On January 23, 2023, the Federal Court of Canada (the Court) issued its decision in Ecolab USA Inc v Smart & Biggar, 2023 FC 101, granting Ecolab USA Inc.’s (the Applicant’s) appeal and overturning the Trademarks Opposition Board’s (the Board’s) decision to expunge the trademark NAVIGATOR (the Mark).
The Mark was originally owned by Georgia-Pacific Chemicals LLC (Georgia-Pacific) in connection with “chemicals for use in the manufacture of paper products”. It was later transferred to the Applicant in July 2019, with effective date of the transfer being November 1, 2017. Upon request, the Registrar forwarded a Notice under section 45 of the Trademarks Act to Georgia Pacific, requiring proof of use of the Mark in Canada between May 22, 2016 to May 22, 2019. The Board found evidence of use of the Mark prior to November 2017 in association with relevant goods, but no evidence that the goods were sold to Canadian customers. Further, the Board found evidence of goods sold from November 2017 to May 2019 to Canadian customers, but was not convinced that the Mark was associated with the goods at the time of sale. On this basis, the Board held that the Applicant did not satisfy the requirements of section 45 and ordered the Mark be expunged.
The Applicant appealed the Board’s decision and filed new evidence in the form of two affidavits that the Applicant argued would demonstrate how Georgia-Pacific, and then Georgia-Pacific and the Applicant together, marketed, sold, and delivered products associated with the Mark to the major Canadian paper producer, Cascades, during the relevant time period.
Upon analyzing the evidence, the Court found use of the Mark in association with relevant goods. The affidavits showed that customers would have been aware that they were acquiring goods associated with the Mark, either at the time of purchase or delivery of the purchased products. The evidence also indicated that Cascades’ employees would refer to the Applicant’s product by the trade name, NAVIGATOR. Finally, the evidence demonstrated that Cascades took possession of the goods and there were actual sales.
Ultimately, the Court found use of the Mark during the relevant time and granted the appeal, quashing and setting aside the Registrar’s decision to expunge the Mark.
Summary By: Sharan Johal
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