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(b) Trade Marks 1. Saputo Groupe Boulangerie v. National Importers, October 28, 2005 FCTD (Noël J.) Opposition Appeal/Confusion/Section 50(2)/Hearsay/Opinion Evidence/Interpretation of Statement of Wares Appeal from Registrar's decision that rejected the appellant's opposition to the respondent's application to register CARAMELLA. The appellant owns the trade mark AH CARAMEL! and the Registrar found that confusion between the two marks was not likely because no one is entitled to monopolize a descriptive word such as “caramel” in association with food products. Held: Appeal dismissed because confusion is not likely. There is a significant difference in the appearance and sound of the 2 marks, as well as a difference in the idea suggested by each, and there are other marks that incorporate the word “caramel”. Most of the AH CARAMEL! products are found in places in grocery stores that differ from the place where the respondent's CARAMELLA spread is located. The Court stated, “The word 'namely' indicates that the words following it are examples.”; on this basis, it concluded that the appellant's statement of wares (snacks and desserts, namely cakes, pastries, danishes, muffins, donuts, granola bars, flaky pastries and crackers) is sufficiently broad to include spreads, i.e. the respondent's wares. As new evidence, the appellant's affiant stated that there was a licence with another party for wares similar to those of the respondent. The respondent argued that s. 50 wasn't invoked because the appellant did not file the licence agreement. However, it did file labeling which showed that the presumption set out in s. 50(2) applied. Despite this presumption, the licensee's sales figures are hearsay in the hands of the licensor's affiant. The Court also ruled that the opinion evidence of the appellant's vice-president of marketing was inadmissible.
2. Wing Wah Food Manufactory v. China Brands Food, October 28, 2005 FCTD (Hansen J.) Opposition Appeal/Inferred Assignment of Mark/Section 30(b)/Adverse Inference Appeal from Registrar's decision that rejected the appellant's opposition to the respondent's application to register PEONY BRAND & Design. The relevant ground of opposition was pursuant to s. 30(b), i.e. that the applicant could not claim a date of first use of 1979 because there is no evidence that the mark was assigned to it when it was incorporated in 1986. Held: Appeal dismissed. The applicant's affiant, who was not proficient in English, replied “no” when asked if there was an assignment document, but this does not preclude the existence of an oral assignment. The evidence as a whole supports the Registrar's conclusion that the applicant was incorporated to carry on the business of the partnership. An assignment need not be in writing and no adverse inference should be drawn from the applicant's failure to file further evidence on appeal. The original owner's partnership registration expired before the alleged assignment, but the Court commented that the failure to comply with provincial administrative requirements did not affect the existence of the partnership.
3. Canada Post v. United States Postal Service, November 30, 2005 FCTD (Mactavish J.) Judicial Review/Official Marks/Section 9(1)(n)(iii)/Interpreting Bilingual Legislation/Effect of Paris Convention/Standing to Challenge Decision Canada Post applies for judicial review of the Registrar's decision to give public notice of the adoption and use of 13 official marks by the United States Postal Service (USPS). Held: Application allowed. USPS is not entitled to official marks because it is not a public authority in Canada. The French version of s. 9(1)(n)(iii) makes it clear that the official mark must be adopted by a Canadian public authority. Applying the shared or common meaning rule of the interpretation of bilingual legislation, the narrower French version ought to be adopted. In order to qualify as a public authority, a party must be subject to governmental control within Canada. In the Ontario Association of Architects decision, the Court of Appeal held that s. 9(1)(n)(iii) should not be given an expansive meaning. Mactavish J. stated that to the extent that her interpretation of the legislation is inconsistent with that in Canada Post Corporation v. Post Office (2000), 8 C.P.R. (4th) 289 (FCTD), she would respectfully decline to follow it. The Paris Convention does not assist USPS because “official marks” are a largely Canadian creation. Canada Post has standing because it would be directly affected by the Registrar's decision.
