In a decision by Southcott J., the Federal Court agreed with the Registrar of Trademarks (the “Registrar”) that Limbic Media Corporation (“Limbic”) did not establish continuous use of its registered trademark and ordered the registration expunged. There was no evidence confirming that Limbic’s trademark was sufficiently associated with its goods at the time the goods were sold.
Limbic Media Corporation v. Lutron Electronics Co., Inc., 2024 FC 2041
Background
Limbic is a Canadian corporation and the registered owner of the wordmark, AURORA (the “Mark”), which has been registered since January 1994, in association with “electric lighting fixtures” (the “Registered Goods”). These fixtures produce light shows based on music, and are often part of custom lighting assemblies that are primarily used by events managers or business improvement associations.
At Luton Electronics Co., Inc.’s (“Luton”) request, the Registrar issued a notice to Limbic on September 21, 2021 under section 45 of the Trademarks Act, RSC 1965, c T-13 (“TMA”), requiring Limbic to show use of the Mark in Canada “in association with the Registered Goods at any time within the three-year period immediately preceding the date of the Notice” (the “Relevant Period”).
“Use” in association with goods is defined in section 4(1) of the TMA, as follows;
“4 (1) A trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.”
When a notice under section 45 is received, the recipient must provide evidence showing use of the Mark during the Relevant Period for all goods or services specified in the registration, or alternatively, must provide the date of last use, and a reason for non-use. In response to the notice, Limbic provided a statutory declaration from its CEO (“Love Declaration”), attaching screenshots of both active and archived portions of Limbic’s website.
Limbic’s evidence was found by the Registrar to be inadequate to demonstrate use during the Relevant Period. Although the Love Declaration included statements that sales of goods had occurred, it lacked factual particulars to support Limbic’s claim. Specifically, Limbic’s evidence failed to show that the Mark was used on the goods themselves or on their packaging, or that customers could make purchases through Limbic’s website where the Mark was allegedly used.
Issues
There were two issues on appeal. The first was what standard of review should apply to this appeal in view of Limbic’s new evidence that it filed on appeal. The second was whether, if Limbic was entitled to a de novo hearing, the new evidence tendered established use of the Mark in relation to the Registered Goods during the Relevant period.
Analysis
On the first issue, while Lutron argued that the appeal should be dismissed, it accepted the materiality of the new evidence tendered by Limbic, and agreed that the correctness standard should apply. The Court agreed with Lutron’s concession, on the basis that the new evidence included Internet evidence, sales reports, and invoices, thereby remedying a deficiency identified in the evidence before the Registrar. The second issue was therefore the primary focus of this appeal.
The appeal centred on what constitutes “use” pursuant to section 4(1) of the TMA in association with goods only. The threshold to establish this use in a proceeding under section 45 is low, and the burden to adduce evidence to this effect is on Limbic. The parties agreed that use on goods could be demonstrated in three ways, of which the third was at issue in this appeal;
- By showing the Mark on the goods themselves;
- By showing the Mark on packaging in which the goods are distributed; or
- By showing an association between the Mark and the goods that is strong enough for an association to form for the person to whom the goods are transferred.
Limbic argued that the combination of “Internet evidence, invoices, and sales reports, as appended to and explained in the [Love] Declaration and the [New] Affidavit, demonstrates sales of electric lighting fixtures to Limbic’s customers during the Relevant Period and that the Mark was, at the time of transfer of title or possession, so associated with those goods that notice of that association was thereby given to the customers.” The Court agreed with the first part of Limbic’s argument, namely that Limbic’s new evidence, including invoices and sales reports, clearly established sales of the Registered Goods during the Relevant Period.
The primary issue, therefore, centered on the second part of Limbic’s argument; whether, at the time of transfer of the Registered Goods, the Mark was “so associated with the goods that its customers were then given notice of that association.”
Limbic argued it had established the required association in three ways. First, its internet evidence, which included its website, Facebook page, and media publicity were all “replete with the use of the word AURORA in connection with its lighting systems”, thus supporting Limbic’s contention that the Mark was associated with the goods to a degree that its customers were given notice of the association. Second, Limbic also relied on invoices issued to customers during the Relevant Period that displayed the term “Aurora.” Third, Limbic argued that the Mark was associated with its goods before and after purchase, during installation of the goods, and throughout the products’ use by its customers. That is, transactions between Limbic and its customers last longer than a discrete sale and exchange of goods, thereby prolonging the exposure that customers had to the Mark.
The Court did not find Limbic’s arguments convincing, mainly because the Mark was not used in association with the goods at the time of their transfer to customers. First, Limbic’s internet evidence was not found to be determinative. Lutron argued, citing Pallotta J.’s discussion in Sherzady v Norton Rose Fullbright Canada LLP/s.e.n.c.r.l, s.r.l, 2022 FC 1712, that the required association between a trademark and a vendor’s goods only occurs when the “purchase takes place through the website.” Limbic provided no evidence to this effect. At most, Limbic’s evidence established that the goods were advertised on its website with the Mark, but that does not, on its own, establish “use”.
Second, there was no evidence that any of the invoices in evidence accompanied the goods at the time of their transfer. For instance, in cross-examination, Limbic’s witness testified that these invoices were actually indicative of a request for a deposit from the customer to initiate a transaction.
Third, while the Court accepted that Limbic’s transactions might occur over a longer timespan, the goods had to have been transferred at some point during that transaction. There was no evidence that the Mark was used at that point in time. As well, the Court noted that Limbic referenced no authorities to support its submission that the Mark could be used at any point in time. Instead, the Court reiterated that subsection 4(1) of the TMA requires that notice of the association must occur “at the time of such transfer” of the goods in question.
Conclusion
Given Limbic did not establish the use of the Mark in association with the Registered Goods during the Relevant Period, the appeal was dismissed with costs awarded to Lutron.