Gesco Industries Inc. v. Sim & McBurney
T-2770-96
Wetston J.
30/10/97
5 pp.
Appellant requesting order setting aside Registrar of Trade-marks' decision under Act, s. 45 expunging registration for "Stainshield" mark on basis appellant had failed to submit any evidence of use in association with provision of services to public, as contained in registration-Registrar found use in association with carpets and rugs-Whether Registrar thereby exceeded jurisdiction-Appeal allowed-Object of Act, s. 45 to clear register of entries of trade marks not bona fide claimed by owners as active trade marks-Not to be used by opposing parties to resolve difficult questions of fact and law concerning conflicting commercial claims to use of trade mark-Not correct to say heavy onus on registrant to demonstrate use in Canada during relevant time: Value Village Markets (1990) Ltd. v. Canada (Registrar of Trade Marks) (1995), 60 C.P.R. (3d) 502 (F.C.T.D.)-Registrar need only consider whether appellant has provided some evidence of use of its trade mark during relevant time: Mantha & Associés/Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3d) 354 (F.C.A.)-Act, s. 45 designed to compel registered owner to demonstrate substantial and continuing interest in trade mark through provision of some evidence of use-Evidence herein clearly demonstrating appellant had interest in using mark in Canada, over relevant period-By going beyond determination of question of evidence of use, Registrar exceeded jurisdiction under s. 45, thereby committing error in law-Having accepted appellant's evidence of some use, Registrar should not have gone on to consider whether use in association with service rather than in association wares-In doing so, Registrar entered into consideration, beyond scope of s. 45, of validity of mark, and appellant's rights in it, as described in registry-Trade-marks Act, R.S.C., 1985, c. T-13, s. 45 (as am. by S.C. 1994, c. 47, s. 200).