The Federal Court in The Black & Decker Corporation v. Method Law Professional Corporation, has reversed a decision of the Registrar of Trade-marks that unreasonably elevated the standard of proof required in a section 45 proceeding.
The appeal of the Registrar's decision was brought by Black & Decker ("B&D") after the Registrar found that B&D's evidence with respect to the use of its PIRANHA trade-mark in association with power saw blades was ambiguous, and ordered that part of the registration to be deleted. The evidence before the Registrar was contained in the affidavit of Mr. Weston, the Commercial Marketing Manager with B&D Canada. His evidence included representative copies of blade sets containing the mark, sample Canadian price lists for the years 2011-2014 listing PIRANHA branded wares for sale, invoices showing sales of circular saw blades to Canadian retailers (but no invoices for power saw blade), and printouts from retail websites amazon.ca and walmart.ca displaying the circular and jigsaw blades available for purchase in Canada. On its application before Justice Diner, B&D submitted new evidence from Mr. Weston, consisting of Canadian sales invoices for power saw blades from the years 2011-2014.
Justice Diner acknowledged that a deferential reasonableness standard applied to section 45 decisions, unless additional evidence was adduced on appeal that would have materially affected the Registrar's findings of fact or exercise of discretion, in which case the standard was one of correctness. He also noted that the burden of proof on the owner of a mark is not an onerous one: the owner "must simply establish a prima facie case of use to satisfy use as defined under the Act."
Justice Diner concluded that the Registrar's decision to delete the mark was unreasonable. The applicant was not required to provide invoices to establish use. If there had been any ambiguity as to use, the Registrar should have resolved the ambiguity in favour of the owner, given the evidence before the Registrar. Any ambiguity on the record before the Registrar was resolved by the new evidence on appeal which included actual invoices for the power saw blades during for sales during the period 2011-2014. In the result, Justice Diner ordered the Registrar to reinstate the registration.
A copy of the decision may be found here.
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