Markwell Clarizio LLP

Red Maple Manufacturing Inc. v. Red Maple Bio Inc. 2024 FC 817

On May 29, 2024, the Federal Court (Whyte Nowak J.) granted Red Maple Manufacturing Inc.’s (the “Applicant”) appeal pursuant to subsection 56(1) of the Trademarks Act. The Applicant appealed a decision from the Trademarks Opposition Board (“the Board”) ordering the removal of certain goods from the Applicant’s Trademark Registration.

Red Maple Manufacturing Inc. v. Red Maple Bio Inc. 2024 FC 817

The Applicant is the owner of a registration for a design trademark that was registered in 2017 for specific goods and services. The Registrar of Trademarks issued a notice to the Applicant under section 45 of the Trademarks Act at the request of the Respondent, Red Maple Bio Inc., to file evidence that the trademark was used in Canada in association with the registered goods and services within the past three years. Ultimately, in November 2023 the Board found that there was sufficient evidence to demonstrate the use of the trademark in association with the registered services but that the Applicant had failed to demonstrate use of the trademark in association with the goods.

The Applicant appealed to the Federal Court, seeking to set aside that portion of the Board’s decision relating to the use of the trademark in association with the goods. The Applicant filed additional evidence on appeal as is permitted by subsection 56(5) of the Trademarks Act. Thus, the evidence on appeal consisted of the original evidence before the Board as well as the fresh evidence that purported to show use of the trademark in association with the goods during the relevant period of time

Given that the Applicant led new evidence, the Court had to first consider the materiality of that

evidence and determine whether the new evidence was sufficiently substantial, significant and probative that it would have had a material impact on the Board’s decisions. In this case, the Court held the new evidence was substantial, significant, and probative because it filled in the evidentiary gaps identified by the Board. Given that the new evidence materially affects the Board’s decision, the Court reviewed the issue of whether the trademark was used in association with the goods on a correctness standard and made is own determination based on the whole of the evidence.

In light of the evidence as a whole, including the new evidence, the Court found that the Applicant had demonstrated use under subsection 4(1) of the Act in relation to the design mark and set aside the Board’s decision as it relates to the design mark in association with the specified goods.

This decision continues a line of prior decisions in the Federal Court holding that new evidence filed on appeal under section 56 of the Trademarks Act can be material and dispositive of the issue if the new evidence fills an evidentiary gap identified by the Board.