[1] The phrase "use it or lose it" is commonly used in relation to section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act). This matter relates to two appeals by NTD Apparel Inc. (NTD) from decisions of the Registrar of Trade-marks (the Registrar) dated December 14, 2001, to expunge trade-mark registration no. 314,512 (Court file number T-239-02) and trade-mark registration no. 316,149 (Court file number T-240-02). Both registrations are for the trade-mark KOALA BLUE. The appeals involve the same parties, the same trade-mark, the same factual basis and the same submissions on law.
FACTS
[2] Trade-mark no. 314,512 was filed on January 19, 1984, in relation to the following wares:
Men's, ladies and children's clothing, namely long pants, short pants, blue jeans, shirts, sweaters, blouses, belts, hats, denim jackets; outer-wear, namely jackets, coats, ski jackets, pants and snowsuits.
[3] Trade-mark no. 316,149 was filed on October 3, 1984, in relation to a significantly expanded list of clothing, as wares, as well as in relation to services identified as the "operation and management of retail clothing stores".
[4] Koala Blue Inc. (Koala Blue) is recorded in the Canadian Trade-marks Office as the owner of the two registrations in issue. Koala Blue was declared bankrupt in 1992 and the appellant, NTD, now owns the above noted registrations by virtue of a series of unregistered assignments that occurred subsequent to the bankruptcy. The appeals from the Registrar's decisions were originally launched by Koala Blue. By order of McGillis J. dated May 20, 2002, NTD was made a party, Koala Blue ceased to be a party and the style of cause was amended accordingly.
[5] NTD is a company organized under the laws of Canada and has a principal place of business in Montreal, Quebec. Its executive vice-president, responsible for trade-mark matters, resides in southern California. The rights in the KOALA BLUE marks were transferred to NTD by a nunc pro tunc assignment executed January 21, 2000, effective January 27, 1998. In June, 2001, NTD's United States counsel contacted Canadian counsel to initiate a review of the status of the KOALA BLUE registrations in Canada. The results of the review revealed that nos. 416,824 and 587,243 for the marks KOALA BLUE & DESIGN and KOALA BLUE had been allowed to go abandoned on October 27, 1992 and April 13, 1995 respectively and that no. 301,687 for the mark KOALA BLUE & DESIGN was expunged on November 28, 2000, for failure to renew the registration. More relevant to this matter, it was discovered that the due date for renewing registration no. 314,512 was May 23, 2001, (a 6 month grace period existed) and that the due date for renewal of registration no. 316,149 was July 11, 2001.
[6] By correspondence dated July 12, 2001, Canadian counsel (Riches, McKenzie & Herbert LLP) requested renewal of registration nos. 314,512 and 316,149 for the KOALA BLUE mark and, at the same time, requested that the law firm be recorded as the representative for service of the registrant of the two registrations.
[7] Meanwhile, unbeknownst to NTD or its counsel, the Montreal law firm of Ravinsky Ryan made a request to the Registrar, pursuant to section 45 of the Act, to require the registered owner of the KOALA BLUE trade-mark registrations to furnish evidence demonstrating that the registered trade-mark was in use in Canada during the 3 years preceding the Registrar's notice, or showing special circumstances excusing the absence of use of the trade-mark. On July 5, 2001, the Registrar issued section 45 notices, accompanied by copies of the trade-mark registrations and practice notices, to the registered owner Koala Blue. NTD, not being the registered owner, did not receive the notices and did not file evidence. On December 14, 2001, the Registrar issued decisions expunging the registrations for failure to file evidence as required by section 45 of the Act. At the time of the Registrar's decisions, Canadian counsel was registered as the representative for service of NTD with respect to the registrations. Therefore, NTD received, through its Canadian counsel, copies of the Registrar's decisions. When it received the decisions, NTD and its counsel (in the United States and in Canada) were "... in the process of reviewing the KOALA BLUE marks and registrations with a view to recording NTD as the owner of the KOALA BLUE marks in Canada".