4. Vibe Ventures v. 3681441 Canada, December 5, 2005 FCTD (Harrington J.) Section 57 Expungement Application to expunge the registration for VIBE Design for clothing, based on confusion with Vibe Ventures' prior registered mark VIBE and unregistered VIBE Design mark for magazines. Vibe Ventures does not sell clothing but its mark does appear on various promotional articles, including some clothing. The design features of VIBE Design are essentially identical to the unregistered design used by Vibe Ventures. Held: Application allowed. Confusion is likely because of the identical script used. In finding that there was confusion with the unregistered VIBE Design mark and not the registered VIBE word mark, Harrington J. said, “I am of the view that the degree of resemblance between the VIBE trade mark and VIBE Design trade mark in sound or in the ideas suggested by them do not create confusion. 'Vibe', however the English language may be developing, is not so unique as to lend itself exclusively to a particular culture, a particular age group, particular wares such as magazines, clothing or automobiles, or services.” In allowing the application based on Vibe Ventures' unregistered mark, Harrington J. stated that this is not a case where 2 marks are confusingly similar, this is a case where they are identical. Although Vibe Ventures' VIBE mark is not famous, both parties are targeting the same clientele with an identical VIBE Design mark, so it matters not that the wares and channels of trade differ.
5. Suzanne's v. Auld Phillips, December 12, 2005 FCA (Rothstein, Noël, Malone J. J.A.) Section 57 Expungement/Loss of Distinctiveness Through Infringement Appeal from decision that expunged a registration for SUZANNE”S under s. 57. The appellant argued that the Trial Judge erred in finding that the mark had lost its distinctiveness and become publici juris as the result of a single infringer. Held: Appeal dismissed. It is possible for a single infringer to be the cause of the loss of distinctiveness.
6. BMW v. Nissan, December 16, 2005 FCTD (von Finckenstein J.) Interlocutory Injunction/Irreparable Damage Motion for an interlocutory injunction to restrain Nissan from using M and M6, which BMW claims are its unregistered trade marks. Held: Motion dismissed. “BMW firmly believes that impairment of its brand equity is occurring but can offer no proof or indicator. Rather it is asking the court to infer it.” This the court was unwilling to do, but it did order that the case be put under case management with an expedited schedule so that any potential damages are kept to a minimum.
(c) Copyright 1. Canadian Copyright Licensing Agency v. U-Compute and Riaz A. Lari, December 7, 2005 FCTD (Lemieux J.) Contempt Proceedings Contempt proceedings concerning Mr. Lari's disobediance of several court orders that prohibited him from copying textbooks. There was evidence of the sale of 1 copy of a textbook in which the plaintiff manages the reproduction rights and massive circumstantial evidence that Mr. Lari was operating a copying enterprise targeting university students. Held: The evidence supports a finding of contempt based on proof beyond a reasonable doubt. Mr. Lari was sentenced to a 6 month prison term, which was suspended on the condition that he comply with the permanent injunctions and perform 400 hours of community service.
II. OTHER COURT DECISIONS1. McCurdy Enterprises v. Shamrock Spring Water, November 25, 2005 NLTD (Orsborn J.)Trade mark Ownership McCurdy seeks a declaration that it owns the True North and Newfoundland Kool brand names for bottled water in Newfoundland and Labrador. McCurdy, as purchaser from a secured creditor of True North Springs ("TNS"), claims ownership as successor in title to TNS, which started using the brand names in 1999. In 2003, a Mr. Bussey purported on behalf of TNS to convey the names to Shamrock. Held: Declaration granted, together with an injunction prohibiting Shamrock from using the names. Since all necessary registrations of the security documentation were in place in 2002, Shamrock was a purchaser with notice and the conveyance through Bussey was ineffective.
