Canadian Intellectual Property Office
Citation: 2026 TMOB 30
Date of Decision: 2026-02-17
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Paul Greco
Registered Owner: Abercrombie & Fitch Trading Co.
Registration: TMA982,118 for Moose Design (Solid)
Introduction
[1] This is a decision involving a summary expungement proceeding under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) with respect to registration No. TMA982,118 for the trademark Moose Design (Solid) (the Mark), owned by Abercrombie & Fitch Trading Co. (the Owner) and shown below:
[2] For the reasons that follow, I conclude that the registration ought to be amended.
The Record
[3] At the request of Paul Greco (the Requesting Party), the Registrar of Trademarks issued a notice to the Owner under section 45 of the Act on December 27, 2024. The notice required the Owner to show whether the Mark had been used in Canada in association with the goods specified in the registration at any time within the three-year period immediately preceding the date of the notice and, if not, the date when it was last in use and the reason for the absence of use since that date. In this case, the relevant period for showing use is December 27, 2021, to December 27, 2024.
[4] The Mark is registered for use in association with the following goods:
[5] The relevant definitions of “use” in the present case are set out in section 4 of the Act as follows:
4(1) A trademark 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.
(3) A trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.
[6] In response to the notice, the Owner furnished the affidavit of Lindsay Yeakel Capps, Director, Legal – Intellectual Property of the Owner, sworn on May 27, 2025. Both parties filed written representations; no hearing was held.
Evidence
[7] Ms. Capps states that the Owner has used the Mark in Canada for more than 20 years in association with various clothing goods and online retail services, particularly the goods “carrying cases for mobile computers”, “protective covers and cases for laptops and portable media players”, and “sunglasses” (collectively, the Claimed Goods).
[8] She states that such goods were provided in Canada through the Owner’s retail locations in Canada and the Canadian subdomains of its website. She further states that throughout the relevant period, the Owner’s licensee AFH Canada Stores Co. (AFH Canada) used the trademark under a licence with terms providing that the Owner exercises control over the character and quality of goods and services offered, performed, and sold in Canada in association with the Mark. Ms. Capps further confirms that all goods sold by AFH Canada originate from the Owner.
[9] As Exhibits A through D, she provides website evidence showing locations of the Owner’s retail stores in Canada for the years 2021 through 2024.
[10] As Exhibits F-1 and F-2, Ms. Capps attaches sample photographs of backpacks with a moose design printed on the product itself as well as on a zipper tag, and a pair of sunglasses, respectively. She states that the photographs are representative of the appearance of the Claimed Goods during the relevant period.
[11] With respect to the backpacks shown in Exhibit F-1, I note that several of the photographs show what appear to be a laptop computer stored within a pocket inside the backpack; further, one of the photographs shows both sides of a tag reading “the a&f backpack!” and displaying the moose logo on one side, and showing various features of the backpack on the other side, including a portion identified as “interior laptop / tablet holder”. Ms. Capps correlates this backpack with the Claimed Goods “carrying cases for mobile computers” and “protective covers and cases for laptops and portable media players”.
[12] The sunglasses shown in Exhibit F-2 show a white moose design on the sunglasses themselves and on their packaging.
[13] As Exhibits I, J, and K, she attaches confirmation emails and sales records showing sales of the pictured backpack and sunglasses in Canada during the relevant period.
Analysis
Preliminary comments regarding the Requesting Party’s submissions
[14] I note that in its written representations, the Requesting Party makes reference to at least one case that does not appear to exist [Requesting Party’s written representations, para 74]. This may suggest the use of generative artificial intelligence (AI) in the preparation of these materials, and a failure to verify the correctness of such materials.
[15] Courts have stated that reliance on decisions that do not exist or do not stand for the relied upon principles can lead to miscarriages of justice [Zhang v Chen, 2024 BCSC 285 at para 29; Ko v Li, 2025 ONSC 2965 at paras 14–17] and have also awarded costs against the party that made those misrepresentations [JRV v NLV, 2025 BCSC 1137; Hussein v Canada (Immigration, Refugees and Citizenship), 2025 FC 1138]. The Owner submitted in its written representations, and I agree, that such conduct can lead to an award of costs against the offending party under section 74.1(1)(b) of the Trademarks Regulations, SOR/2018-227 (the Regulations). However, as the Owner did not make such a request pursuant to section 74.2 within the timeframe set out in the Regulations, costs cannot be awarded in this instance.