[8] NTD caused a search to be conducted to determine whether there were any pending applications, in the Canadian Trade-marks Office, for registration of the mark KOALA BLUE. The search revealed that on December 18, 2001, In-Work International Ltd. (In-Work) of Westmount, Quebec, had filed an application to register the mark. Ravinsky Ryan (the respondent herein) is the agent and representative for service for In-Work. NTD instructed counsel to pursue appeals pursuant to section 56 of the Act. It is apparent, from the record, that the Registrar has been served with the appropriate documentation. The respondent, by facsimile, copied the court with correspondence dated May 29, 2003 to Riches, McKenzie & Herbert LLP advising that the respondent would "not be participating in any way in the hearing [of the within matters]". On June 13, 2003, the appellant's counsel forwarded facsimile correspondence, to the Court, advising as follows:
A hearing in the two above-noted matters is scheduled to take place in Toronto on Monday, June 23, 2003.
The two matters are appeals of two related decisions of the Registrar of Trade Marks which were made pursuant to Section 45 of the Trade Marks Act.
Although the Applicant is still interested in favourable decisions from the Court setting aside the decisions of the Registrar of Trade Marks in declaring that the Applicant's two Trade Mark Registrations remain on the Trade Marks Register in good standing, the Applicant's solicitors have received instructions to not attend at the hearing in these matters.
Accordingly, we regret to advise the Court that we will not be making oral submissions at the hearing scheduled for June 23, 2003, but will rely only upon the Applicant's Memorandum of Fact & Law which is found at Tab 7 in the Applicant's record in each of the two proceedings.
The Respondent did not serve a Notice of Appearance (as required by paragraph iv of the Order of Madam Justice McGillis made on May 30, 2002). Also, the solicitor for the Respondent has confirmed to the undersigned that the Respondent will not be contesting the two applications and will not be attending at the hearing on June 23, 2003.
We regret that we will not be able to assist the Judge hearing the matters further.
THE RELEVANT STATUTORY PROVISIONS
| Trade-marks Act,
R.S.C. 1985, c. T-13
45. (1) The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
(2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may hear representations made by or on behalf of the registered owner of the trade-mark or by or on behalf of the person at whose request the notice was given.
(3) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trade-mark, either with respect to all of the wares or services specified in the registration or with respect to any of those wares or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trade-mark is liable to be expunged or amended accordingly.
(4) When the Registrar reaches a decision whether or not the registration of a trade-mark ought to be expunged or amended, he shall give notice of his decision with the reasons therefor to the registered owner of the trade-mark and to the person at whose request the notice referred to in subsection (1) was given.
(5) The Registrar shall act in accordance with his decision if no appeal therefrom is taken within the time limited by this Act or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal.
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Loi sur les marques de commerce,
L.R.C. 1985, c. T-13
45. (1) Le registraire peut, et doit sur demande écrite présentée après trois années à compter de la date de l'enregistrement d'une marque de commerce, par une personne qui verse les droits prescrits, à moins qu'il ne voie une raison valable à l'effet contraire, donner au propriétaire inscrit un avis lui enjoignant de fournir, dans les trois mois, un affidavit ou une déclaration solennelle indiquant, à l'égard de chacune des marchandises ou de chacun des services que spécifie l'enregistrement, si la marque de commerce a été employée au Canada à un moment quelconque au cours des trois ans précédant la date de l'avis et, dans la négative, la date où elle a été ainsi employée en dernier lieu et la raison de son défaut d'emploi depuis cette date.
(2) Le registraire ne peut recevoir aucune preuve autre que cet affidavit ou cette déclaration solennelle, mais il peut entendre des représentations faites par le propriétaire inscrit de la marque de commerce ou pour celui-ci ou par la personne à la demande de qui l'avis a été donné ou pour celle-ci.
(3) Lorsqu'il apparaît au registraire, en raison de la preuve qui lui est fournie ou du défaut de fournir une telle preuve, que la marque de commerce, soit à l'égard de la totalité des marchandises ou services spécifiés dans l'enregistrement, soit à l'égard de l'une de ces marchandises ou de l'un de ces services, n'a été employée au Canada à aucun moment au cours des trois ans précédant la date de l'avis et que le défaut d'emploi n'a pas été attribuable à des circonstances spéciales qui le justifient, l'enregistrement de cette marque de commerce est susceptible de radiation ou de modification en conséquence.