2. Edward Chapman Ladies' Shop v. Edward Chapman, January 4, 2006 BCSC (Shaw J.) Trade marks/Passing Off Each company is suing the other for passing off its business as being associated with that of the other. Chapman's and Edward Chapman's are well known in Vancouver. The plaintiff has a reputation in the women's wear business and the defendant has a reputation in the men's wear business. In 1982, the defendant opened a women's wear division called Chapy's. In 2002, the defendant began selling both men's and women's clothing directly under the name Edward Chapman Limited. The plaintiff claims that the defendant, by dropping its trade name Chapy's and directly linking the name Edward Chapman to its sale of ladies' clothing, is passing off that aspect of its business as associated with the business of the plaintiff. Held: Injunction granted to the plaintiff prohibiting the defendant's use of Edward Chapman in association with women's wear. Where competitors have concurrent rights to use the same name, there will be no passing off unless one party does something which increases the risk of confusion that is naturally attendant upon the sharing of the same name. The defendant's move to eliminate the trade name Chapy's and market women's clothes directly under the name Edward Chapman was likely to increase the confusion in the public's perception of the two businesses.
3. Stegg v. Moffatt, January 5, 2006 SKQB (Gabrielson J.) Interim Injunction/Irreparable Harm Application for an interim injunction by Stegg to prevent Moffatt from representing that its EAGLELINE product is the successor to Stegg's BIKE PRO product or that it is otherwise authorized to sell the BIKE PRO product. Stegg alleges that the EAGLELINE product is a knock-off of its BIKE PRO product. Held: Injunction granted. Irreparable harm exists because Stegg may suffer harm to its goodwill and market share and Moffatt's marketing approach makes it very difficult, if not impossible, to establish whether customers purchased the EAGLELINE product based upon a belief that Eagleline was a successor product or that they were purchasing BIKE PRO products.
4. 2703203 Manitoba v. Parks, January 6, 2006 NSSC (Richard J.) Copyright Infringement/Get-Up/Punitive Damages The plaintiffs sell a publication entitled COFFEE NEWS which has established a particular get-up over a long period of time. The defendant embarked upon a program with the aim of replacing the COFFEE NEWS publication with their FLYING COW publication. To accomplish this objective, the defendant used the design, format and other aspects of the COFFEE NEWS to cause confusion so that advertisers, distributors and readers might be persuaded that the two publications were "sister" editions rather than competitors. Held: Injunction granted to prevent the defendant from publishing the FLYING COW in its present format and from further infringing on the plaintiff's copyright and from passing off. It is not material that the defendant's product is identified by a different name since the get-up is sufficiently similar that the public would be confused into thinking that the two are associated. Because the conduct of the defendant was highly reprehensible, punitive damages of $100,000 were awarded.
III. OPPOSITION BOARD DECISIONS 1. Miller International v. 3681441 Canada, October 28, 2005 (Carrière) Confusion Proposed-use application for ROCKY for various clothing. Opposition based, inter alia, on s. 12(d) due to confusion with the opponent's mark ROCKIES registered for clothing. Held: Application refused. Given the similarity between the marks and their wares and the potential overlap in their channels of trade, the applicant failed to discharge its burden to prove that confusion is not likely.
2. Intel v. Steven Emeny, October 28, 2005 (Bradbury) Section 30(e)/Clearly Inconsistent Statement/Deemed Abandonment/Section 38(7.2)/Confusion Proposed-use application for IDEAS INSIDE for a long list of wares and services. Opposition based, inter alia, on s. 30(e), non-registrability based on s. 38(7.2), and s. 12(1)(d) due to confusion with INTEL INSIDE Design and THE COMPUTER INSIDE registered for computer related wares and services. Held: Application refused. On cross-examination, Mr. Emeny confirmed that the primary purpose of the long list of wares was to prevent other people from using the trade mark for those wares. This was held to be clearly inconsistent with the statement made in the application concerning the intent to use the mark and satisfied the opponent's light initial burden with respect to s. 30(e). As Mr. Emeny did not establish which wares he truly intended to use the mark with, the s. 30(e) ground succeeded in full. Non-registrability under s. 38(7.2) is not a proper ground of opposition. In any event, the Registrar is entitled to grant a retroactive extension of time after the initial deadline for filing evidence has expired. Regarding s. 12(1)(d), the opponent has not proven that it has a family of INSIDE marks. Despite the opponent's successful marketing of its INTEL INSIDE Design, confusion is not likely because the applicant's mark is sufficiently different to prevent confusion.
