North Brewing Company Ltd. v. DLA Piper (Canada) LLP
NORTH BREWING COMPANY LTD.
Law Firm / Organization
Ollip P.C.
DLA PIPER (CANADA) LLP

Background:

  • NBCL's trademark "North Brewing" was registered in 2015 for alcoholic beverages and promotional items.
  • DLA Piper requested cancellation for non-use under section 45 of the Trademarks Act.
  • NBCL missed the Registrar's notice due to an address change and failed to respond.
  • The Registrar decided to expunge the trademark, and NBCL appealed, presenting new evidence of use.

Issues:

  1. Is NBCL's new evidence material?
  2. Does the evidence show trademark use during the relevant period (May 31, 2018 - May 31, 2021)?

Legal Principles:

  • A trademark must be used within three years to avoid cancellation.
  • Use involves the mark being displayed on or associated with the goods.
  • Minor variations of the trademark are acceptable if the dominant features are maintained.

Court's Analysis:

  • The new evidence, including affidavits and photos, was material and would have impacted the Registrar's decision.
  • NBCL demonstrated trademark use for beer, ale, lager, mugs, bottle openers, key chains, and hats.
  • The variations did not mislead the public and maintained the dominant features of the trademark.

Conclusion:

  • The appeal was allowed, the expungement decision was set aside, and the trademark was maintained but amended.
  • Deleted items: malt liquor, beer glasses, shirts, jackets, and pants.

Judgment:

  • Registration No. TMA900498 for "North Brewing" is maintained for specific beverages and promotional items.
  • The provided document does not mention any specific monetary award, costs, or damages granted or ordered.
Federal Court
T-1881-21
Intellectual property
Appellant