Recent Decisions April 2002
I. FEDERAL COURT DECISIONS
(a) Patents
1. Eli Lilly v. The Minister of Health, January 10, 2002, FCTD (Hansen J.) Decision of Minister to Remove Patent from Patent Register/Presumption that Legislation Not to Be Applied Retroactively/Relevance of Patent to Drug for Which NOC Issued/Patented Medicines (Notice of Compliance) Regulations, Sections 3 and 4
Application for judicial review of a decision of the Minister of Health to remove a patent from the patent register. The patent included claims for pharmaceutical compositions containing ceftazidime pentahydrate and was first included on the patent register in 1993. The patent was removed from the register following an audit conducted after the NOC Regulations were amended in 1998. The Minister’s representative concluded that the patent was not relevant to the drug described in the submission for a NOC because the compositions claimed in the patent contained amorphous lactose, while the drug products described in the NOC submission did not. Eli Lilly applied for judicial review, arguing that: (i) the Minister had violated the presumption that legislation should not be applied retroactively by applying the 1998 amendments to the NOC Regulations in reaching his decision, and (ii) that the formulation patent was indeed relevant to the drug for which the NOC issued.
Held: Application dismissed. The Minister’s decision did not amount to retroactive application of the NOC Regulations. The Minister has an ongoing duty to maintain the patent register to ensure that all patent lists are in compliance with the Regulations currently in effect. Furthermore, the Minister’s interpretation of the NOC Regulations is correct, and the decision to remove the patent from the patent register is correct. For a patent to remain on the register, it must be relevant to a drug for which a NOC has issued. Where the pharmaceutical composition claimed in the patent differs from the composition in the drug, the patent is not relevant to the drug: see Warner-Lambert Canada Inc. v. Canada (Minister of Health), [2001] F.C.J. No. 801 (T.D.). In the present case, the medicine claimed in the patent is ceftazidime combined with amorphous lactose and a pharmaceutically acceptable base. The medicine for which NOCs have issued is ceftazidime in another formulation. Due to certain adverse effects, ceftazidime alone cannot meet the definition of a medicine, and is not “the medicine itself” claimed in the patent.
2. Bristol-Myers Squibb Canada v. Attorney General of Canada et al., January 23, 2002, FCA (Richard C.J., Strayer J.A., Noël J.A.) Patent Register/Patented Medicines (Notice of Compliance) Regulations, Section 3
Appeal by Bristol-Myers Squibb from a decision upholding the Minister of Health’s decision that a patent was ineligible for inclusion on the patent register maintained under s. 3 of the NOC Regulations.
Held: Appeal dismissed. The application judge did not err in upholding the Minister’s decision. The appellant relied on the decision of McGillis J. in Apotex Inc. v. Canada (Minister of Health) (1999), 87 C.P.R. (3d) 271 (F.C.T.D.), affirmed, (2001), 11 C.P.R. (4th) 538 (F.C.A.). That decision is distinguishable because it was decided prior to the introduction of s. 4(6) of the NOC Regulations and involved a supplement to a new drug submission based on a new indication or use. In affirming the decision of McGillis J., the Court of Appeal expressly declined to deal the issue of whether the filing of a second patent list with regard to the same drug was appropriate.
3. Quadco Equipment v. Timberjack, January 28, 2002, FCTD (Tremblay-Lamer J.) Patent Infringement/Extrinsic Evidence
Action commenced by Quadco Equipment alleging that Timberjack’s accumulator tree felling head infringes the claims of Quadco’s patent. The defendant argued that the claims required that the lug and inner arm of the claimed device must be connected to the frame of the device at the same point. This connectivity pattern did not exist in the defendant’s product. The plaintiff argued that this connectivity pattern was not an essential element of the patent.
Held. Action dismissed. After considering the evidence of experts called by both parties, the Court held that the connectivity pattern in which the lug and inner arm must be connected to the frame of the device at the same point is an essential element of the patent. As the defendant’s product did not incorporate this connectivity pattern, the claims are not infringed. In construing the term “axis” that was used in the claims, the Court suggested that statements made by an inventor during examination for discovery could be used to aid in the construction. The Court stated that such evidence should not be considered “extrinsic evidence”, held in Free World Trust v. Électro Santé Inc., [2000] 2 S.C.R. 1024 (S.C.C.) as being inadmissible in construing claims. However, the Court ultimately acknowledged the ambiguity concerning the admissibility of the inventor’s statements, and accorded the evidence no weight.
