Federal Court Sets Aside Decision of the Registrar to Expunge Mark

On April 4, 2019, the Federal Court issued its decision in Iscada Inc. v Aventum IP Law LLP, 2019 FC 406, setting aside a decision of the Registrar to expunge the iSCADA trademark registration from the Register.

Iscada owns a registration for the word mark iSCADA and is entitled to use the mark in relation to SCADA remote terminal units (Goods) and in relation to the use of web-based SCADA software for the oil and gas well production industries (Services) during the relevant period between March 23, 2015 and March 23, 2018.

On March 23, 2018, the Registrar, at the request of Aventum, a law firm, sent a Notice to Iscada requesting that it provide evidence of its use of the mark in Canada in association with the listed Goods and Services. It has been the practice for many years in Canada that law firms act as requesting parties in these cancellation proceedings on behalf of undisclosed clients. Aventum was probably acting for an undisclosed client in this case. 

Iscada failed to receive the notice from the Registrar, filed no evidence, and the Registrar expunged the iSCADA mark for non-use.  Iscada became aware of the Notice after the deadline had expired and after the Registrar had already reached her decision to expunge the Iscada mark from the Register. 

Iscada appealed the Registrar’s decision to the Federal Court where Iscada filed the required evidence stating that Iscada displayed the mark in advertising, on labels and stickers affixed to its Goods, and in performing the Services.  Finding the evidence to be credible and reliable, the Court concluded that there had been use of the iSCADA mark in Canada during the relevant period.  Accordingly, the Court set aside the decision of the Registrar and ordered that the registration be maintained.

Iscada sought costs against the law firm that requested the cancellation.  The Court declined to order costs as the firm advised the Court that it would not participate in the appeal immediately after receipt of the Appellant’s evidence. Iscada’s court costs were not incurred as a result of the conduct of the requesting party, but because it had failed to provide evidence of use to the Registrar.

Summary By: Michelle Noonan