Proving a Trademark Licence


3082833 Nova Scotia Company v. Lang Michener LLP and Registrar of Trade-marks illustrates the importance of providing evidence of any licences in place when confronted with a summary expungement under section 45 of the Trademarks Act:  an evidentiary burden that is not difficult to meet.

3082833 Nova Scotia Company (“3082”) owned the registered mark ENTRE NOUS for use in association with “telecommunication services, namely long distrance telephone services”.  The mark was originally owned and used by 3362426 Canada Inc. (“3362”) carrying on business as Primus Telecommunications Canada Inc. (“PTC”).  3082 acquired the mark in the course of a reorganization and the mark was used by PTC, which had become 3082’s wholly owned subsidiary.

In response to a section 45 summary expungement, 3082 put forward invoices issued by PTC as evidence of use, but the Registrar concluded that they only referred to “Primus Canada” and there was no evidence that 3362 or 3082 had used the mark and no evidence of a licence.

On appeal, 3082 filed a further affidavit stating that PTC was licenced by 3082 to use ENTRE NOUS.  This was all the evidence the Court required and the appeal was allowed.  In its reasons, the Court addressed the section 45 requirement that the owner must show use, as well as section 50, the licensing provision, which allows an owner to show use where a trademark is used by a party that is licensed or authorized to do so by the owner and the owner retains control of the character or quality of the wares.

In considering 3082’s reliance on the licence, the Court briefly reviewed the case law regarding licences as evidence of use noting that it is not necessary to produce a formal licensing agreement to prove the existence of a licence under section 50 (Wells’ Dairy, Inc. v. U L Canada Inc. and TGI Friday’s of Minnesota, Inc. v. Canada (Registrar of Trade Marks), that a licensing agreement can be inferred from the facts and that the agreement need not be in writing (Cushman & Wakefield, Inc. v. Wakefield Realty Corp.); and that common control between companies is not sufficient proof (Cheung Kong (Holdings) Ltd. v. Living Realty Inc.) and evidence of control must also be adduced.