3. GA Modefine v. Di Gio', October 28, 2005 (Bradbury) Confusion Proposed-use application for LE SPOSI DI GI_ for wedding dresses, formal dresses for ceremony; accessories for wedding dresses namely, hats, veils, scarves, gloves, artificial flowers. Opposition based, inter alia, on s. 16(3) due to confusion with GI_ and ACQUA DI GI_, which were the subject of previously filed applications for clothing. Held: Opposition rejected. Confusion not likely in view of the inherent weakness of the common component GIO, the third party adoption of GIO marks in similar fields, and the appearance of an unexplained third party's name on the opponent's wares. The opponent argued that Gio is the personal name of the well known clothing designer, Giorgio Armani. However, it did not prove that Giorgio Armani is a well-known designer, or that his nickname is a designer mark, or that there is a relationship between that individual and the opponent.
4. Direct Plus Food Group v. Hong Rock Trading, November 4, 2005 (Bradbury) Confusion/Admission Against Interest Proposed-use application for GOODLIFE & Design for rice, vegetables; namely beans, dried fruit, non-carbonated fruit juices, vegetable oil, soya sauce, and monosodium glutamate (msg). Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark GOODLIFE registered for various food. Held: Application refused. The applicant has not met its case to show that confusion is not reasonably likely. There have been substantial sales and significant promotion of the opponent's mark, with no evidence of any use of the applicant's mark. The opponent took the position that the marks were not confusing when it defended the present applicant's opposition to the registration of the opponent's mark. However, the Board Member did not treat that as an admission against interest because the facts in the two cases are not identical, nor are their material dates. Moreover, the Board noted that the applicant took the position that the marks were confusing in that earlier case.
5. Spirits International v. SC Prodal 94, November 9, 2005 (Bradbury) Section 30(a)/ Confusion/Foreign Decisions/Distinctiveness Proposed-use application for STALINSKAYA & Design for alcoholic beverages, namely distilled grain, wheat and rye spirit except beer. Opposition based, inter alia, on s. 30(a) and non-distinctiveness due to confusion with the opponent's mark STOLICHNAYA registered and used for vodka. Held: Application refused. The s. 30(a) ground succeeded because it was clear that the applicant intended to use its mark for vodka; despite the applicant's argument concerning the restrictive meaning of “vodka” in common parlance, vodka is the ordinary and specific term for the applicant's wares. Overall, each of the marks suggests nothing more than a foreign-language mark, possibly in the Russian language. State of the register evidence showed that Canadians might be used to distinguishing vodka trade marks that appear to be in the Russian language, in that they would not assume that all vodkas bearing a Russian-appearing mark share a common source. While acknowledging that foreign decisions are not binding on the Board, and noting that there were differences with respect to both the law and the evidence, the Board Member quoted the U.K. Trade Marks Register's discussion of the resemblance between the two marks and found that it echoed and reinforced her own s. 6(5)(e) analysis. The distinctiveness ground of opposition succeeded because the applicant failed to meet its onus to show that confusion was not likely. The applicant's mark does not distinguish its wares from the STOLICHNAYA wares as a result of “the 'foreign' nature of the dominant words in each mark, and their considerable resemblance overall, combined with the lack of use or acquired reputation of the applicant's mark in Canada”.
6. Islamic Society of North America - Canada v. Bank of Montreal, November 10, 2005 (Bradbury) Distinctiveness/ Descriptiveness Proposed-use application for HALAL for mutual fund services. Opposition based, inter alia, on s. 12(1)(b) and non-distinctiveness because Muslims use HALAL to indicate that wares/services are permissible pursuant to the teaching of the Quran Held: Application refused. The opponent met its initial burden by showing that the word HALAL is used to describe wares and services that are permitted under Islamic law. The descriptive meaning of HALAL makes it incapable of distinguishing the applicant's proposed services. In addition, the application is not registrable pursuant to s. 12(1)(b).
