Grapha-Holding AG v. Illinois Tool Works Inc

Grapha-Holding AG v. Illinois Tool Works Inc

The Registrar's conclusion that the mark was used during the relevant three-year period was unreasonable because the affidavit lacked the required precision and did not demonstrate that brochures accompanied transfers of the wares during the relevant period; therefore the registration must be expunged.

Source-derived case information.

Citation
2008 FC 959
Parties
Applicant: Grapha-Holding AG; Respondent: Illinois Tool Works Inc.
Court
Federal Court
Jurisdiction
Canada
Judgment Date
20 August 2008
Procedural Posture
Appeal Under Section 56 of the Trade Marks Act / Judgment on Appeal; Registrar Decision Reviewed and Set Aside
Outcome
Appeal allowed; Registrar decision set aside; registration expunged in full.
Legal Topics
Section 45 Use Affidavits, Use in Association (s.4), Standard of Review, Expungement of Registration, Evidence Sufficiency
Source Language
english
Trade Marks Intellectual Property Administrative Law Section 45 Use Affidavits Use in Association (s.4) Standard of Review Expungement of Registration Evidence Sufficiency

Source-derived case record

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Parties

Grapha-Holding AG

Applicant

Illinois Tool Works Inc.

Respondent

Procedural Posture

Appeal Under Section 56 of the Trade Marks Act / Judgment on Appeal; Registrar Decision Reviewed and Set Aside

Legal Issues

  1. 1 What is the appropriate standard of review of the Registrar's decision?
  2. 2 What type of evidence is required in proceedings under section 45 of the Trade-marks Act?
  3. 3 Does the evidence filed before the Registrar satisfy the requirements of the Act to show use during the relevant three-year period?

Ratio Decidendi

The Registrar's conclusion that the mark was used during the relevant three-year period was unreasonable because the affidavit lacked the required precision and did not demonstrate that brochures accompanied transfers of the wares during the relevant period; therefore the registration must be expunged.

Court Disposition

Appeal allowed; Registrar decision set aside; registration expunged in full.

Orders

  • Decision of the Registrar of Trade Marks dated November 1, 2007 is set aside.
  • Registration TMA 356,039 for the trade-mark MULLER is expunged in totality from the register and the Registrar is directed to amend the register accordingly.