Federal Court Of Canada Partially Grants Appeal In Non-Use Cancellation Proceeding Concerning Horse Tack

On February 7, 2023, the Federal Court of Canada (the Court) issued its decision in Master Saddles Inc v Moffat & Co, 2023 FC 179, in which it partially granted Master Saddles Inc.’s (Masters Saddles) appeal of a section 45 decision of the Trademarks Opposition Board (the Board).

Masters Saddles owns trademark registrations for MASTER SADDLES CANADA and a corresponding Design Mark (collectively, the Marks).  The Marks were the subject of non-use cancellation (section 45) proceedings, in which the Board amended the lists of goods and services associated with the Marks to delete all goods and services, except for the following services: “sale of horse tack, namely saddles, breast collars, headstalls, and saddlebags; sale of briefcases.”  Masters Saddles commenced the present application appealing the Board’s decision, seeking reinstatement of the Marks in relation to certain goods and services. 

On appeal, Masters Saddles filed new evidence. The Court was satisfied that the new evidence demonstrated that goods bearing the Marks were shipped to customers in Canada and that the customers in fact received such goods.  However, the Court found that while Masters Saddles offered briefcases for sale during the relevant period, none were, in fact, sold.  As a result, the Court was not satisfied that there was evidence of use of the Marks in association with briefcases and did not amend the registrations to include briefcases among the list of goods.

With respect to use of the Marks in association with services, the Court was satisfied that the new evidence demonstrated use of the Marks in association with all enumerated services.  Masters Saddles requested that the Court order the amendment of the registrations to refer to the sale and trade of such items, asserting that since “trade” was synonymous with “sale” and that “sale and trade” referred to the same activity, both should be reflected in the registrations. Because there was no evidence before the Court of any trade of the goods in question (i.e., goods in exchange for services or other goods, as opposed to goods in exchange for money), the Court refused to amend the registrations to include trade services.

The Court granted the appeal in part, allowing registration of the Marks to be amended as requested by the Applicant, other than relating to briefcases and trade services.

Summary By: Sharan Johal