Digests

Trade-marks

Expungement

Appeal from Registrar of Trade-marks decision expunging trade-mark MOTO MIRROR & DESIGN—Registrar, acting under Trade-marks Act, R.S.C., 1985, c. T-13, s. 45, requiring applicant to show use of Moto Mirror trade-mark—Registrar satisfied with establishment of use but finding affidavit with respect to issue of applicant’s control over character, quality of products as required by Act, s. 50(1) to be ambiguous—Moto Mirror trade-mark ordered expunged under Act, s. 45(5)—Substantial additional evidence adduced on behalf of applicant—Whether evidence now sufficient to establish applicant’s control over character, quality of trade-marked wares—Respondent acknowledging sub-licensing of trade-mark permitted in Canada, arguing sub-licence agreements should be subject to terms, conditions of control in master licensing agreement—Agreements relied upon by applicant not as clear as those considered by Trade-marks Opposition Board in Sara Lee Corp. v. Intellectual Property Holding Co. (1998), 76 C.P.R. (3d) 71—Evidence of indirect control by applicant nevertheless sufficient to meet required threshold for purpose of meeting requirements under Act, s. 45—In context of sub-licensing, indirect control contemplated by Act, s. 50(1) requiring registrant be able to control product quality through exercise of contractual rights vis-à-vis intermediary, which, in turn, entitled to control product quality under contract with sub-licensee—So long as registrant effectively maintaining continuity of quality control under chain of contracts, no special conditions, language required—Applicant retaining right under licence agreement to control quality of products produced under Moto Mirror trade-mark, including right of annual inspection—Sufficient to establish indirect control by applicant as required by Act, s. 50(1)—Appeal allowed in part.

Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP (T-1020-09, 2010 FC 267, Barnes J., judgment dated March 9, 2010, 12 pp.)