Executive Summary: Key Legal and Evidentiary Issues

• Ecovacs Robotics appealed the Registrar's expungement of its AIVI design trademark after failing to respond to a section 45 Notice it claims was never received

• Leave to file new evidence (the Chang Affidavit) was granted as it was relevant, credible, uncontradicted, and could have materially affected the Registrar's original decision

• The standard of review applied was correctness, following the Clorox and Products Unlimited precedents on de novo appeals with new material evidence

• Use of "AIVI 3D" on products was accepted as a permissible variation of the registered AIVI Mark, as the dominant features were maintained

• Evidence demonstrated use of the AIVI Mark only for household robotic vacuums and mops, not for industrial goods, commercial applications, or parts and accessories

• Registration was partially restored, with numerous goods categories deleted for lack of evidence of use during the relevant period

The parties and background of the dispute

Ecovacs Robotics Co., Ltd. (ERCL) is the owner of Trademark Registration No. TMA1108526 for the AIVI design mark, which was registered on September 3, 2021 for use in association with a broad range of goods including industrial robots, various types of vacuum cleaners, floor cleaning machines, robotic cleaning devices, and their structural parts, accessories, and fittings. On December 16, 2024, at the request of the Respondent, American Air Filter Company, Inc., the Registrar of Trademarks sent the section 45 Notice to ERCL's trademark agent, Neomark Ltd, pursuant to subsection 45(1) of the Trademarks Act. ERCL asserts that for "reasons unknown," neither the company nor its trademark agent received this Notice, and consequently, no evidence of use was filed in response.

The Registrar's expungement decision

On April 30, 2025, because no evidence of use had been submitted, the Registrar issued a decision expunging the AIVI Mark registration from the register pursuant to section 45(4) of the Trademarks Act. On June 4, 2025, ERCL's trademark agent informed the Registrar that the Notice was never received and requested a retroactive extension of time to file evidence. The Registrar denied this request on June 9, 2025. ERCL then appealed to the Federal Court.

The new evidence submitted on appeal

In support of its appeal, ERCL sought leave to file the Affidavit of Xu Chang, the company's IP Manager, to demonstrate use of the AIVI Mark in the normal course of trade in Canada during the relevant period of December 16, 2021 to December 16, 2024. Ms. Chang stated that revenue earned by ERCL from selling the Registered Goods in Canada during this period exceeded $34 million. She attached as Exhibit B screenshots of Amazon order details from five transactions dated in November and December 2024, relating to the ECOVACS DEEBOT T30S AI Robot Vacuum and Mop and the ECOVACS DEEBOT T30S PRO Robot Vacuum and Mop, shipped to different places in Canada from the Amazon seller "Ecovacs Robotics UK ¦Canada." She also provided photographs of the products showing the "AIVI 3D" marking (Exhibit C), a product information flyer referencing "AIVI 3D 2.0" (Exhibit D), and images of product packaging for the DEEBOT OZMO T8 robot vacuum referring to "AIVI" and "AIVI+" on the product package (Exhibit E). The Respondent did not file any responding evidence and did not cross-examine Ms. Chang.

The Court's analysis on leave to file new evidence

The Court applied the test for leave under subsection 56(5) of the Trademarks Act, as recently considered by Justice Nicholas McHaffie in Products Unlimited, Inc v Five Seasons Comfort Limited, 2026 FC 48. The relevant factors included: (a) the relevance, credibility, and admissibility of the evidence; (b) the materiality of the evidence; (c) the circumstances surrounding the delay in filing the evidence; and (d) whether granting leave would cause prejudice to the opposing party. Justice Furlanetto found that the Chang Affidavit was relevant as it related to use of the AIVI Mark, which was the only issue before the Registrar. As there was no cross-examination on the affidavit, it was also credible and uncontradicted. Further, as the Registrar did not have any evidence of use before it, the Chang Affidavit could have materially affected the Registrar's decision. The delay was explained by ERCL's assertion that it never received the Notice, and the Respondent took no position on leave. The Court concluded that it was in the interests of justice to grant leave to adduce the Chang Affidavit.

Whether the evidence established use of the AIVI Mark

On the merits, the Court reviewed the evidence under subsection 4(1) of the Trademarks Act, which provides that a trademark is deemed to be used in association with goods if, at the time of the transfer of 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. The Court acknowledged that the burden on a trademark owner in section 45 proceedings is not a heavy one, requiring only sufficient facts from which a reasonable inference of use can be drawn. The Respondent argued that the use of "AIVI 3D" on the products was not use of the registered AIVI Mark, as the addition of "3D" was significant and suggestive of a whole new dimension or feature. The Court rejected this argument, finding that the whole of the registered mark had been maintained and remained as the dominant and distinctive element of the mark as used, and that the addition of the descriptive element "3D" would not create a different association or impression with the unaware purchaser or mislead or confuse the unaware purchaser as to the source of the goods. The Court was satisfied that Exhibits B and C, taken together, showed that the AIVI Mark was marked on Registered Goods sold in the normal course of trade during the relevant period.

Scope of use and goods retained versus deleted

However, the Court agreed with the Respondent that the product orders, product flyer, and product packaging showed use of the AIVI Mark in association with robot vacuums and mops for household use, but not industrial use, and did not depict or suggest use for commercial applications. There was no evidence of use of the AIVI Mark on industrial goods or for commercial applications, nor was there any evidence of the sale of parts, filters, bags, or other accessories for vacuums, separate from the vacuums themselves. ERCL itself acknowledged that certain of the Registered Goods should be deleted from the registration, including those associated with window cleaning, central vacuum cleaning installations, vacuum cleaner hoses, and electric robots for air purifying. However, ERCL's suggested list of deletions was more limited than that proposed by the Respondent. The Court adopted the Respondent's broader approach, maintaining the registration only for: floor cleaning machines; robotic vacuum cleaners; vacuum cleaners; carpet cleaning machines; cordless vacuum cleaner; automatic floor cleaning machines for consumer use; and automatic machines for use in the field of interior maintenance of households.

The ruling and outcome

The Federal Court allowed the appeal in part. Justice Furlanetto set aside the Registrar's April 30, 2025 decision expunging TMA1108526 and ordered the trademark registration restored, with the statement of goods amended to delete a substantial number of goods categories — including all industrial, commercial, parts, and accessory categories — from the registration. ERCL succeeded in preserving its AIVI Mark registration for household-use cleaning machines, though the scope of registered goods was significantly narrowed. No specific monetary amount was awarded or ordered in this proceeding, as the case concerned only the maintenance of a trademark registration rather than monetary damages. As no costs were requested by the Respondent, none were awarded.