Date: 19990209
Docket: T-1086-98
BETWEEN:
CARON BÉLANGER ERNST & YOUNG INC.
Applicant
- and -
RICHES, MCKENZIE & HERBERT
Respondent
REASONS FOR ORDER
TREMBLAY-LAMER J.:
[1] This is an application under Section 56 of the Trade-marks Act1 (the "Act") appealing two decisions of the Registrar of Trade Marks dated May 20, 1998 in which the Registrar concluded that the registration of the two related trade marks was to be expunged.
[2] Under Section 45 of the Act, the respondent filed a request with the Registrar to have the following trade marks expunged:
| "DR & Design" registered on August 23, 1991 under no: TMA 408,890 |
| "D & R" registered on February 15, 1944 under no: UCA 19,500 |
|
[3] These marks were owned, at all relevant times, by Daignault-Rolland Cie. Ltée ("Daignault").
[4] The Registrar notified Daignault of the Section 45 proceeding on September 3 and 4, 1997. Daignault was required to respond within three months of the notices, but instead sought and was granted an extension to March 3 and 4, 1998.
[5] On April 2, 1998, Daignault made an assignment under the Bankruptcy and Insolvency Act.2 The applicant was appointed trustee to the bankruptcy of Daignault.
[6] The Registrar"s decisions were made on May 20, 1998, but the applicant did not become aware of the decisions until June 26,1998, when it requested a copy thereof from the Registrar.
[7] The applicant filed a notice of application to appeal the decisions on July 9, 1998.
[8] Under Section 45 of the Act, any person who pays the subscribed fee, may request an expungement of a trade mark based on non-use in the preceding three years. The registered owner is then required to furnish proof of use within three months. Failure to respond entitles the Registrar to expunge or amend the registration accordingly.
[9] Subsection 56(1) grants a right of appeal:
| 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 the 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.
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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.
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[10] Under subsection 56(5) the registered owner is permitted to file evidence:
| (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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(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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[11] If the evidence submitted is sufficiently clear and unequivocal the judge may grant the appeal if it appears the mark had been used within 3 years of the notification of the subsection 45(1) proceeding.
[12] In the present case, the evidence clearly demonstrates that the first mark was in use during the previous three years, based on the use of the logo DR. However, there is no evidence for the second mark "D & R".
[13] Consequently, the appeal is granted in part. The decision of the Registrar is reversed for the following mark: "DR & Design" registered under no. TMA 408,890 on August 23, 1991.
"Danièle Tremblay-Lamer"
JUDGE
OTTAWA, ONTARIO
February 9, 1999.
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1 R.S.C. 1985, c. T-13.
2 R.S.C. 1985, c. B-3.
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