In Transformers Manufacturing Company Pty Ltd and H & F S.r.l., 2023 TMOB 149 (CanLII), the Trademarks Opposition Board refused to expunge a registered trademark following the issuance of a Notice under Section 45 of the Trademarks Act requiring the registered owner to show use of the registered trademark in the three-year period immediately preceding the date of the Notice (the “relevant period”). This was despite evidence showing use by the registered owner of a varied form of the registered trademark.
The summary expungement proceeding was brought against Canadian trademark registration No. TMA992,391 for the trademark TMC & Design shown below (the “registered trademark”) registered in association with electric transformers:
The registered trademark included a colour claim:
Colour is claimed as a feature of the trade-mark. The letters TMC are black on a white background. The thick stripes at the top and bottom of the mark are red. The thin stripes above the letters TMC, from the bottom to the top, are red, white, green and white, and the thin stripes below the letters TMC, from the bottom to the top, are white, red, white and green.
The Board reviewed evidence showing use of a varied form of the registered trademark during the relevant period. In particular, the evidence showed that the owner or licensee had used the following variant:
In applying the relevant tests, the Board found that the registered mark remains recognizable in the variant, in spite of the differences between the forms (i.e. with the variant containing red stripes, lacking green stripes and including further descriptive text). In comparing the registered trademark and variant in use, the Board held that the registered trademark remains recognizable and the dominant feature of the trademark is preserved The Board noted that the “TMC” between red stripes is preserved, which, given the prominence of the red stripes in the variant, the lack of green stripes and the descriptive words between the stripes are not dominant features.
The decision is also notable for a finding that use of different trademarks during the relevant period is not relevant as there is nothing to prevent a party from using multiple trademarks. The Board also noted that submissions addressing licensed use and chain of title issues outside the relevant period are not relevant for the purposes of a summary expungement proceeding and will be disregarded.