Using an Invoice to Prove Use of a Trademark in connection with Goods

If a trademark registration for goods is challenged in a section 45 proceeding, then the owner needs to prove that it has used the trademark with all of the goods listed in their application.

Using an Invoice to Prove Use of a Trademark in connection with Goods

If the trademark does not appear on the goods or their packaging, then use may be proven by producing copies of invoices when the goods were sold, if the invoices show the trademark in the body of the invoices and no other trademark is shown for those goods on the invoice.

In Cameron IP v. Haldex AB, 2015 FC 1000, Mr. Justice Beaudry wrote:

[10]           With respect to the invoice evidence, the applicant notes that “if [a mark is] used in the body of an invoice, it will generally be accepted that the mark is being used to describe the goods. However, if placed on top of the invoice, it will not”. In the present case, the marks are displayed on top of the invoices. In addition, these invoices contain products associated with other trade-marks. Therefore, the invoices are not acceptable evidence as they contain ambiguous information pertaining to the use of the marks.

….

[12]           The respondent underscore that the decision of the Hearing Officer was reasonable. In regards to the use with association with goods, the respondent cites Hortilux Schreder BV v Iwasaki Electic Co, 2011 FC 967 aff’d 2012 FCA 321 [Hortilux], where Mr. Justice Russell concluded that there are several factors that are relevant in determining if invoices establish use of trade-marks. The factors, as summarized by the respondent, are:

(1)   The prominence of the trade-mark at the top of the invoice;

(2)   Whether the trade-mark is used in the context of corporate identification;

(3)   Whether the goods of more than one manufacturer are being sold;

(4)   The purchaser’s familiarity with the trade-mark owner’s business;

(5)   Whether any other trade-mark appears in the invoice in association with the wares being sold;

….

[18]           Subsection 4 (1) of the Act establishes the requirement for a trade-mark that is used in association with goods:

4. (1) A trade-mark 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. 4. (1) Une marque de commerce est réputée employée en liaison avec des produits si, lors du transfert de la propriété ou de la possession de ces produits, dans la pratique normale du commerce, elle est apposée sur les produits mêmes ou sur les emballages dans lesquels ces produits sont distribués, ou si elle est, de toute autre manière, liée aux produits à tel point qu’avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée.

[19]           Therefore, it must be shown that the goods were transferred, either in property or possession and that the mark was associated with the goods in some way.

[24]           The factors in Hortilux cited at paragraph 12 of the present decision, are simply factors to consider and do not form a strict test. They are not to be applied in isolation.

Cameron IP v. Haldex AB, 2015 FC 1000

 

David Michaels

David Michaels, J.D., B.Eng., CHRM is a legal blogger (and a trained attorney) who holds certificates in Canadian Trademark Law (2012) and Canadian Patent Law (1996) from McGill University. He has worked in the area of trademark law in Canada since 1995 and in the USA since 1993. David is a brand consultant, a writer, an eCommerce entrepreneur, and an aeronautical engineer. http://ca.linkedin.com/in/davidtmichaels/ Warning & Disclaimer: The pages, articles and comments on trademarkpro.ca do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the author's notes of the current state of trademark law and should not be attributed as opinions of the author, his employer, clients or the sponsors of trademarkpro.ca. The author does not warrant that these notes are up-to-date. Trademark law is constantly changing and it varies between jurisdictions and even within jurisdictions. This website should not be relied upon.

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