Nouryon Chemicals International B.V.: Trademarks Act 1985 CA Maintains NOXOL Registration

• The Trademarks Opposition Board (TMOB) maintained Nouryon Chemicals International B.V.'s registration for NOXOL in association with antifouling agents.
• The decision was made in a summary expungement proceeding under s. 45 of the Trademarks Act, 1985.
• The owner demonstrated use of the mark through an affidavit from its intellectual property counsel, which included exhibits showing the use of the mark.
• The TMOB's ruling may impact trademark infringement claims and compliance with Canadian IP regulations.

According to the TMOB, during the relevant period, containers with the goods – transferred to Oxy Vinyls Canada in the normal course of trade – displayed the mark.

The Trademarks Opposition Board (TMOB) has maintained the registration of Nouryon Chemicals International B.V.'s trademark NOXOL for use with antifouling agents. This decision was made in a summary expungement proceeding under s. 45 of the Trademarks Act, 1985. The TMOB's ruling is significant for companies operating in the specialty chemicals sector and those advising clients on supply chains involving antifouling agents.

The case, McCarthy Tetrault LLP v Nouryon Chemicals International B.V., was initiated by a s. 45 notice provided to the owner on June 12, 2025. The notice required the owner to demonstrate use of the mark within the relevant period. In response, the owner filed an affidavit from its intellectual property counsel, which included exhibits showing the use of the mark.

The TMOB's decision to maintain the trademark registration was based on its review of the affidavit and exhibits. According to the Board, the owner had demonstrated use of the mark in association with antifouling agents during the relevant period.

The Trademarks Act, 1985, provides for summary expungement proceedings under s. 45, which allow the TMOB to review and potentially delete trademark registrations that have not been used in association with the goods or services listed. The Act also grants the TMOB delegated authority under s. 63(3) to make decisions on trademark registrations.

The decision to maintain Nouryon Chemicals International B.V.'s registration is significant for companies operating in the specialty chemicals sector and those advising clients on supply chains involving antifouling agents. It highlights the importance of demonstrating use of trademarks in association with goods or services listed.

Other recent decisions by the TMOB include a July 3 order amending three trademark registrations, maintaining two others, and expunging one owned by Moosehead Breweries Limited, as well as a June 19 order amending the registration of a mark owned by Passmore Inc.

The TMOB's decision to maintain Nouryon Chemicals International B.V.'s trademark registration has implications for companies operating in the specialty chemicals sector and those advising clients on supply chains involving antifouling agents. The ruling may impact trademark infringement claims and compliance with Canadian IP regulations.

Lawyers advising clients on antifouling agent supply chains should note this decision, as it highlights the importance of demonstrating use of trademarks in association with goods or services listed. Companies operating in the specialty chemicals sector must ensure they are complying with Canadian IP regulations and taking steps to protect their trademark registrations.

Lawyers advising clients on antifouling agent supply chains should note the Trademark Opposition Board's decision to maintain Nouryon Chemicals International B.V.'s registration, which may impact trademark infringement claims and compliance with Canadian IP regulations.

Source: Original reporting via Trademarks Opposition Board decisions