Leave to Appeal to SCC: Alliance Laundry Systems LLC v Whirlpool Canada LP (FCA)1
May 6, 2016
By Adam Bobker and Daniel M. MacKay
On May 5, 2016, the Supreme Court of Canada dismissed Whirlpool Canada LP’s (“Whirlpool”) application for leave to appeal from the decision of the Federal Court of Appeal in: Alliance Laundry Systems LLC v. Whirlpool Canada LP, 2015 FCA 232. The Federal Court of Appeal had allowed Alliance Laundry Systems LLC’s (“Alliance”) appeal from the Federal Court’s decision. The Federal Court of Appeal ordered that Whirlpool’s “SPEED QUEEN” trademark (Registration Number UCA15837) be expunged.
The trademark was registered in 1941 in association with a set of wares and services. The set included laundry washing machines and laundry dryers. Whirlpool acquired the trademark in 2004. At Alliance’s request, the Registrar of Trademarks issued a notice to Whirlpool under subsection 45(1) of the Trademarks Act. The notice required Whirlpool to show use of the trademark within a specified three-year period.
In response, Whirlpool filed an affidavit with four exhibits. In the affidavit, Whirlpool testified that: 1) the trademark was used in the normal course of trade within the three-year period; 2) the trademark was used by being prominently displayed on the front of the appliances; 3) SPEED QUEEN washers and dryers were sold by Whirlpool and its licensee’s during said period; and 4) Whirlpool has retained direct or indirect control of the character and quality of the washers and dryers. The exhibits included: a) undated photos showing the trademark displayed on washers and dryers; and b) a pair of invoices issued 11 weeks after the end of the three-year period, for the sale of a number of the washers and dryers.
The Registrar expunged the registration of the trademark for all wares and services except laundry washing machines and laundry dryers. The Registrar concluded that the Whirlpool had established use of the trademark in association with these wares during the three-year period. Alliance appealed to the Federal Court. It sought a finding that the Registrar’s decision was not reasonable. Alliance argued that the Registrar committed an error in law by basing its finding of use on irrelevant evidence and on vague and ambiguous statements in Whirlpool’s affidavit. Alliance acknowledged that the evidentiary threshold on the registrant in “not very high,” but submitted that “it is still incumbent upon the [registrant] to show use, that is to say how, when and where the trade-mark has been used” (citing Plough (Canada) Ltd v Aerosol Fillers Inc (1981), 53 CPR (2d) 62).
The Federal Court reviewed the decision of the Registrar on a reasonableness standard. The Court held that “although the [Registrar’s] interpretation of the evidence is controversial … the outcome reached by the [Registrar] falls within the range of acceptable outcomes defensible in fact and in law.” In support of this conclusion, the Court held that “even though the evidence was somewhat general and lacked specificity, the [Registrar’s] findings have an evidentiary basis.”
The Federal Court of Appeal reversed the Federal Court’s judgment on the basis that “the evidence of … Whirlpool … [did] not, even on a generous view of its contents, meet the low threshold of evidence required to show use of the trade-mark at issue in association with [Whirlpool’s] goods.” The Court held that the conclusion that Whirlpool’s evidence was sufficient to establish use of the trademark was unreasonable. Today, the Supreme Court of Canada denied leave to appeal the decision of the Federal Court of Appeal.
1 2015 FCA 232.
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