(4) Lorsque le registraire décide ou non de radier ou de modifier l'enregistrement de la marque de commerce, il notifie sa décision, avec les motifs pertinents, au propriétaire inscrit de la marque de commerce et à la personne à la demande de qui l'avis visé au paragraphe (1) a été donné.
(5) Le registraire agit en conformité avec sa décision si aucun appel n'en est interjeté dans le délai prévu par la présente loi ou, si un appel est interjeté, il agit en conformité avec le jugement définitif rendu dans cet appel.
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| 56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
(2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.
(3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trade-mark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision.
(4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper.
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
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56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois.
(2) L'appel est interjeté au moyen d'un avis d'appel produit au bureau du registraire et à la Cour fédérale.
(3) L'appelant envoie, dans le délai établi ou accordé par le paragraphe (1), par courrier recommandé, une copie de l'avis au propriétaire inscrit de toute marque de commerce que le registraire a mentionnée dans la décision sur laquelle porte la plainte et à toute autre personne qui avait droit à un avis de cette décision.
(4) Le tribunal peut ordonner qu'un avis public de l'audition de l'appel et des matières en litige dans cet appel soit donné de la manière qu'il juge opportune.
(5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi.
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THE APPELLANT'S POSITION
[9] NTD does not suggest that, during the 3 year period preceding the section 45 notices (July 5, 1998 to July 5, 2001), it used the trade-mark. Rather, it relies upon subsection 56(5) of the Act and submits that the evidence contained in the affidavit of its executive vice-president demonstrates that there were special circumstances that excuse the absence of use of the trade-mark as contemplated by subsection 45(3).
[10] Because NTD is not a retailer, an importer, a wholesaler or distributor of clothing products, it required a licensee that could sell, could make or import, and could wholesale or distribute the KOALA BLUE products in Canada. The appellant says that, until January 21, 2000, it was not certain that it had proper legal ownership of the KOALA BLUE mark registrations and thus, it was extremely difficult for it to license third parties to use the mark in Canada. Moreover, given the apparent uncertainty regarding ownership, potential licensees were reluctant to enter into a license. After January 21, 2000, it took steps to consolidate and formalize its rights in the mark in Canada. The appellant refers specifically to the renewal of the registrations in July, 2001.
[11] NTD submits that from July 5, 2001, onward and also from January 27, 1998, until July 5, 2001, it actively sought licensees for the mark in Canada as well as other countries. Additionally, throughout this time, it undertook various market studies with respect to the marks and prepared artwork for proposed labels as well as signage showing use of the mark. Samples, in the form of style guides, are attached as exhibits to the affidavit of NTD's executive vice-president and are apparently provided to potential licensees to ensure awareness of the manner in which the mark must be used.
[12] In-Work, argues the appellant, will not be prejudiced if the registrations are maintained on the register because it has not been using the KOALA BLUE mark as of the date of its proposed-use trade-mark application. As of 1996, the KOALA BLUE mark enjoyed a good reputation in Canada in association with clothing and if the registrations are expunged, NTD will be denied the benefits of the goodwill it purchased. Conversely, In-Work will be able to take advantage of that goodwill.
[13] NTD submits that, in view of this evidence, the court must come to a conclusion as to the correctness of the Registrar's decision: Christian Dior, S.A. v. Dion Neckware Ltd. (2002), 286 N.R. 336, 20 C.P.R. (4th) 155 (F.C.A.). Although mere expression of an intention to reactivate a trade-mark is hardly sufficient to trigger subsection 45(3) of the Act, the actual realization of the intention, by taking steps before the section 45 notices, can be sufficient to maintain the registrations: Oyen Wiggs Green & Mutala v. Pauma Pacific Inc. (1999), 84 C.P.R. (3d) 287 (F.C.A.). Relying on Baker & McKenzie v. Garfield's Fashions Ltd. (1993), 52 C.P.R. (3d) 274, NTD maintains that it is reasonable to assume that a new owner would need some time for making arrangements concerning the use of the trade-marks. NTD identifies the criteria to establish special circumstances justifying non-use as:
1. The length of time during which the trade-mark has not been used;
2. Whether the trade-mark owner's reasons for not using the trade-mark were due to circumstances beyond the owner's control; and
3. Whether there exists a serious intention to shortly resume use of the trade-mark.
[14] The appellant divides the period of non-use into two segments. The first is from January 27, 1998 until January 21, 2000 (the effective date of the assignment until the date of execution of the assignment, nunc pro tunc). The second is from January 21, 2000 until July 5, 2001, the latter being the date of the section 45 notices. NTD argues that the second segment is the more important and that it consists of only one and a half years.
