In proceeding brought by BLG, registration maintained for services that used mark in relevant period
In summary expungement proceedings initiated by Borden Ladner Gervais LLP (BLG) under s. 45 of the Trademarks Act, 1985, the Trademarks Opposition Board (TMOB) amended the registration of a mark owned by Passmore Inc. to delete all goods and certain services.
The case was Borden Ladner Gervais LLP v Passmore Inc., 2026 TMOB 116. On Feb. 21, 2025, at the request of BLG, the trademarks registrar issued a notice under s. 45 in connection with the registration of Passmore’s mark. Under the notice, Passmore had to demonstrate:
- whether it utilized the mark in Canada for the specific goods and services listed in the registration within the three-year period – Feb. 21, 2022, to Feb. 21, 2025 – immediately before the notice date
- if not, the date of the last use of the mark and the reason for the absence of such use since then
Passmore Inc.’s president provided an affidavit as evidence in the trademark expungement proceedings.
According to the affidavit, the corporation sold computer, business, and consulting goods and services to business owners and corporations. The affidavit explained that clients could buy services by responding:
- to direct mail initiatives
- based on word-of-mouth referrals
- to Passmore’s volunteer work relating to community boards, not-for-profit associations, industry associations, and the entrepreneur-in-residence at the University of Western Ontario’s Richard D. Ivey School of Business in London, Ontario
Registration of mark amended
Under s. 45 of the Trademarks Act, the TMOB amended the registration to delete all goods and selected services under items (3) to (7), (10), (11), (14) to (25), (29), (30), (32) to (50), and (52) to (57).
The goods and services deleted included those that the affidavit identified as unused within the relevant period, with no reasons given for the non-use.
The TMOB maintained the registration relating to the services listed in items (1), (2), (8), (9), (12), (13), (26), (27), (28), (31), (51), and (58). The services maintained included those with invoices demonstrating sales within the relevant period.
In the invoices, the TMOB found the mark – depicted in all capital letters, followed by the ® symbol – in the description of the services provided. The TMOB considered the mark clearly distinguishable from the surrounding descriptive text.
However, the TMOB could not conclude that the affidavit established the use of the mark for any of the listed goods, including computer software.
Regarding the software, even if the affidavit included an invoice bearing the mark, the TMOB noted that the goods themselves or their packaging should contain the mark.
The TMOB pointed out that Passmore Inc.’s president did not allege that, during the transfer of the goods to customers, the corporation provided the invoice or that the mark otherwise had an association with the goods.
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