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Trademarks - Procedures

. Miller Thomson LLP v. Hilton Worldwide Holding LLP

In Miller Thomson LLP v. Hilton Worldwide Holding LLP (Fed CA, 2020) the Federal Court of Appeal commented on some important procedures under the Trademarks Act:
[9] Section 45 of the Act provides a summary procedure for clearing the Register of Trademarks of registrations for marks that have fallen into disuse: Sport Maska Inc. v Bauer Hockey Corp., 2016 FCA 44, [2016] 4 F.C.R. 3 at para. 55. The section 45 process has been described as one for removing "“deadwood”" from the Register: Boutiques Progolf Inc. v. Canada (Registrar of Trade Marks), 164 N.R. 264, 54 C.P.R. (3d) 451. It is not intended to resolve contentious issues between competing commercial interests. Such issues are resolved through expungement proceedings under section 57 of the Act: Moosehead Breweries Ltd. v. Molson Cos. Ltd. et al. (1985), 11 C.P.R. (3d) 208 at 210, 63 N.R. 140 at 141.

[10] The threshold for establishing “use” in a section 45 proceeding is quite low: Woods Canada Ltd. v. Lang Michener, 1996 CanLII 17297 (FC), [1996] F.C.J. No. 1701, 71 C.P.R. (3d) 477 (F.C.T.D.). Evidentiary overkill is, moreover, not required: Union Electric Supply Co. Ltd. v. Registrar of Trade Marks, [1982] 2 F.C. 263 (1982), 63 C.P.R. (2d) 56 (F.C.T.D.). That said, sufficient facts must still be adduced to allow the Registrar of Trademarks (the Registrar) to find use of a trademark in association with each of the registered services during the relevant period.

[11] Subsection 45(1) of the Act authorizes the Registrar, either on her own initiative or in response to a request made by a third party, to issue a notice requiring that the owner of a registered trademark show use of the mark in Canada in the three years immediately preceding the date of the notice (the relevant period). In accordance with subsections 45(3) and (5) of the Act, a trademark registration may be expunged if the owner fails to show use in Canada within the relevant period, or the existence of "“special circumstances”" justifying the non-use of the mark.

[12] Pursuant to subsection 56(1) of the Act, an appeal lies to the Federal Court from a decision of the Registrar in a section 45 proceeding, and additional evidence may be filed on the appeal in accordance with subsection 56(5) of the Act.


[27] Hilton appealed the Registrar’s decision to the Federal Court through the statutory appeal mechanism provided for in subsection 56(1) of the Act. As it was entitled to do, Hilton submitted additional evidence in support of the appeal in the form of a further affidavit from Mr. Eriksen, as well as an affidavit from Linda Elford. Ms. Elford is a trademark searcher and her evidence was directed at the state of the "“Wares and Services Manual”" maintained by the Canadian Intellectual Property Office (the Manual).

[28] The Federal Court observed that, in determining whether an appellant has established use of a trademark, the Court must conduct a de novo review of a Registrar’s decision where additional evidence is adduced on the appeal that would have materially affected that decision: Mattel, above at paras. 35, 37; John Labatt Ltd. v. Molson Breweries, 2000 CanLII 17105 (FCA), [2000] 3 F.C. 145, 252 N.R. 91 at para. 29 (C.A.), leave to appeal to SCC refused, 27839 (14 September 2000). Where, however, the Registrar’s findings of fact or treatment of issues are not affected by the new evidence, the reasonableness standard of review applies.


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