Request for costs of appeal denied; costs were not incurred as result of respondent’s conduct

After Registrar sent notice under s. 45 of Trademarks Act to owner of trademark ROMANCE, registered for use in association with various jewellery goods, owner filed affidavit that Registrar found insufficient to establish use and so trademark registration was expunged. Owner appealed, filing new evidence including invoices for sale of jewellery pieces and from store that created jewellery for owner’s collection. Appeal allowed. Invoices were clearly relevant to legal issues in dispute and, given Registrar’s note that owner’s evidence did not prove any transfer of goods in normal course of trade, would have materially affected findings. Invoices showed various jewellery products that were sold but word “Romance” did not appear anywhere, although abbreviation “ROM” appeared in descriptions of some items. Owner filed two pieces of evidence to associated ROM abbreviation with Romance collection, namely his personal statement to that effect and affidavit from jewellery store owner attesting that he produced Romance collection of jewellery at owner’s request. Invoices established use even though there was no explicit mention of “Romance”. Registration would be maintained. Owner’s request for costs of appeal could not be granted as costs were not incurred as result of respondent’s conduct, where it was not disputed that insufficient documentation was filed to establish use of mark until this appeal and that respondent withdrew opposition to appeal.

Forget c. Charm Jewellery Limited (2019), 2019 CarswellNat 3763, 2019 CarswellNat 4206, 2019 FC 987, 2019 CF 987, Peter Annis J. (F.C.).

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