7. Strauss Enterprises v. Wings International Marketing, November 15, 2005 (Bradbury) Confusion Proposed-use application for WINGS HEARTDROP FORMULA & Design for organic herbal remedies for medicinal and therapeutic purposes, sold in the form of a liquid herbal tincture. Opposition based, inter alia, on s. 12(1)(d) due to confusion with the opponent's mark HEART DROPS registered for medicinal/herbal remedies. Held: Application refused. Given the evidence that the opponent was the only party to use HEARTDROPS and that its use was both lengthy and significant, a consumer who was familiar with the opponent's HEARTDROPS herbal remedy might, as a matter of immediate impression, think that a herbal remedy sold under the WINGS HEARTDROP FORMULA & Design mark originated from the same source.
8. Canadian Council of Professional Engineers v. Rothenbuhler Engineering, November 28, 2005 (Herzig) Descriptive of Persons Employed in the Production of the Wares/Amendment to Claim the Benefit of Section 14 Use-based application for ROTHENBUHLER ENGINEERING for engineering services and various electronic wares. ENGINEERING disclaimed. Opposition based, inter alia, on s. 12(1)(b) because the mark is clearly descriptive or deceptively misdescriptive of the persons employed in the production of the wares and services. Held: Application refused. The s. 12(1)(b) ground succeeded. Although Rothenbuhler is not a common surname in Canada, it is a surname and the evidence shows that it is common for engineering firms to use a surname as a component of their business names - therefore, in context, ROTHENBUHLER would be perceived as a surname. In the present case, it would be clear to a purchaser of the applicant's sophisticated electronic wares or services that such wares/services emanate from an engineering firm employing qualified engineers. “The mark as a whole sends the clear, if elliptical, message that qualified engineers are employed in the production of the applicant's wares and services.” Further, the term ENGINEERING forms a significant part of the applied for mark. Request for leave to amend the counter statement to claim the benefit of s. 14, which was filed by the applicant after the written argument stage, was denied because of the potential prejudice that would be caused to the opponent at such a late stage in the proceedings. If leave had been granted, the claim would have failed because the U.S. registration relied upon had not issued when the Canadian application was filed.
1. Donahue, Ernst & Young v. Tystar, October 31, 2005 (Folz) Special Circumstances R & Helmet Designs registered for providing entertainment and amusement through the medium of football games… clothing, drinking ware, etc. Held: Registration restricted to “providing entertainment and amusement through the medium of football games”. The owner of the registration is a financial investment company that acquired the marks when it realized on its security interest in the assets of the now defunct Ottawa Rough Riders professional football club. The performance of the registered services in the ordinary course of trade is dependent upon the membership in a football league and efforts to acquire a CFL franchise have been unsuccessful. The absence of a CFL franchise in Ottawa during the 3 years preceding the s. 45 notice was held to be a reason for not using the marks that was beyond the owner's control. The registrant did succeed in entering into a license with the successful franchisee for the use of the R & Helmet Designs on season tickets for its 2002 games, but the s. 45 notice issued in 2001. Under the license, the registrant had control over the character and quality of the tickets, not the entertainment services. Nevertheless, the Board Member was prepared to find that the use accrued to the registrant's benefit on the basis that it can be inferred that the services would have to comply with the standards of the CFL and “the registrant's standards for the services of the licensee are likely set by reference to… the standards of the CFL.” Thus the Board Member found that the registrant had taken active steps to commence use of the marks. “[G]iven the unique and somewhat unusual circumstances of this case”, a new s. 45 notice was issued concurrently with this decision.
