicant relate to a period that extend 10 days beyond the end of the relevant 3-year period, the evidence does not establish sales within the relevant period, as it is possible that all the sales to which the reports relate occurred in the final 10 days. In contrast, the Applicant cited decisions where the Trademarks Opposition Board accepted evidence of sales figures that extended beyond the relevant period as demonstrating that at least some of those sales would have occurred within the relevant period.
Ultimately, the Federal Court found it to be unlikely that all of the sales in the Applicant’s sales reports occurred in the short 10-day period following the end of the relevant 1095-day period and upheld the registration in respect of the goods for which the Applicant had demonstrated use (toques, boots, slippers; belts).
