At the request of McMillan LLP, the Registrar of Trademarks issued a section 45 notice requiring Gallagher Benefit Services (Canada) Group Inc. to demonstrate use of the trademark OPTIMUM TALENT in Canada within the past three years. In a recent decision issued by the Trademarks Opposition Board (TMOB), the registration of the trademark was maintained, as the TMOB was sufficiently satisfied that the trademark was used in Canada during the relevant period.

In its decision, the TMOB reaffirmed that while the evidentiary threshold in section 45 proceedings is low, bare assertions of use are insufficient and the evidence must demonstrate that the mark was used or displayed in the performance or advertising of the services.

The trademark OPTIMUM TALENT covered a wide range of human resources and consulting services, including career management, recruitment, coaching, organizational development, and strategic consulting. As evidence of use, Gallagher filed an affidavit enclosing printouts of different pages from their website extracted from the Wayback Machine archive, as well as copies of invoices showing how clients were billed for the services provided.

The TMOB noted that although the invoices did not cover each and every one of the services listed in the registration, the affiant confirmed in the affidavit that Gallagher offered and was able to offer each of the services during the relevant period.

The TMOB also noted that the fact that a trademark matched a company’s trade name does not exclude the trade name from also being used as a trademark.