Date: 20061207
Docket: T-148-06
Citation: 2006 FC 1468
Toronto, Ontario, December 7,
2006
PRESENT: The Honourable Barry Strayer
BETWEEN:
JAGOTEC
AG
Applicant
and
RICHES, MCKENZIE & HERBERT
LLP
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This
is an appeal from the decision made on behalf of the Registrar of Trade-marks
by a Member of the Opposition Board (Member) of November 22, 2005 to expunge
the applicant’s trade mark from the register under section 45 of the Trade-marks
Act, R.S.C. 1985, c. T-13 (Act). The trade mark consists of the words VISIBLE
YOUTH, to be used in association with various skin-care products.
[2]
The
relevant period within which the registrant was required to prove use at some
time was October 24, 1999 to October 24, 2002. The present registrant became
the owner of the mark by assignment on August 15, 2001. The evidence of use before
the Member, and before the Court on appeal, pertained to the period when its
predecessor, SkyePharma PLC, an English company, was the registrant of the
mark.
[3]
The
Member found that the evidence of use of that mark during the relevant period
by SkyePharma PLC was inadequate and therefore the mark should be expunged. On
this appeal two new affidavits were filed: one of Thomas Zech, a Vice-President
of SkyePharma, Inc. (Skye) of California, a subsidiary of
SkyePharma PLC. According to him, under direction from the registrant parent
company Skye managed the sale and distribution of Visible Youth products in Canada through its
Canadian distributor PharmApprove of Brampton, Ontario. The other new affidavit
was sworn by Patricia Anderson, at the relevant times President of
PharmApprove. In her affidavit she described a sales process whereby her
company received orders from Canadian customers and directed a warehouse in Toronto to ship the product
to the Canadian purchaser, with a copy of the order being sent to Skye. Skye
issued invoices to, and received payment from, Canadian customers. It also kept
records of Canadian sales and provided copies of those records from time to
time to PharmApprove.
[4]
Both
affidavits had exhibits of invoices issued during the period, sales records,
and pictures of the products as sold bearing the words VISIBLE YOUTH. Pictures
of advertising material were also exhibited.
[5]
It
is well settled that in a section 45 proceeding it is not necessary that the
registrant produce detailed and complete records of use. Only a prima facie
case of use need be shown. Proof of a single sale if bona fide during
the relevant period is enough: see Philip Morris Inc. v. Imperial Tobacco
Ltd. et. al. (1987), 13 C.P.R. (3d) 289; Lewis Thomson & Sons Ltd.
v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483; Vogue
Brassière Inc. v. Sim & McBurney (1999), 5 C.P.R. (4th) 537
(all F.C.T.D.).
[6]
The
applicant does not press the point that the Member erred in his factual
findings but instead relies on the new affidavits filed on the appeal. In
assessing this new evidence I must make new factual findings and therefore the
standard of review is correctness: see John Labatt Ltd. et. al v. Molson
Breweries (2000), 5 C.P.R. (4th) 180 at 196 (F.C.A.).
[7]
I
am satisfied that on the basis of the two new affidavits the applicant has
demonstrated that during the relevant period, at least prior to the assignment
of the trade mark to the present registrant in August 2001, the trade mark was
used through sales of the wares in Canada in containers or packaging bearing
the words VISIBLE YOUTH. The invoices, brochures, and sales records do not per
se prove such use, but they corroborate the evidence of the two affiants
that such sales occurred.
[8]
The
respondent also argues that the words VISIBLE YOUTH as they appeared on the
products were not a proper depiction of the trade mark as registered. It was
said that, as presented on containers and packaging, the two words were placed
one above the other with either a horizontal line or design between the two
words. On first impression I find this argument unconvincing. I believe any casual
observer would immediately associate the two words as part of a descriptive
expression. In particular, it would be unnatural to interpret the adjective
“visible” as standing alone without a noun to modify.
[9]
I
will therefore allow this appeal with costs to the applicant.
JUDGMENT
It is hereby ordered and adjudged that:
1.
The
application for judicial review be allowed with costs to the applicant;
2.
The
decision of the Member of the Opposition Board of November 22, 2005 be set
aside; and
3.
Registration
No. TMA393,144 be maintained.
“Barry
Strayer”
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