Trademarks Opposition Board keeps registration of chemical provider’s mark for antifouling agents

In a summary expungement proceeding under s. 45 of the Trademarks Act, 1985, the Trademarks Opposition Board (TMOB) declined to delete Nouryon Chemicals International B.V.’s registration no. TMA663578 for NOXOL in association with antifouling agents. 

McCarthy Tetrault LLP v Nouryon Chemicals International B.V., 2026 TMOB 159, revolved around the mark owned by Nouryon Chemicals International, a provider of specialty chemicals. 

On June 12, 2025, at McCarthy Tetrault LLP’s request, the trademarks registrar provided the owner with a s. 45 notice regarding the registration. Under the notice, the owner should demonstrate: 

• whether there was use of the mark in Canada in association with its goods in the three years before the notice date, specifically within the period from June 12, 2022, to June 12, 2025 (the relevant period) 
• if not, when the mark was last used, and why it has not been used since that date 

Intellectual property counsel’s affidavit

In response to the notice, the owner filed its intellectual property (IP) counsel’s affidavit, sworn Sept. 12, 2025. The affidavit provided that: 

• The Nouryon group of companies comprised the trademark owner and Nouryon Functional Chemicals LLC (NFC) 
• The owner licensed the use of the mark to NFC
• Under this licence, NFC had control over the character, quality, and consistency of the goods distributed in Canada 
• The owner has been selling the goods – supplied in liquid form and packaged in sealed containers for industrial chemical transport – in Canada, including during the relevant period 
• The owner sold the goods to manufacturers in the chemical industry focusing on vinyl-based products, including Oxy Vinyls LP in Dallas, Texas
• In the normal course of trade, Oxy Vinyls LP bought the goods and shipped them directly to Oxy Vinyls Canada Inc., its sister company in Niagara Falls, Ontario, under parent company Occidental Chemical Corporation 

The affidavit attached exhibits, including: 

• a product data sheet dated Sept. 14, 2022, for goods depicting the mark 
• photographs of the containers – bearing the mark within the relevant period – used to transport the goods 
• invoices dated between July 2022 and February 2025, showing the sales of the goods shipped to Canada during the relevant period, with the invoices describing the goods shipped as those bearing the mark 

Trademark registration not expunged

In accordance with s. 45’s provisions, plus their delegated authority under s. 63(3) of the Trademarks Act, a TMOB member decided to maintain the trademark registration. 

Upon fully reviewing the affidavit from IP counsel, the TMOB determined that the owner showed use of the mark in association with the goods within the relevant period.

According to the TMOB, during the relevant period, containers with the goods – transferred to Oxy Vinyls Canada in the normal course of trade – displayed the mark. 

Trademarks Opposition Board’s prior cases

Here are some other recent decisions by the Trademarks Opposition Board. 

In summary expungement proceedings under s. 45 of the Trademarks Act, 1985, the TMOB’s July 3 order amended three trademark registrations, entirely maintained two others, and expunged another, all owned by Moosehead Breweries Limited. 

In summary expungement proceedings initiated by Borden Ladner Gervais LLP (BLG) under s. 45 of the Trademarks Act, the TMOB’s June 19 order amended the registration of a mark owned by Passmore Inc. to delete all goods and certain services. 

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