4. Pfizer v. Apotex, February 11, 2002, FCTD (Blanchard J.) Application for Prohibition/ Evidence/Admissibility of Documents Not Included in Notice of Allegation/Patented Medicines (Notice of Compliance) Regulations
Appeal by Apotex from the order of the prothonotary preventing Apotex from relying on five documents (prior art references) at the hearing of the application. Apotex sent a notice of allegation of invalidity to Pfizer supported by 96 prior art references. Pfizer commenced a prohibition proceeding and filed four affidavits in support of its application. During the cross-examination of two of Pfizer’s expert witnesses, counsel for Apotex challenged their evidence by referring to and producing various prior art references which were not included in the notice of allegation. Pfizer brought a motion to prevent Apotex from relying on the documents at the hearing of the application. The prothonotary applied the Federal Court of Appeal decision in A.B. Hassle v. Canada (2000), 7 C.P.R. (4th) 272 and ordered that Apotex could not rely on the documents for the purposes of arguing in the application that the Pfizer patent is invalid.
Held: Appeal dismissed. The prior art references do more than establish the state of the knowledge of the person skilled in the art at the time of the filing of the patent. These documents expand the factual basis of the allegations made beyond that set out in the notice of allegation. This is not permissible. The prothonotary did not err in applying the principles set out in A.B. Hassle, supra, to the impugned prior art evidence. The prothonotary did not usurp the authority of the hearing judge, and was not clearly wrong in the exercise of her discretion.
5. Apotex v. Merck, February 18, 2002, FCTD (Pinard J.) Motion to Strike/ Federal Court Rules, Rule 221/Patented Medicines (Notice of Compliance) Regulations, Section 8
Motion by the defendant Merck pursuant to r. 221 of the Federal Court Rules to dismiss the plaintiff’s action in whole or in part, or, in the alternative, to strike various paragraphs of the statement of claim. In 1993, Merck commenced a proceeding pursuant to the NOC Regulations to prohibit the Minister of National Health and Welfare from issuing a NOC to Apotex in respect of the drug norfloxacin. In 1998, the Supreme Court of Canada allowed an appeal by Apotex and dismissed the application for prohibition. In 2001, Apotex commenced the present action seeking compensation for damages flowing from the unsuccessful prosecution of a prohibition proceeding pursuant to s. 8 of the NOC Regulations. Merck moved to dismiss the proceeding.
Held: Motion dismissed. Blanchard J. disposed of virtually all of the issues arising from this motion in a similar proceeding: see Apotex Inc. v. Eli Lilly & Co. (2001), 13 C.P.R. (4th) 78 (F.C.T.D.). The remaining issue of certification pursuant to paragraph 8(1)(a) of the NOC Regulations involves a complex matter of statutory interpretation which is better suited for determination at trial. The defendants have not shown that Blanchard J.’s decision was manifestly wrong, and therefore, according to the principles of judicial comity their motion must be dismissed. It must be plain and obvious that some or all of the statement of claim discloses no reasonable cause of action before it can be struck out: see Hunt v. Carey Canada Inc., [1990] 2 S.C.R. 959.
(b) Trade Marks
1. BAB Holdings v. The Big Apple, January 22, 2002, FCTD (McKeown J.) Opposition/Standard of Review/ Distinctiveness/Material Date
Application for an order setting aside the Trade-marks Opposition Board's decision that refused the applicant's application to register BIG APPLE BAGELS & Design on the basis of non-distinctiveness.
Held: Application dismissed. The issues were what is the appropriate standard of review and did the Board err. As new evidence was not filed before the Court, the standard to be applied with respect to the factual findings and application of the law to the facts is reasonableness simpliciter. However, the standard to be applied to strictly legal questions (such as the proper date for determining distinctiveness and whether exclusive use must be proven throughout Canada in order to prove distinctiveness) is correctness. The Board did not err. The Board need not have dealt with all the circumstances set out in s. 6(5) since it is possible to refuse an application based on non-distinctiveness independent of the issue of confusion, provided that the ground has been so pleaded. The material date re distinctiveness is the date of filing of the statement of opposition - the date set out in s. 12(2) is not relevant in an application that is not under s. 12(2).
II. OPPOSITION BOARD DECISIONS
1. Leone International v. Licole Bijoux, January 10, 2002 (Bradbury) Confusion
Proposed-use application for MONTE LEONE for clothing namely men's dress shirts, sport shirts, polo shirts, knit shirts, golf shirts. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark LEONE registered for a variety of wearing apparel. No evidence or arguments were filed by either party.