2. Donahue, Ernst & Young v. Tystar, October 31, 2005 (Folz) Special Circumstances/Deadwood OTTAWA ROUGH RIDERS and 9 related marks registered for providing entertainment and amusement through the medium of football games… clothing, drinking ware, etc. Held: Registrations expunged. The marks are deadwood. They have not been used since the revocation of the CFL franchise. The current owner of the marks is a financial investment company that acquired the marks when it realized on its security interest in the assets of the now defunct Ottawa Rough Riders professional football club. Although it has from time to time tried to negotiate with potential new franchisees for the use of these marks, no agreement was ever reached. When a new CFL franchise was finally awarded for the city of Ottawa, the new franchisee, the Ottawa Renegades, was licensed for the use of some of the former franchisee's marks, but not the marks which are the subject of these notices. The registrant submits that it is not unknown for a new franchisee to return to a club's original name after a number of years, but there is no evidence that this will occur in the present case and any such reversion is beyond the control of the registrant. Mere intention to resume use is insufficient to maintain a registration and it does not appear that the registrant will have an opportunity to use any of these marks in the near future.
3. Riches, McKenzie & Herbert v. Tekcon Electronics, November 9, 2005 (Carrière) Use on Invoices TECKON Design registered for computers and related wares. Held: Registration expunged. The handwritten annotation “TECKON” on the bottom left corner of 3 invoices might have constituted use of the mark if there was evidence that the invoices accompanied the wares.
4. Reid Schmidt v. Terminix International, November 10, 2005 (Carrière) Use by Intermediary TERMINIX registered for termite and pest control services. Held: Registration maintained. The registrant, a U.S. company, provides its services to several large American commercial customers who have locations in Canada. When services are required in Canada, the registrant contacts a subcontractor who performs the services on behalf of the registrant. The subcontractor provides the Canadian customer with a service ticket of the registrant (which displays the trade mark) and the registrant issues the invoice. Service tickets and invoices for the relevant time period have been provided and these satisfy the s. 45 requirements. The registrant's mark also appears in advertisements that appear in magazines that circulate in Canada and on its website (for which the monthly breakdown of Canadian visitors has been provided).
5. Bennett Jones v. Bouygues Telecom, November 15, 2005 (Bradbury) Sufficiency of Evidence Circle Design registered for telephones … installation, maintenance and repair of telecommunications. Held: Registration expunged because the only evidence related to a date after the s. 45 notice and there was no explanation of why use during the material time period was not provided.
6. 9070-2424 Québec v. Medipac International, November 15, 2005 (Bradbury) Special Circumstances GENERATIONS registered for newspapers … advertising, marketing, informational, educational and entertainment services. Held: Registration expunged. There were 6 years of non-use, the last 4 of which the registrant attempted to justify for reasons such as the departure of key personnel. Such an excuse does not justify such a long period of non-use.
7. Riches, McKenzie & Herbert v. KOM Networks, November 18, 2005 (Bradbury) Normal Course of Trade/Use in Invoices/Specificity of Registered Wares OPTIFILE registered for computer hardware and software. Held: Registration restricted to computer software. (The registrant did not claim to be using the mark with hardware.)The Registrar was prepared to infer that the sales were within the registrant's normal course of trade. The invoices satisfied s. 4(1) because the “bill to” party was the same as the “ship to” party. There is no need for the registrant to identify the function or area of use of its software.
8. Registrar of Trade-marks v. Spirits International, November 18, 2005 (Bradbury) Variations in Mark STOLICHNAYA CRISTALL & Design registered for vodka. Held: Registration maintained. Although the label in use shows words in addition to those that appear in the registered design mark, the words are of a descriptive or “ad copy” nature and the mark has retained its character.
9. Riches, McKenzie & Herbert v. Park Pontiac Buick GMC, November 18, 2005 (Bradbury) Free Distribution of Wares WICKED registered for automobiles and trucks, clothing and operation of an automobile and truck dealership for the sale of automobiles and trucks. Held: Registration amended to delete clothing. The registrant distributed free clothing in order to promote its business; such does not qualify as use in association with wares in accordance with s. 4(1).
10. Ziaja v. Jamieson Laboratories, November 21, 2005 (Folz) Use with Specific Wares A-RETINOL registered for ingredient in a cosmetic cream. Held: Registration expunged. The evidence showed use with cosmetic creams, not with one of its ingredients. (In a decision issued the same day regarding a registration for the same mark for “cosmetics, namely creams”, that registration was maintained.)
