Registration for “UGGLY BOOTS” Maintained by Federal Court
Marty Sanders v. Smart & Biggar Intellectual Property & Technology Law, 2010 FC 73 (Snider, J.)

January 21, 2010

Neil Kathol for the Applicant, Marty Sanders
No one Appearing for the Respondent, Smart & Biggar

This was an appeal pursuant to Section 56(1) of the Trade-marks Act (the “Act”) from the decision of the Trade-marks Opposition Board (“TMOB”) that the trade-mark “UGGLY BOOTS” was to be expunged in accordance with Section 45(5) of the Act.

The registration by the Applicant for the trade-mark “UGGLY BOOTS” (the “Mark”) in association with ladies and men’s slippers, boots and shoes was filed on December 21, 1999. The Respondent commenced a review of the Mark pursuant to Section 45(1) of the Act on the basis that the Applicant had not used the Mark during the period from 2003 to 2006. Pursuant to Section 45(1) the Registrar on the written request by any person may give notice to the registered owner of a trade-mark requiring evidence that the trade-mark was in use in Canada, in association with the registered wares or services at any time during the three-year period immediately proceeding the date of the notice. 

The Applicant presented very little evidence in the proceeding before the TMOB. As a result, the TMOB found that the Applicant had not shown evidence of use of the Mark in Canada in association with the registered wares in accordance with Section 4 of the Act during the material period and held that the Mark was to be expunged. 

On appeal and pursuant to Section 56(5) of the Act the Applicant filed substantial new evidence consisting of affidavits which included invoices showing transfer of the wares with the Mark in Canada during the material period. The Federal Court held that the new evidence was sufficient to demonstrate “use” under Section 4 of the Act in the normal course of trade. Consequently, the registration for the Mark was ordered to be maintained on the register without amendment.

By: Rosamaria Longo, Lang Michener LLP