Held: Application refused. The applicant did not meet its onus to show that confusion not likely.
2. Vancouver Sushiman v. Sushiboy Foods, January 10, 2002 (Bradbury) Confusion
Application for SUSHIBOY based on use for restaurant and take-out food services and on proposed use for clothing, drive-through food services, catering services, consultation in the field of food services, and educational services in the nature of cooking classes. Opposition based, inter alia, on s. 16 due to confusion with the mark VANCOUVER SUSHIMAN previously used for restaurant, catering and take-out food services and pre-packaged sushi.
Held: Application refused. The opponent only evidenced use of its mark in association with pre-packaged sushi prior to the material date but the applicant has not met the onus of showing that confusion between pre-packaged sushi and its wares/services is not likely. Although the opponent's wares were first sold primarily through grocery stores, there is a natural connection between the sale of fresh sushi through grocery stores and through catering/restaurant services. There is no evidence that Canadians are used to distinguishing between marks that differ primarily through the use of different words that refer to a male, e.g. boy vs. man.
3. Bacardi v. Havana Club Holding, January 18, 2002 (Herzig) Error on Trade-mark Register/Jurisdiction
Proposed-use application for HAVANA CLUB ANEJO RESERVA & Design for rum. HAVANA disclaimed. Opposition based, inter alia, on s. 30 because the applicant could not have been satisfied that it was entitled to use the mark in Canada given that it knew that an associated Canadian trade-mark registration was recorded in its name pursuant to a Cuban expropriation law that was not properly complied with and that could not in any event affect the ownership of a Canadian registration.
Held: Opposition rejected. The Registrar erred in recording the applicant as the owner of the associated registration. However, the Board must accept the registration at its face value as only the Federal Court can correct a registration; the Board does not have jurisdiction to disregard the Trade-mark Register.
4. Jubitz v. Canadian Tire, January 18, 2002 (Partington) Confusion
Proposed-use application for DRIVE LINE for an automotive newsletter. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent’s mark DRIVELINE registered for prepaid telecommunication services for use by truck operators.
Held: Application refused. The s. 12(1)(d) ground succeeded because the Hearing Officer was left in doubt as to the likelihood of confusion between the marks; such doubt must be resolved against the newcomer because it bears the onus. Although the parties' wares and services differ, the applicant's wares are directed to operators of motor vehicles, which would include truck drivers who might use the opponent's services, resulting in a potential overlap in the channels of trade.
5. Exxon v. Flex-o Canada International, January 18, 2002 (Partington) Section 30(i)/Confusion/Improper Statutory Declaration
Proposed-use application for FLEX-OIL for petroleum-based products, namely oils and lubricants. Opposition based, inter alia, on s. 30(i) because the applicant's declarant stated that the applicant has no intention to use the mark for the applied-for wares and s. 12(1)(d) due to confusion with the opponent’s mark FLEXON registered for industrial oils.
Held: Application refused. The s. 12(1)(d) ground succeeded because of the degree of resemblance between the marks as applied to overlapping wares which could travel through the same channels of trade, and considering that the opponent's mark has acquired some reputation. The s. 30(i) ground failed because the declarant's statement that the applicant did not intend to use the trade mark as of the date of his statement is not clearly inconsistent with the applicant's claim that, as of the filing date of its application, it intended to use the mark. Although the applicant's evidence did not take the form of a proper statutory declaration, the Hearing Officer overlooked the deficiency because the applicant's request for leave to submit a newly sworn declaration was overlooked by the Board.
6. General Housewares v. Fiesta Barbeques, January 18, 2002 (Partington) Descriptive When Sounded/Material Date/ Failure to Receive Notice of Oral Hearing
Proposed-use application for FIESTA GRILL GEAR & Design for barbeque accessories, namely barbeque cooking utensils, barbeque rotisseries and barbeque replacement parts. GRILL and GEAR disclaimed. Opposition based, inter alia, on s. 12(1)(b) because the words GRILL GEAR, which are the most dominant part of the mark, clearly describe the character of the applicant's wares.
