The new submissions were significant enough to potentially influence the original decision: court
The Federal Court has overturned the Registrar of Trademarks' decision to expunge a trademark registration after the applicant presented new evidence of use.
In IBS Inc. v. Mint Green Group Inc., 2024 FC 606, Isaac Bennet Sales Agencies Inc. had appealed the Registrar's decision to expunge its trademark registration for the mark "MINT" due to an alleged failure to file evidence of use during the relevant period from November 9, 2019, to November 9, 2022. The registrar's action came after a notice was issued at the respondent's request, Mint Green Group Inc.
The appeal brought forward by Isaac Bennet was supported by an affidavit from Paul Brener, CFO of Isaac Bennet. Brener's affidavit detailed the use of the mark in association with the sale of clothing and accessories through Canadian retail stores operated by Fairweather. Brener's affidavit provided substantial evidence of the mark's use on products like toques, boots, slippers, and belts sold to consumers within the specified timeframe.
The Federal Court's analysis hinged on the appropriateness of the standard of review and the materiality of the new evidence presented during the appeal. Upon examining the evidence, the court determined that the new submissions were significant enough to potentially influence the registrar's original decision, leading to a review of the case on a correctness standard.
The court was persuaded that the sales and display of the mark on specific items during the relevant period were sufficient to meet the threshold for maintaining the trademark registration. The court stressed the importance of evidentiary detail in trademark disputes, particularly in proving the use of a mark in association with registered goods.
Despite Isaac Bennet's success in the appeal, the court awarded costs against them. This decision was influenced by the precedent that the appeal could have been avoided if the applicant had initially responded adequately to the registrar's notice.