Use enuring to the Owner
[16] The Requesting Party submits that the Owner has not shown that any use by the Owner’s licensees enures to the Owner. However, as noted above, Ms. Capps confirms in her affidavit that the Owner exercises control over the character and quality of goods and services offered, performed, and sold in Canada in association with the Mark by AFH Canada, and that all goods sold by AFH Canada originate from the Owner. The Requesting Party submits that “[i]n the absence of license agreements, quality control documentation, or any other evidence proving […] actual control”, the evidence is “fatally defective” in terms of showing that AFH Canada’s use enured to the Owner [para 27]. However, the Federal Court has held that there are three main methods by which a trademark owner can demonstrate the requisite control pursuant to section 50(1) of the Act: first, by clearly attesting to the fact that it exerts the requisite control; second, by providing evidence demonstrating that it exerts the requisite control; or third, by providing a copy of the licence agreement that provides for the requisite control [Empresa Cubana Del Tabaco Trading v Shapiro Cohen, 2011 FC 102 at para 84]. In this case, Ms. Capps has clearly attested to the fact that the Owner has exerted the requisite control. This is sufficient to establish that any use of the Mark by AFH Canada enures to the Owner.
Use of the Mark
[17] The Requesting Party’s written representations include a submission that the white moose design against a dark background does not amount to use of the Mark as registered as the change fundamentally alters the Mark’s overall impression. In this respect, it claims that “the registrant bears the burden of proving use of the identical mark as registered” [para 36, sic]. Its submissions also refer to a separate registration of the Owner, TMA812,203, for an outlined moose design. However, the fact that the Owner may own other registered trademarks is neither in evidence before me nor relevant to my determination of this case; it is well-established that an owner may own several associated trademarks and that the use of one such trademark may also constitute use of other substantially similar trademarks where no person would be deceived [see Cinnabon Inc v Austin Nichols & Co (1998), 86 CPR (3d) 241 at para 18; Smart & Biggar v Rothmans, Benson & Hedges Inc, 2011 TMOB 78 at para 15].
[18] Instead, in considering whether the display of a trademark constitutes display of the trademark as registered, the question to be asked is whether the trademark was displayed in such a way that it did not lose its identity and remained recognizable, in spite of the differences between the form in which it was registered and the form in which it was used [Canada (Registrar of Trade Marks) v Cie internationale pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA)]. In deciding this issue, one must look to see whether the “dominant features” of the registered trademark have been preserved [Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)]. In this case, the dominant features of the Mark are the solid moose design. This is preserved in the instances of display of the Mark as shown in Exhibits F-1 and F-2, as each depicts a moose facing to the left in the same pose. I do not consider the moose being shown in white, as opposed to black, to cause the Mark to lose its identity and become unrecognizable, particularly as there is no colour claim in the registration [for similar reasoning, see JAWHP, LLC v Loblaws Inc, 2024 TMOB 178 at para 21]. Accordingly, I find that the moose design shown in evidence amounts to the Mark as registered.
Use in association with the goods
[19] I note that Ms. Capps does not claim that the Mark was used in association with the goods “Cases for mobile phones”, “Ear buds”, “Eye glasses”, and “Headphones”. In its written representations, the Owner submits that these goods can still be maintained, as they fall into the same general categories as the Claimed Goods and the Registrar may therefore infer that the Mark was used in association with these goods [citing, inter alia, Saks & Co v Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FCTD); 88766 Canada Inc v Thunder Tiger Model Co, [2004] TMOB No 2].
[20] However, the cases cited by the Owner do not stand for the proposition that a registered good may be maintained where there is no evidence that it has been sold during the relevant period, merely on the basis that use in association with other registered goods has been shown [see Saks at paras 53-54; Thunder Tiger at paras 8-9; Riches, McKenzie & Herbert LLP v Mary Quant Cosmetics Japan Limited, 2005 CanLII 78243 (TMOB) at para 18]. The applicability of the Saks principle “depends on the degree of detail that the registered owner provides and the clarity with which it explains the representative evidence” [Matthew S George v Dr's Own, Inc, 2018 TMOB 147 at para 72]. In this case, Ms. Capps indicates that the Mark was used specifically in association with the Claimed Goods. There is nothing in evidence to suggest that the Mark was used in association with the remaining goods, and Ms. Capps appears to concede that the Mark was not so used. Further, as discussed below, the evidence tends to suggest that certain of the Claimed Goods were not sold during the relevant period.
