Registrar Ordered to Reinstate Registration on New Evidence of a Licensing Agreement
3082833 Nova Scotia Company v. Lang Michener LLP and Registrar of Trade-marks 2009 FC 928 (Kelen J.)

September 17, 2009

Mr. Daniel Cappe, for the Appellant, 3082833 Nova Scotia Company
No Appearance for the Respondent, Lang Michener LLP

This was an appeal brought by 3082833 Nova Scotia Company to set aside the Registrar`s decision to expunge the registration for ENTRE NOUS. The registration is currently owned by 3082833. It was previously owned by 3362426 Canada Inc., carried on business as Primus Telecommunications Canada Inc. (“PTC”).

The expungement proceeding was initiated by Lang Michener LLP. As evidence, 3082833 filed an affidavit by the Vice President of PTC. The affidavit stated that PTC was a wholly owned subsidiary of 3082833. The affidavit attached invoices issued by “Primus Canada” to its customers. The Registrar held that, while the trade-mark ENTRE NOUS was sufficiently used, such use was not by the owner 3082833. The invoices referred to “Primus Canada”.  There was no evidence that PTC used the mark or that PTC has been licensed by 3082833 to use the mark. As a result, the Registrar expunged the trade-mark.

On appeal, 3082833 filed a new affidavit, which stated that PTC had been licensed by 3082833 to use the trade-mark ENTRE NOUS. The affidavit further stated that 3082833 had direct or indirect control of the character and quality of the services performed and advertised with the licensed mark.

Mr. Justice Kelen held that the standard of review of a Registrar`s decision when new evidence is adduced is correctness. Based on the new evidence filed, the Court concluded that there was a licensing agreement and that 3082833 did maintain control of the use by PTC of the ENTRE NOUS trade-mark. The Court made this finding on the fact that 3362426 Canada Inc., carried on business as PTC, was the predecessor in title to 3082833 and that there was no reason to conclude that 3082833 would not continue to maintain control of PTC after a corporate reorganization. The Court also inferred from the evidence that PTC carried on business as “Primus Canada”, as shown in the invoices.

The appeal was allowed.  The Court ordered the Registrar to reinstate the registration.

By Hung Nguyen, Deeth Williams Wall LLP