Decisions of the Registrar of Trade-marks in Opposition and Section 45 Proceedings

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Section 45

Heenan Blaikie LLP v LVD Acquisitions LLC

Registration for OASIS maintained under section 45. The affiant attested that the registrant, sometimes trading as Tri-Palm International LLC, used the mark. The requesting party argued that LLC indicates a limited liability company and that the registrant was either misidentifying itself as another company or that two corporate entities are involved. However, the Registrar accepted the affiant's sworn statement that it is the registrant's trade-name, stating that whether LLC is permissible at law as part of a trade-name is not a relevant consideration in section 45 proceedings. Although advertising brochures may not show use in accordance with section 4 of the Act, photographs in the brochures of the wares bearing the mark serve to show how the mark was associated with the wares at the time that the evidenced sales took place

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Bereskin & Parr LLP v Chanel S de RL

Registration for COCO restricted to "jewelry; dresses; bags, namely handbags, purses and totebags; bathing suits; accessories, namely belts". The Registrar found that the evidence showed a clear demonstration of the chain of distribution of the wares in the normal course of trade. The wares originated with the registrant and were sold through distributors to retail customers (boutiques) in Canada. There was a continuity of actions that commenced with the owner through intervening transactions by agents or distributors to the ultimate consumer; thus, a sale through a distributor could be sufficient to satisfy the requirements of section 4(1) of the Act. However, the evidence did not show nor describe how the mark was marked on some of the wares. The evidence with respect to some of the wares showed use of a deviated version of the mark; the mark appeared intermingled with other elements to such an extent that it lost its identity and was unrecognizable. Whether such use was decorative or ornamental or served to distinguish the wares of the registrant from those of others were issues that were considered to exceed the bounds of section 45 proceedings

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Opposition

Canada Bread Company, Limited v Beverages Brands (UK) Limited

Opposition by Canada Bread Company, Limited to an application to register the trade-mark POMTINI & Design based on use of the mark in Canada in association with various alcoholic beverages. Opposition rejected. Confusion is not likely with the trade-mark POM as applied to food products in view of the differences that exist both between the wares and between the marks.
After the oral hearing, the opponent requested leave to amend its statement of opposition. In part, the amendment was to correct its section 16 pleading to refer to the correct subsection. The error in the pleading had been pointed out by the applicant in its written argument more than a year prior to the oral hearing. In addition, at the oral hearing the Member raised the issue of the incorrect pleading, but the opponent did not seek to correct it at the oral hearing. In its subsequent written request, the opponent did not indicate why it had not sought to correct the pleading earlier. Leave to amend was denied

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Reliant Web Hostings Inc v Tensing Holding BV

Opposition by Reliant Web Hostings Inc. to an application to register the trade-mark TENSING based on use and registration of the mark in the European Union (EU). Opposition rejected. The Registrar was of the view that the opponent's non-entitlement ground of opposition based upon the allegation that the applicant did not use the mark in any country of the EU was not properly pleaded. Such an allegation did not form the basis of a ground of opposition pursuant to section 38(2)(c) and 16(2)(a), (b) or (c) of the Act. The section 30(d) ground of opposition was dismissed for the opponent having failed to meet its initial evidential burden. The applicant had not adduced any evidence of use of the mark in the EU, or any other country or territory. The opponent had filed its own evidence, which in part comprised printouts from the applicant's website. While the Registrar agreed with the opponent that the evidential burden under such a ground was light and needed not meet the "clearly inconsistent" standard in this particular case, there remained an evidential burden on the opponent to establish facts which, if true, would have supported a finding that the applicant had not used the mark in the EU prior to the filing date. The applicant needed not evidence use and registration of the mark in the EU unless the opponent successfully met its evidential burden. The Registrar found that this particular case was clearly distinguishable from the Allergan case as the mark was clearly present on the applicant's website and it was the affiant's interpretation of what the applicant was offering or not offering in terms of wares and services that the opponent relied upon as supporting its allegation that the mark was not used in the EU at the material date

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