Trademarks and New Evidence on Appeal

Iscada Inc. v Aventum IP Law LLP, 2019 FC 406

In this decision, the Federal Court (“FC”) confirms that when a registered trademark owner does not submit evidence to the Registrar of Trade-marks (“Registrar”) after receiving a notice of proceedings under s. 45 of the Trade-marks Act, it does not preclude the registered owner from submitting new evidence on appeal at the FC. [7] The FC concluded in this case that Iscada Inc. (“Iscada”)’s new evidence was admissible, and ultimately set aside the Registrar’s decision. [19]

Background

Iscada is the owner of the word mark iSCADA (TMA863235) in relation to SCADA remote terminal units (“the goods”), and in relation to providing the use of web-based SCADA software for the oil and gas well production industries (“the services”). [1-2]

The Registrar sent a Notice to Iscada, requesting that it provide evidence of use of the iSCADA mark in association with the goods and services during the three years immediately preceding the notice (between March 23, 2015 and March 23, 2018 – the “Relevant Period”). [3] However, for unknown reasons, Iscada only became aware of the Notice after the Registrar reached its decision to expunge the mark from the register. Iscada therefore applied to the FC to appeal and set aside the Registrar’s decision. [4-5]

New Evidence Permitted

The FC found that Iscada could present new evidence on this appeal, even if no evidence was before the Registrar. [7] This new evidence of use, which consisted of an affidavit of Mr. Ian Martin, a director at Iscada, was not cross-examined by the respondent Aventum IP Law LLP, and stood uncontradicted. The FC explains that “the facts asserted in the affidavit are consistent, coherent and largely corroborate by documentation”. [10] More specifically, Iscada demonstrated use of its mark on its website in association with its services, on business cards, on promotional materials, on a sign by the door of its place of business, on items of clothing provided to clients and potential clients as well as employees. [11] Iscada further demonstrated sales revenue during the Relevant Period for the goods in the amount of $486,786.83, and for the services in the amount of $785,170.70. [17]

The FC found this evidence was sufficient to establish use of the iSCADA mark in Canada during the Relevant Period. Consequently, the Registrar’s decision was set aside. [14, 19]

Commentary

It is interesting to note that in this case, Iscada did not provide evidence to the Registrar because it had not received the Notice (the reasons for this are unknown). While the FC accepted Iscada’s evidence on appeal – and noted that even if Iscada had received the Notice, the FC would still have been able to accept the new evidence. [7] This statement is consistent with the FC’s jurisprudence; see for instance our blog FCA Confirms Test To Admit New Evidence on Appeal From TMOB. However, trademark owners should not necessarily rely on the fact that they may produce new evidence on appeal: providing all the important evidence before the Registrar may help avoid lengthy proceedings. Trademark owners should make sure to obtain the services of able trademark agents and lawyers in order to protect their rights. Please contact a PCKIP professional for more information.

Iscada