[15] In summary, the appellant submits that it intended at all times to use the trade-mark KOALA BLUE, that a decision not to use the mark was never made, that it was at all times attempting to obtain a suitable licensee, and that it took steps, prior to the section 45 notices, to realize its intention to use the mark.
ANALYSIS
[16] The purpose of the "use it or lose it" provision was described by McNair J. in Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 8 F.T.R. 310, 13 C.P.R. (3d) 298 (T.D.) as follows:
It is well established that the purpose and scope of s.44 [now s.45] is to provide a simple, summary and expeditious procedure for clearing the register of trade marks which are not bona fide claimed by their owners as active trade marks. The procedure has been aptly described as one for removing "deadwood" from the register. The section does not contemplate a determination on the issue of abandonment but rather simply places on the registered owner of the trade mark the onus of furnishing evidence of use in Canada or of special circumstances excusing non-use. The registrar's decision is not one that finally determines substantive rights but only whether the trade-mark entry is liable to be expunged.
[17] Since the appellant does not dispute that the mark KOALA BLUE was not in use in Canada during the 3 years preceding the section 45 notices, the question on these appeals is whether there exists evidence of special circumstances excusing non-use. The Registrar did not consider "special circumstances" because there was no evidence submitted in response to the notices. That does not preclude the tendering of such evidence in this proceeding. The words "in addition to" in subsection 56(5) of the Act do not imply that some evidence must have been previously filed. An appeal provides an appellant with a second chance to save the mark from expungement: Austin Nichols & Co. v. Cinnabon, Inc., [1998] 4 F.C. 569, 82 C.P.R. (3d) 513 (C.A.).
[18] Regarding the standard of review, a decision of the Registrar is entitled to deference when it is made within his field of expertise, unless evidence is filed on appeal that would materially affect the decision: Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (C.A.); Novopharm Ltd.v. AstraZeneca AB (2002), 295 N.R. 188, 21 C.P.R. (4th) 289 (F.C.A.). Where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's decision, a judge must come to his or her conclusion as to the correctness of the Registrar's decision: Christian Dior, supra.
[19] A determination of whether there are special circumstances excusing non-use involves consideration of three criteria. The first is the length of time during which the mark has not been in use. The second is whether the reasons for non-use were beyond the control of the registered owner and the third is whether there exists a serious intention to shortly resume use: Registrar of Trade-marks v. Harris Knitting Mills Ltd. (1985), 60 N.R. 380, 4 C.P.R. (3d) 488 (F.C.A.).
[20] In Ridout & Maybee v. Sealy Canada Ltd. (1999), 171 F.T.R. 79, 87 C.P.R. (3d) 307 (T.D.), Lemieux J. considered Harris Knitting Mills, supra, and stated:
It is useful to recall the salient elements of Pratte J.A.'s reasons for judgment in Harris Knitting Mills, (supra). As I see it, Pratte J.A. made these points:
(a) it is impossible to define precisely the circumstances in subsection 44(3) [now 45(3)] which may excuse non-use;
(b) the circumstances of non-use must be special; that is circumstances which do not exist in the majority of cases involving non-use;
(c) the reason for non-use cannot be a voluntary one on the part of the registered owner; non-use must be beyond the control of the owner; the registered owner must show at least serious inconvenience for not continuing the use of the mark;
(d) the length of use and probability of continued non-use is a factor;
(e) special circumstances are an exception to the general rule that [a] trade-mark which is not used should be expunged.
