In a decision by Pentney J., the Federal Court dismissed an appeal by Patagonia, Inc. (“Patagonia” or the “Applicant”) of a decision of the Registrar of Trademarks (the “Registrar”) to maintain the registration for the trademark, PATAGONIA, when used in association with “Beer”. The result of this decision is that the mark, Patagonia, can be used by Labatt in association with its beer products.
Patagonia, Inc. v. Labatt Brewing Company Limited, 2024 FC 920
Background
In 2019, the Registrar issued a notice pursuant to section 45 of the Trademarks Act (“Act”), at the request of the Applicant, requiring Labatt to show that PATAGONIA had been used in the previous relevant three-year period. Labatt produced two affidavits in response, one of which contained a photograph of a label had been cropped to remove certain information.
Questions in the Case at Bar
The Court sought to answer two main questions in this appeal. The first was whether the Registrar erred in inferring that Labatt was the manufacturer of the goods in question or controlled the manufacture of the goods and that the sales to the end consumer enured to its benefit. The second was whether the Registrar erred in finding the cropped label used as evidence of Labatt’s continued use of the PATAGONIA mark was adequate.
Analysis
Section 45 of the Act provides a summary procedure whereby trademarks that have fallen into disuse can be expunged, so that others can make use of them, provided they have not been used (as defined in section 4(1) of the Act) in the relevant three-year period prior to the date of the notice. Decisions made by the Registrar can be appealed to the Federal Court.
In this case, on the first issue, the Court held use of a trademark turns on the evidence and can be demonstrated either through direct sales of the goods or sales by intermediaries along a chain of distribution. The Court found that the evidence describing the corporate history, distribution chain and use of the trademark during the relevant period was sufficient to find that the use of the trademark in the distribution chain during the relevant period enured to the benefit of Labatt.
On the second issue, the Court held that the Registrar did not err in finding that Labatt’s decision to crop the image of its label was not done to deliberately hide information that may have otherwise been available. The Court accepted that the cropped image was somewhat unusual, but not otherwise problematic given that it shows the word Patagonia prominently displayed. The additional customer receipts in the evidence further supported the Registrar’s finding.