In Curb v. Smart & Biggar, the applicant — a well known American record producer — successfully petitioned the Federal Court to set aside the Registrar's decision to strike certain wares and services from his registration of the mark CURB RECORDS. The Court found that the additional evidence the applicant had filed on appeal was sufficient to establish use for the purposes of § 45 of the Trade-marks Act (the "Act"). In particular, the Court held that under the circumstances, evidence that the applicant's multimedia website was accessible from Canada was sufficient to show use with respect to the provision of "entertainment services provided by pre-recorded music," even though the site was hosted abroad. However, the Court disregarded evidence that the applicant had sold t-shirts and caps bearing the mark in Canada "and/or" the United States for lack of specificity, affirming the Registrar's decision to strike those wares from the applicant's registration.

At Smart & Biggar's request, the Registrar had issued a notice under subsection 45(1) of the Act requiring that the applicant show use of its mark. The applicant failed to do so, except with respect to the physical records and videos. At trial, the Applicant brought new evidence purporting to show use with respect to the remaining wares and services. Having found that the new evidence would have affected the Registrar's decision, the Court held that it was not required to show deference to the Registrar's decision, and that it could hear the matter de novo.

With respect to the provision of "entertainment services provided by pre-recorded music," the Court found that the applicant's website featured pre-recorded music and videos, and that the site was accessible from Canada. Although it noted in passing that "trans-border websites can create interesting problems," the Court held that evidence of the website was sufficient to establish use.

The Court also accepted the applicant's new evidence with respect to the other impugned services. It held that evidence of a live concert that the applicant had organized in Canada was sufficient to ground his claim for "entertainment services provided by live music." Likewise, the Court found an excerpt of a contract between the applicant and the Canadian division of a major record label, as well as the fact that the applicant had produced a music video in Canada, to be sufficient evidence of the applicant's engagement in the "production, publishing and distribution of audio and audio-visual recordings."

However, the Court found no evidence that the applicant had used the mark with respect to clothes, disregarding an affidavit in which the applicant avowed that his company had sold t-shirts and caps bearing the CURB RECORDS mark in the United States "and/or" Canada during the relevant period. Moreover, the Court refused to infer that the applicant had also sold clothing in Canada simply because he had held a concert there, describing the argument as an "exercise in speculation rather than a proper inference from proven facts."

Accordingly, the Court ordered the Registrar to strike reference to clothing, t-shirt, and caps from the applicant's registration, but to otherwise leave it intact.