[21] Regarding the first criterion, the length of time of non-use, NTD acquired the mark on January 27, 1998. Its executive vice-president deposes that he is aware that KOALA BLUE clothing was sold in Canada until at least 1996. The appellant did not use the mark in Canada after its acquisition of it on January 27, 1998. Thus, on July 5, 2001 (the date of the section 45 notices), the period of non-use was approximately 3 years and 5 months. This is a significant length of time. NTD suggests that the more appropriate time frame for consideration of non-use is from January 21, 2000, because it was then that it received confirmation of its control and ownership of the mark. In my view, the issues of confirmation of ownership and the alleged, consequent inability to obtain a licensee, are relevant with respect to the second criterion although there may be some overlap between the two. In any event, even if the non-use were calculated from January 21, 2000, there still exists a period of more than 1 year and 5 months when the mark was not used. This, too, is a significant length of time, particularly since the evidence discloses that as late as December, 2001, NTD and its counsel were still in the process of reviewing the KOALA BLUE marks and registrations.
[22] Turning to the question of whether the reasons for non-use were beyond the appellant's control, it is essential that there be reliable evidence in this regard. Specificity and detail are required: Ridout & Maybee, supra; Aerosol Fillers Inc. v. Plough (Canada) Ltd., [1980] 2 F.C. 338, 45 C.P.R. (2d) 194 (T.D.). The evidence, here, is to the effect that NTD is not a retailer, an importer, a wholesaler, or a distributor of clothing products and it therefore had to find a licensee in Canada in order to use the KOALA BLUE mark. Evidence with respect to the efforts made to secure licensees is sadly lacking and amounts to little more than bare assertions devoid of any specific factual foundation. There is no evidence regarding the particular efforts made to locate licensees in Canada. Similarly, there is a general statement regarding market studies, but again, no detail or specificity in this respect. The closest the appellant comes to being specific is the following statement contained in the affidavit of its executive vice-president:
However, unfortunately, despite having had serious discussions with various potential licensees, including Toys 'R Us Corporation, NTD has thus far been unable to enter into a licensing arrangement with respect to a licensee permitting use of the KOALA BLUE marks in Canada.
[23] There exists a conspicuous lack of detail and specificity regarding what efforts were made, when they were made, what happened and what is happening. I do not find that there is reliable evidence before me such that I could conclude that the absence of use was due to obstacles beyond the appellant's control.
[24] The lack of reliable evidence also creates difficulty regarding the third criterion - whether there exists a serious intention to shortly resume use. Two decisions of Rouleau J. provide guidance and direction regarding the third criterion. In Lander Co. v. Alex E. MacRae & Co. (1993), 62 F.T.R. 71. 46 C.P.R. (3d) 417 (T.D.), my colleague states:
With respect to the third aspect of the test, the mere intention to resume use is not satisfactory and must be substantiated by factual elements such as purchase orders or, at least, a specific date of resumption. In the present case, no evidence whatsoever has been adduced by the appellant confirming its intention to resume use.
[25] In Arrowhead Water Corp. v. Arrowhead Spring Water Ltd. (1993), 61 F.T.R. 132, 47 C.P.R. (3d) 217 (T.D.), Justice Rouleau was considering the Registrar's decision in circumstances where evidence had been filed in response to the section 45 notice. Although that is not the situation here, the relevance of the reasoning regarding satisfaction of the criterion is applicable and is particularly helpful since the factual context, there, involved a take-over of a business and the use of a trade-mark by a new owner. In considering the Registrar's decision, Rouleau J. comments as follows:
It is therefore important, in cases where non-use has been conceded and the registrant pleads "special circumstances", that the evidence filed to support the further protection cannot be restricted to a bare statement but must provide detail to lend substance to the assertion. The Registrar concluded that the intention to resume use was a bare statement and that the appellants had not demonstrated a serious intention to resume use in Canada any time soon. Further details, such as a proposed date of resumption or a description of steps to be taken to effectively restore the mark to use were not included in the evidence. The appellant does not indicate with any degree of certainty its intention to resume use; this court is left in the dark as to how long the duration of the non-use will persist. As the Registrar puts it, "the statement that the trade mark owner intends to use the trade mark in Canada is not in itself sufficient to maintain the registration".