11. Riches, McKenzie v. Jagotec, November 22, 2005 (Carrière) Special Circumstances/Hearsay VISIBLE YOUTH registered for cosmetics and pharmaceutical substances. Held: Registration expunged. The registrant has not made use of the mark since it acquired it almost 2 years ago. The fact that “it became apparent to the Registrant that the goods for which the Mark would be used required considerable reworking before becoming a viable commercial product” can only be interpreted as a deliberate decision on its part and does not justify the non-use. The Registrar treated evidence that appeared to originate from the former owner as inadmissible hearsay.
12. Desjardins Ducharme Stein Monast v. Baird-Neece Packing, November 24, 2005 (Savard) Invoices Referring to Distributor/Compliance with Other Legislation POCAHONTAS registered for fresh citrus fruit. Held: Registration maintained. The use shown is by the registrant - it matters not that the invoicing was done by an agent/distributor. The association of the mark with the wares when they were delivered to retailers is sufficient; the mark need not be associated with the wares when they are sold to consumers. Compliance with other legislation is not a relevant consideration in s. 45 proceedings.
13. Sara Lee v. Kretschmar, November 24, 2005 (Savard) Sufficiency of Evidence/Distinctiveness BALL PARK registered for hot dogs and processed meat. Held: Registration maintained. A fair reading of the affidavit as a whole enabled the Registrar to conclude that the registrant used the mark in Canada during the relevant time period. The fact that the packaging provided had a “best before date” that post-dated the s. 45 notice is not significant since the packaging was furnished to show the manner in which the mark was associated with the wares during the relevant time period. The fact that trade marks owned by third parties also appear on the packaging raises a distinctiveness issue, but distinctiveness is not an issue in s. 45 proceedings.
14. Smart & Biggar v. Scott Paper, November 24, 2005 (Savard) Special Circumstances/Deadwood VANITY registered for paper and paper products. Held: Registration restricted to “paper products” as there was no evidence concerning “paper”. Six months before the s. 45 notice, the registrant was developing concrete plans to re-launch the VANITY brand and steps were taken to bring them to market. Sales began less than 2 months after the notice. Special circumstances can be relied upon even though the registrant did not provide the date of last use and reasons for the non-use. Since the current owner acquired the mark 13 years ago, the Registrar considered that to be the period of non-use. Since no excuse for non-use was given, the Registrar inferred that the absence of use was due to a voluntary decision of the registrant. “[T]he fact that the registrant took steps prior to the notice date and realized sales shortly after the notice date is of paramount importance and clearly shows that the registrant's trade mark is not deadwood.”
15. Cassels, Brock & Blackwell v. Accessories d'Autos Nordiques, November 24, 2005 (Savard) Sufficiency of Evidence/Use on Store Bags and Signs NORDIQUES registered for a long list of tools and automobile accessories. Held: Registration restricted to those wares shown to bear the trade mark and those wares sold in bulk with the trade mark posted in front of the shelves. The remaining wares were deleted because the display of the mark on store signs, bags and invoices is use in association with the business, not the wares.
16. Blake, Cassels & Graydon v. South Nepean Development, November 30, 2005 (Savard) Sufficiency of Evidence CHAPMAN MILLS registered for construction and development of real estate; property management and administration; construction, development, management, administration, financing through the provision of funds to others, rental, leasing, and acquisition of sale of residential, commercial, industrial real estate, including residences, hotels, shopping centres and office buildings. Held: Registration restricted to those services for which use was shown. “Given the presence of the word 'including'… it is not necessary for the registrant to show use of its trade mark with specific types of commercial real estate such as 'hotels, shopping centres or office buildings' rather simply with the services relating to commercial real estate.”
17. La Española Alimentaria Alcoyana v. Aceites Del Sur, November 30, 2005 (Savard) Hearsay LA ESPANOLA & Design registered for olive oil and olives. Held: Registration expunged. An affidavit from an articling student who received information from the Spanish law firm acting for the registrant is inadmissible hearsay. The registrant unsuccessfully argued that the exhibits filed by the articling student should be considered.
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