Held: Opposition rejected. The Hearing Officer rejected the applicant's argument that design marks, by their nature, cannot be sounded and therefore cannot contravene s. 12(1)(b). A word mark which includes design features, such as the present mark, would be sounded by reference to the dominant words forming the mark. Here, although FIESTA is not visually the most prominent element of the mark, it is the most distinctive element and so the average person would sound the mark as FIESTA GRILL GEAR. Since FIESTA is not descriptive of the wares, the mark, when considered in its entirety, does not clearly describe the wares when sounded. The applicant unsuccessfully argued that the material date with respect to s. 12(1)(b) is the filing date of the application, rather than the date of the Registrar's decision. Because the opponent never received notice of the oral hearing, the Hearing Officer accepted further written submissions from both parties.
7. General Housewares v. Fiesta Barbeques, January 18, 2002 (Partington) Descriptive When Sounded/Material Date/ Failure to Receive Notice of Oral Hearing
Proposed-use application for GRILL GEAR & Design for barbeque accessories, namely barbeque cooking utensils, barbeque rotisseries and barbeque replacement parts. GRILL and GEAR disclaimed. Opposition based, inter alia, on s. 12(1)(b) because the mark, when sounded, clearly describes the character of the applicant's wares.
Held: Application refused. The Hearing Officer rejected the applicant's argument that design marks, by their nature, cannot be sounded and therefore cannot contravene s. 12(1)(b). A word mark which includes design features, such as the present mark, would be sounded by reference to the dominant words forming the mark. The mark, when considered in its entirety, clearly describes the wares when sounded. The applicant unsuccessfully argued that the material date with respect to s. 12(1)(b) is the filing date of the application, rather than the date of the Registrar's decision. Because the opponent never received notice of the oral hearing, the Hearing Officer accepted further written submissions from both parties.
8. Cadbury Confectionery Canada v. Duncan Valliant-Saunders, January 28, 2002 (Martin) Section 30(i)/Confusion
Proposed-use application for CANNABIS CRUNCH for chocolate bars comprising [sic] mainly of cannabis seeds. CANNABIS disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark CRISPY CRUNCH registered for chocolate bars and s. 30(i) because the applicant could not have been satisfied that it was entitled to use the mark because the proposed wares cannot be sold in Canada pursuant to various laws and regulations.
Held: Opposition rejected. Confusion not likely given the common adoption of the word CRUNCH by other traders in the confectionery industry. The s. 30(i) ground failed because only certain types of cannabis seeds cannot be sold in Canada and it is reasonable to assume that the applicant will comply with the relevant laws.
9. CIC Foods v. Argosy International, January 31, 2002 (Folz) Confusion
Proposed-use application for CANAGOLD for various dairy products, agricultural products and food products. Opposition based, inter alia, on s. 16(3)(b) due to confusion with the opponent’s mark CANOLA GOLD for which an application had been previously filed for cooking oil, shortening, margarine, salad oil, salad dressings, canola oil and mayonnaise.
Held: Application refused in respect of "edible oils, vegetable oils, margarine, canola oil, sunflower oil, linseed oil and shortening"; opposition rejected in respect of remaining wares in part because they would be sold in different sections of the grocery store from the opponent's wares.
10. Sony v. David P. Latchman, February 12, 2002 (Partington) Confusion
Proposed-use application for THE WONDER NETWORK for pre-recorded compact discs, compact discs for use with computers, video tapes, audio tapes, entertainment services namely broadcasting, video and interactive video services, satellite distribution of video and interactive video services, provision of interactive on-line video services and the production and distribution of video programming. NETWORK disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark SONY WONDER registered for audio and video tapes, theatrical films and printed matter namely books. The applicant did not file any evidence.
Held: Application refused for wares; opposition rejected for services. The applicant failed to meet its legal burden with respect to the wares; the applicant's wares overlap with the opponent's wares and could travel the same channels of trade. The applicant's services differ from the opponent's wares and would not travel the same channels of trade.
11. Canadian Council of Professional Engineers v. John Brooks, February 12, 2002 (Partington) Unlawful Use of Trade Mark/Descriptiveness/Section 12(1)(e)
Use-based application for BROOKS BROOKS SPRAY ENGINEERING & Design for operation of a business, namely distributing spray nozzles and manifolds for high and low pressure cooling, cleaning, conditioning and processing, gauges, hoses, connectors and couplings, filters and strainers, lubricators and flow regulators, and assembling and distributing fluid handling systems. SPRAY disclaimed. Opposition based, inter alia, on s. 30(i) because the applicant's use of the mark would be illegal since the applicant is not a professional engineer, s. 12(1)(b) because the mark in its totality is clearly descriptive or deceptively misdescriptive of the persons employed in the services and s. 12(1)(e) due to the resemblance to the official mark ENGINEERING.