The appellant did not convince the Registrar that the reasons it gave to justify the absence of use of the mark were special circumstances. She agreed that new owners may need time to familiarize themselves with a new business, but that further details were needed before an absence of use of almost two years could be justified.
I also agree that sufficient details were not provided. There is no indication of the difficulties encountered by the appellant which would substantiate or justify non-use for such a lengthy period; details which the Registrar felt were necessary in order to corroborate special circumstances. The appellant submits that the Registrar was wrong in not being convinced of its intention to resume use. I am satisfied that based on what little facts she had before her, the Registrar was right in her analysis. The appellant has not succeeded in convincing the Court that the Registrar failed to properly interpret or consider the matter before her.
[26] The appellant, in my view, has again failed to provide a sufficient factual basis to support its asserted intention to use the mark. NTD argues that its renewal of the registrations, its attempts to find licensees and its preparation of art work for labels and signage demonstrate an intention to use the mark. While those statements constitute a starting point, without further detail and specificity, they remain vague and unsubstantiated allegations.
[27] Relying on Oyen Wiggs Green, supra, NTD submits that steps taken prior to the section 45 notice can be sufficient to create the realization of the intention. I do not disagree with that assertion. However, in Oyen Wiggs Green, the court specifically refers to "concrete" steps. I note that, there, steps to redesign the packaging for the trade-mark products had been taken and an order for labels bearing the trade-mark had been placed. Moreover, shortly after the section 45 notice was issued, the product bearing the trade-mark was packaged and shipped in the normal course of trade. No such substance in relation to the appellant's assertions exists here.
[28] NTD additionally relies on Baker & MacKenzie, supra, to support its claim that it is reasonable to assume that a new owner would require some time to make arrangements for use of the mark. Again, I do not take issue with that proposition. However, I am confronted with a period of non-use that is lengthy and with circumstances where the evidence regarding the appellant's efforts to make arrangements for use of the marks is insufficient and therefore unreliable. I am, as Rouleau J. put it, "left in the dark as to how long the duration of non-use will persist". In Baker & MacKenzie, there was a solid evidentiary basis demonstrating intention to use the mark.
[29] The final argument advanced is that if the registrations are expunged, then the respondent will be able to take advantage of the goodwill that Koala Blue created and NTD purchased. This argument can be summarily disposed of by reference to the following comments of McGuigan J. in Philip Morris Inc. v. Imperial Tobacco Ltd. et al. (No. 2) (1987), 91 N.R. 76, 17 C.P.R. (3d) 237 (F.C.A.):
As this court has frequently said, s.44 [now s.45] is designed primarily to clear the register of dead wood, not to resolve issues in contention between competing commercial interests, which would be resolved in expungement proceedings under s. 57: Moosehead Breweries Ltd. v. Molson Cos. Ltd. et al. (1985) 11 C.P.R. (3d) 208 at p. 210, 63 N.R. 140 at p. 141.
[30] The respondent's failure to contest does not alleviate the appellant's obligation to demonstrate that the above referenced criteria have been satisfied. For the reasons stated, I conclude that the appellant has not met that onus. I am also not persuaded that the evidence filed on these appeals, had it been before the Registrar, would have materially affected the Registrar's decisions. The evidence is insufficient to maintain the registrations of the mark. Therefore, although for different reasons, the Registrar's decisions to expunge the registrations are correct.
[31] In the result, the appeals are dismissed and an order will so provide. The parties agree that "costs are not to be awarded for or against any party". I see no reason to disturb that arrangement and there will be no order with respect to costs.
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Judge
Ottawa, Ontario
June 25, 2003
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKETS: T-239-02
T-240-02
STYLE OF CAUSE: NTD APPAREL INC. v. RAVINSKY RYAN
PLACE OF HEARING: Toronto, Ontario
DATE : June 23, 2003
REASONS FOR : The Honourable Madam Justice Layden-Stevenson
DATED: June 25, 2003
SOLICITORS OF RECORD:
Dan Hitchcock
Riches, McKenzie & Herbert LLP
Toronto, Ontario FOR APPLICANT
Francis P. Donovan
Ravinsky Ryan
Montreal, Quebec FOR RESPONDENT
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