Brittsport Ltd. v. Pacific Rim Sportswear Co.
T-476-96
Lutfy J.
6/12/96
7 pp.
Appeal from Registrar's refusal to expunge respondent's trade mark "Brittania" for use in association with shirts, jeans-In 1993 Registrar issuing notice pursuant to Trade-marks Act, s. 45 requiring respondent to show trade mark "Brittania" still in use-Respondent producing 1990 invoices for sale of "Brittania" jeans-No other sales prior to notice, but order for "Brittania" jeans from Eaton's in 1994-Negotiations for that order beginning before notice issued-Two other orders nearing completion-Registrar deciding to maintain "jeans" on register as registrant continuing to market "Brittania" line, taking active steps prior to issuance of notice to recommence sale of "pants", order from Eaton's confirming registrant's serious intention to recommence such use-Amendments to s. 45, coming into force on January 1, 1994 and January 1, 1996, changing test to be applied-Subsequent to first amendment, Registrar announcing policy of applying new provisions to all s. 45 cases regardless of when commenced-In 1995 decision, Registrar determining amendments could be applied retroactively without causing prejudice to requesting party-Adopting similar view concerning retroactivity of January 1, 1996 amendments-Appeal dismissed-Retroactive application of s. 45 possibly prejudicial as registrant may be prejudiced by statutorily prescribed relevant period-While evidence of use subsequent to issuance of notice considered in assessing contemporaneous use under s. 45 prior to January 1, 1994 amendments, not within two-year period under legislation enacted in 1994-Appropriate to consider appeal on basis of law in force when Registrar's notice issued in 1993, but as disposition same under new provisions, not necessary to rule on Registrar's practice of retroactivity-Registrar's decision interpreted as finding either use or special circumstances justifying disuse-Sales after issuance of notice constituting relevant evidence of use where negotiations taking place prior to issuance of notice-Conclusion use of trade mark at time of issuance of notice reasonably open to Registrar on evidence-If January 1, 1994 amendments retroactive and subsequent use not considered, Registrar's decision not to expunge trade mark concerning "jeans" on basis of special circumstances for absence of use proper-Special circumstances justifying disuse must be weighed according to three criteria: length of time during which trade mark not in use; whether reasons for disuse beyond registrant's control; whether through period of disuse, serious intent to resume use shortly-Disuse in 1993 as result of circumstances beyond respondent's control-Negotiations with Eaton's prior to issuance of notice indicating serious intention to resume use-Trade-marks Act, R.S.C., 1985, c. T-13, s. 45 (as am. by S.C. 1993, c. 44, s. 232; 1994, c. 47, s. 200).