Held: Opposition rejected. The s. 30(e) ground failed because the opponent did not show that only professional engineers are legally permitted to perform the applied-for services. The s. 12(1)(b) ground failed because, even if the word BROOKS was perceived to be primarily merely a surname and the words SPRAY ENGINEERING were found to be clearly descriptive, the mark when considered in its entirety is neither primarily merely a surname nor clearly descriptive. The s. 12(1)(e) ground failed because the mark is not identical to an official mark nor does it so nearly resemble an official mark so as to be likely to be mistaken for it.
12. Nach-o Fast v. LP International, February 15, 2002 (Folz) Confusion
Proposed-use application for NACHOEXPRESS for pre-packaged nacho chips, nacho cheese sauce and salsa dip. Opposition based, inter alia, on s. 16 due to confusion with the mark NACH-O FAST previously used for, inter alia, nachos.
Held: Application refused. The applicant failed to satisfy its onus given the resemblance between the marks, wares and trades and its apparent lack of interest in the proceedings.
13. Rooxs v. Edit, February 18, 2002 (Bradbury) Section 30(b)
Use-based application for NOSE Design for shoes, boots, slippers and sandals. Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since the date claimed.
Held: Application refused. The opponent's light evidence was met by the applicant's evidence. Although the applicant's affiant attested that the mark had been used, he did not say who had used the mark. On cross-examination, when the affiant was requested to provide the earliest invoice relating to the wares, he provided an invoice that referred only to a third party, with no explanation as to that party's role or relationship to the applicant.
14. James Industries v. Lauren Segal, February 18, 2002 (Bradbury) Section 30(b)/ Confusion
Use-based application for SPLINKY for plush toy (doll). Opposition based, inter alia, on s. 30(b) because the applicant has not used the mark since the date claimed and s. 12(1)(d) due to confusion with the opponent’s mark SLINKY registered for toys.
Held: Application refused. The applicant has not yet used her mark and there is a likelihood of confusion between the marks.
15. Best Western International v. Best Canadian Motor Inns, February 20, 2002 (Folz) Confusion/Descriptiveness
Use-based application for BEST CANADIAN MOTOR INNS & Design for hotel, restaurant and accommodation services; promotional services relating to hotel, restaurant and accommodation services. Each of the words in the mark has been disclaimed. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the mark BEST WESTERN registered for hotel services and s. 12(1)(b).
Held: Application refused because the mark is clearly descriptive - the design features are insufficient to render the mark registrable. The s. 12(1)(d) ground failed because of the inherent weakness of the marks, the low degree of resemblance between the marks, and the absence of any instances of confusion despite the fame of the opponent's mark.
16. The Investment Centre Financial Group v. Direct Line Insurance, February 27, 2002 (Folz) Confusion
Proposed-use application for PHONE HOME Design for insurance services etc. Colour red claimed as a feature of the mark. Opposition based, inter alia, on s. 16 due to confusion with the opponent’s mark THE LITTLE RED PHONE in respect of which an application had been previously filed.
Held: Application refused. The parties' services are identical and there is some degree of resemblance between the marks when sounded, the applicant's mark likely being sounded as THE RED HOME PHONE or THE RED HOUSE PHONE. The balance of probabilities with respect to confusion is equal - the applicant has not discharged its legal burden.
III. SECTION 45 DECISIONS
1. Rogers Law Office v. Carolina Herrara, January 16, 2002 (Savard) Sufficiency of Evidence/ Classification of Wares
CH & Design registered for women's jewelry, women's clothing, furs, handbags, soaps…, cosmetics…, table linen.
Held: Registration restricted to those wares shown to have been sold during the relevant time period. The registrant unsuccessfully argued that the sale of deodorant sticks and perfumed bath and shower gel ought to maintain "skin lubricant" in the statement of wares; the Senior Hearing Officer was not convinced that such products would be perceived by the public as "skin lubricants".
2. Viberg Boot Manufacturing v. Brooklyn Baseball, January 23, 2002 (Savard) Sufficiency of Evidence
ST. CATHARINES STOMPERS registered for a variety of wares and services.
Held: Registration expunged. The registrant's affiant stated that the mark was used in relation to each of the wares, explaining that "the use consisted of the incorporation of the ST. CATHARINES STOMPERS name on each item". The use of the word "incorporation" makes it unclear if the mark was used per se or with additional matter. Overall, the evidence contains only bald allegations of use and does not show any use of the mark.