[21] As there is no evidence of special circumstances which would excuse non-use, the registration will be amended to delete the goods other than the Claimed Goods.
[22] As for the Claimed Goods, the Requesting Party submits that the Exhibit J and K sales reports do not necessarily show that the listed products in the sales report correlate to the products displaying the Mark shown in Exhibits F-1 and F-2, and that the sales reports cannot support a conclusion of transfers in the normal course of trade due to the redaction of monetary values in the sales report.
[23] However, I find that the Owner’s evidence is sufficient to show use of certain of the Claimed Goods within the meaning of the Act. Ms. Capps explicitly confirms at paragraphs 22 and 23 of her affidavit that the listed products in the sales report correlate to the products displaying the Mark shown in Exhibits F-1 and F-2. Moreover, evidence of a single sale can be sufficient to establish use for the purposes of section 45 expungement proceedings, so long as it follows the pattern of a genuine commercial transaction and is not seen as deliberately manufactured or contrived to protect the registration [see Philip Morris Inc v Imperial Tobacco Ltd (1987), 13 CPR (3d) 289 (FCTD) at para 12]. In this case, Ms. Capps has clearly explained the Owner’s normal course of trade, including that the backpacks and sunglasses were sold in the Owner’s stores in Canada and online during the relevant period, and has explicitly confirmed that the Owner or its licensees have made sales of those products in Canada during the relevant period. Despite the Requesting Party’s submission that the Owner’s affidavit “is not evidence, but rather deception” [para 44], I see no contradiction in the evidence or any other reason not to afford Ms. Capps’ testimony substantial credibility in this case [see Oyen Wiggs Green & Mutala LLP v Atari Interactive Inc, 2018 TMOB 79 at para 25 for the principle that an affiant’s statements are to be accepted at face value and must be accorded substantial credibility in a section 45 proceeding]. Accordingly, I am satisfied that the Owner has shown that the backpack and sunglasses displaying the Mark were transferred in Canada in the normal course of trade within the relevant period.
[24] Further, with respect to “carrying cases for mobile computers”, “protective covers and cases for laptops and portable media players”, the Requesting Party’s submissions maintain that “Ms. Capps has attempted to misinterpret and mislead the Registrar by adducing evidence of backpacks and misconstruing them” as the Claimed Goods [para 38]. In this respect, the Requesting Party submits that backpacks would typically be classified under Nice Class 18 “and NOT class 9 goods as it should be correctly categorized in the subject registration”, and that “the Registrar should draw the strongest adverse inference against the Owner for this egregious overreach” [para 38]. I note, however, that “backpacks especially adapted for holding laptops and notebook computers” are classified under Class 9 in CIPO’s Goods and Services Manual, and in any event, it is well-established that when interpreting a statement of goods or services in a section 45 proceeding, one is not to be “astutely meticulous when dealing with [the] language used” [see Aird & Berlis LLP v Levi Strauss & Co, 2006 FC 654 at para 17]. Here, it is clear that a feature of the backpacks shown in evidence, as advertised on tags attached to those backpacks, is to carry mobile computers. Accordingly, I accept that the backpacks shown in evidence can amount to “carrying cases for mobile computers”.
[25] However, it is a longstanding principle that use of a trademark in association with one specific product cannot generally serve to maintain multiple goods in a registration [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. As noted above, Ms. Capps correlates the evidenced backpack with both “carrying cases for mobile computers” and “protective covers and cases for laptops and portable media players”. Since the backpack appears to be specifically designed to carry laptop computers, I find that it corresponds most readily to the Claimed Good “carrying cases for mobile computers” and I am satisfied that the Owner has shown use of the Mark in association with that registered good. There is nothing to suggest that the Mark was used in association with other products corresponding to the Claimed Goods during the relevant period. As there is no evidence of special circumstances excusing non-use, the registration will be amended to delete the goods “protective covers and cases for laptops and portable media players”.
Disposition
[26] In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be amended to delete “Cases for mobile phones; Ear buds; Eye glasses; Headphones; Protective covers and cases for laptops and portable media players” from the registered goods.
[27] The amended registration will be as follows:
Carrying cases for mobile computers; Sunglasses.
___________________________
G.M. Melchin
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: No hearing held
AGENTS OF RECORD
For the Requesting Party: No agent appointed
For the Registered Owner: CPST Intellectual Property Inc.