Southcott J.
Paul D. Gornall for Limbic Media Corporation (Applicant)
Mark Robbins for Lutron Electronics Co., Inc. (Respondent)
Limbic Media Corporation v. Lutron Electronics Co., Inc., 2024 FC 2041
December 16, 2024
Introduction
This is an unsuccessful appeal under Section 56 of the Trademarks Act (the “Act”) by Limbic Media Corporation (the “Applicant”) following a Section 45 non-use cancellation proceeding for the Applicant’s mark (the “Mark”). The Applicant sought an order to set aside the Registrar’s decision and maintain the Mark’s registration.
The main issues addressed by the Court were: (1) what the applicable standard of review for this appeal should be, and (2) if the standard of review entitled the Applicant to a de novo hearing, would the new evidence establish use of the Mark during the relevant period (i.e., the three years preceding the date of the Registrar’s Section 45 Notice).
The Court set out the legal framework for appeals under Section 56 of the Act, which is the appellate standard of review. Questions of mixed fact and law have a standard of palpable and overriding error, whereas questions of law have a standard of correctness. However, where an applicant introduces new evidence in an appeal, a different standard of review may apply. For instance, if the new evidence is found to be material, such that it would have a material effect on the Registrar’s decision, then a correctness standard of review applies to the portion of the decision relating to the new evidence. Notably, such appeals are in the nature of a de novo hearing.
In this case, the Applicant filed an additional affidavit containing evidence of invoices and sales. Accordingly, the Court found that this evidence met the materiality ground necessary to invoke the correctness standard of review, because it contained evidence which was not on the record in the original non-use cancellation proceeding, and the Court treated the appeal as a de novo hearing.
Regarding establishing use, the Applicants relied on establishing use of the mark by way of association under Section 4 of the Act.
However, there was some disagreement regarding whether the new evidence supported use, and whether the Mark was so strongly associated with the goods that the Applicant’s customers were aware and given notice of that association. Ultimately, the Court was not persuaded by the Applicant’s argument that its customers were aware of the Mark in association with the registered goods during different points of customer interactions (e.g., during design and installation processes of the registered goods). The Court clarified that to rely on this type of trademark use, notice of the mark’s association with the goods must occur at the time of transfer.
Conclusion
Ultimately, the Court found that the Applicant had not met its burden regarding establishing the evidence of use during the time of the transfer and therefore could not rely on this type of trademark use to maintain the registration.
Prepared by Julianna Felendzer, Riches, McKenzie & Herbert LLP