3. Swabey Ogilvy Renault v. Acme Noodles, January 31, 2002 (Savard) Sufficiency of Evidence
LINA LINGUINI'S PASTA & GRILLE & Design registered for operation of a restaurant.
Held: Registration expunged. The evidence did not show use as it consisted of simply a declaration that the mark had been used on all of the registrant's menus, invoices, etc. during the relevant time period.
4. Saks v. Shirmax Retail, January 31, 2002 (Savard) Special Circumstances
ANTHONY SAKS & Design registered for various men's, women's and children's clothing accessories, clothing, and retail clothing store services.
Held: Registration expunged. The original owner of the mark had an agreement with Saks whereby Saks agreed to not interfere with its use and registration but such an agreement has no bearing on the outcome of s. 45 proceedings. The registrant claimed that after stopping use of the trade mark for a number of years due to economic bad times, it began taking active steps to reintroduce the mark the month that the s. 45 notice was issued. However, the evidence did not show the manner in which the mark was previously used and the sales figures were not broken down by mark. In addition, the arrangement made with creditors may have caused there to be no use due to circumstances beyond the registrant's control, but that did not apply to the entire period of non-use. Details were not provided of the efforts made prior to the issuance of the s. 45 notice to recommence use of the mark. The internal memo stating an intention to begin using the mark is insufficient on its own to excuse the absence of use. The resumption of use of the mark a year after the s. 45 notice issued is not a special circumstance that would support the maintenance of the registration.
5. Megaway v. American Soccer, January 31, 2002 (Savard) Sufficiency of Evidence
SCORE registered for various soccer-related wares.
Held: Registration restricted to those wares shown by invoices to have been sold in Canada during the relevant time period. The evidence was insufficient to conclude that the mark was in use in Canada in association with each of the wares during the relevant time period. The general statement that use of the mark in connection with the wares has occurred continuously over the last 14 years in Canada is a bald allegation lacking specificity. If sales occurred during the relevant time period, the affiant should have said so rather than be vague.
6. P.R. Argentina v. Bodegas Felix Solis, January 31, 2002 (Savard) Deviation from Registered Mark
LOS MOLINOS & Design registered for table wines.
Held: Registration maintained. The trade mark used differs from the mark as registered but the dominant features have been maintained. The requesting party made no written submissions whereas the registrant made some convincing arguments. Keeping in mind the purpose of s. 45 and considering that she was not convinced that the mark as used does not constitute use of the registered mark, the Senior Hearing Officer decided to maintain the registration.
7. 88766 Canada v. Barlow, Menard & Associates, February 14, 2002 (Savard) Nunc Pro Tunc Assignment/Normal Course of Trade/ Free Distribution of Wares
THE TRADE MARKER & Design registered for periodical publication.
Held: Registration expunged. The Trade-marks Office recorded a new owner subsequent to a request filed after the issuance of the s. 45 notice. The transfer document said that the original registrant "does hereby sell, assign and transfer… as and from" an earlier date. The Senior Hearing Officer held that such wording was indicative of a retroactive effect, rather than being confirmatory in nature; she therefore would only conclude that the transfer took effect as of the date of signature of the transfer document. The evidence filed showed use by the assignee, not by the owner during the relevant time period. In any event, the use shown was not "in the normal course of trade" because the publications are distributed free of charge to the owner's clients. There is no evidence that the distribution was done with a view to gaining profit, such as through the sale of advertising space or in anticipation of securing orders with respect to the publication - the publications are not the object of a normal commercial transaction. The use of the mark is more in respect of the services of keeping clients informed than in respect of wares.
8. ResortQuest International v. Quest Membership, February 14, 2002 (Savard) Definition of Services
QUEST registered for national hotel program providing discounted travel services for its members.
Held: Registration maintained. The Senior Hearing Officer rejected the requesting party's argument that the services offered by the registrant (offering discounts off of the rates of hotels and resorts) do not fall within the registered services.
9. Brouillette Kosie v. Molson Breweries, February 20, 2002 (Savard) Export of Wares/Normal Course of Trade/Section 4(3)
TRIBUTE registered for brewed alcoholic beverages.
Held: Registration maintained. The evidence showed three shipments to England of 24 bottles of beer bearing the trade mark for "market assessment purposes". Although s. 4(3) has been interpreted as requiring that the wares be sent out of Canada in a commercial transaction, there is no requirement that the transaction be "in the normal course of trade". Although the shipping and handling charges exceeded the amount on the invoices, this is not evidence that the transactions were not commercial transactions.
