Attraction Inc. v. Ethika Inc.

Attraction Inc. v. Ethika Inc.

The Registrar correctly found no admissible evidence of use on the original record, but the court admitted fresh evidence under s.56(5) showing genuine commercial use of the mark during the relevant period (invoices, sales reports, tags, catalogues); on that basis the registration was not 'dead wood' and the Registrar's expungement was set aside, so the registration is maintained.

Citation
2018 FC 1136
Parties
Applicant: Attraction Inc.; Respondent: Ethika Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
9 November 2018
Procedural Posture
Appeal Under Section 56 of the Trade Marks Act From Registrar Decision to Expunge Registration / Decision on Appeal (order and Reasons)
Outcome
Appeal granted; Registrar's expungement decision set aside; registration maintained
Legal Topics
Use Requirement Under S.45 of the Trade Marks Act, Registrar Expungement of Trade Mark, Admissibility of Fresh Evidence on Appeal Under S.56(5), Evidence of Commercial Use, Costs Discretion
Source Language
English
Intellectual Property Trade Marks Administrative Law Federal Court Procedure Use Requirement Under S.45 of the Trade Marks Act Registrar Expungement of Trade Mark Admissibility of Fresh Evidence on Appeal Under S.56(5) Evidence of Commercial Use +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 3 Authorities cited 5 Party arguments 2
Sign in to unlock

Parties

Attraction Inc.

Applicant

Ethika Inc.

Respondent

Procedural Posture

Appeal Under Section 56 of the Trade Marks Act From Registrar Decision to Expunge Registration / Decision on Appeal (order and Reasons)

Legal Issues

  1. 1 Whether the registered owner established use of the trade-mark during the three year period specified in the s.45 notice
  2. 2 Whether fresh evidence may be admitted on appeal under s.56(5)
  3. 3 Whether the Registrar erred in finding no use

Ratio Decidendi

The Registrar correctly found no admissible evidence of use on the original record, but the court admitted fresh evidence under s.56(5) showing genuine commercial use of the mark during the relevant period (invoices, sales reports, tags, catalogues); on that basis the registration was not 'dead wood' and the Registrar's expungement was set aside, so the registration is maintained.

Court Disposition

Appeal granted; Registrar's expungement decision set aside; registration maintained

Orders

  • The appeal is granted
  • The Registrar's decision dated September 19, 2017 to expunge Canadian Trade-mark No. TMA 790,889 is set aside