On October 28, 2022, in Clark Wilson LLP v 7299362 Canada Inc., 2022 FC 1478, the Federal Court (the Court) granted an appeal brought by Clark Wilson LLP (the Applicant, acting as trademark agent to Amazon Technologies, Inc.) of a Trademarks Opposition Board (TMOB) decision that upheld the Respondent’s, 7299362 Canada Inc., registration for the trademark ALEXA TRANSLATIONS (the Mark).
On September 5, 2018, at the Applicant’s request, the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act (the Notice) to the Respondent. The Notice required the Respondent to furnish an affidavit showing it has used its Mark in association with its registered goods and services within the three years immediately preceding the Notice. Following an oral hearing, the TMOB preserved the registration for certain services in association with the Mark.
The Applicant appealed TMOB’s findings with respect to three of the services, namely corporate finance services, web development services and software as a service translation services (collectively, the Disputed Services). The Applicant argued that the TMOB erred in law by failing to determine the ordinary commercial meaning of the Disputed Services as required under paragraph 30(2)(a) of the Trademarks Act. The Applicant also argued that the TMOB erred in taking the Respondent’s statements “at face value”, thereby lowering the burden of proof.
In reviewing the TMOB’s decision, the Court found that there is no obligation placed on the TMOB to define explicitly each service in ordinary commercial terms. The Court also held that the Respondent’s affidavit contained statements supported by evidence as to how the Respondent used the Mark, meaning that the TMOB committed no error in law by accepting those statements.
On the issue of whether the TMOB erred in its factual findings that the Respondent established use with respect to the Disputed Services, the Court concluded that the TMOB committed a palpable or obvious error when finding that the Respondent used the Mark in connection with corporate finance services. The Court stated that while services in the section 45 context were to be construed broadly, the term “corporate finance” could not be so broad as to cover anything related to business and money. With respect to the other two Disputed Services, the Court found that the TMOB committed no overriding and palpable error in its factual findings concerning the use of the Mark.
The Court granted the application with respect to corporate finance services, and dismissed the application with respect to the remaining two Disputed Services.
Summary By: Sharan Johal
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