T-482-96
BETWEEN:
OYEN WIGGS GREEN & MUTALA
Appellant
- and -
PAUMA PACIFIC INC. and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT
JEROME, A.C.J.:
This is an appeal from a decision of the Registrar of Trade-marks maintaining Pauma Pacific Inc.'s Canadian trade-mark registration No. 184,386 for instant biscuit mix.
The trade-mark in question, SNACKERY KRUSTEAZ, was registered on July 14, 1972, for use in association with instant pancake mix, instant muffin mix, instant biscuit mix, instant bake mix and instant fry mix. On March 23, 1993, at the request of the appellant, the Registrar of Trade-marks forwarded a section 45 notice to the respondent Pauma Pacific Inc., the registered owner of the trade-mark. In response, Pauma Pacific Inc. submitted the affidavit of Ian Strachan, its President and the affidavit of Jeff Schoo, a representative of its licensee, the Quaker Oats Company of Canada Limited.
By decision dated December 29, 1995, the Registrar found that the trade-mark was not in use during the two year period prior to the date of the section 45 notice in association with the registered wares, with the exception of biscuit mix. In the Registrar's view, Pauma Pacific Inc. had taken active steps prior to the date of the notice to resume use of the trade-mark in association with biscuit mix. The decision states as follows at pp. 8-9:
| I am therefore satisfied that the evidence shows that the registrant was taking active steps prior to the date of the notice to resume use of the trade-mark in association with biscuit mix. Furthermore, the evidence shows that sales in the normal course of trade were made one month after the date of the notice. |
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| In my view, these are important factors to take into consideration when considering special circumstances, particularly when the absence of use is less than three years. Consequently, this satisfied me that at the date of the notice, the trade-mark was not "deadwood" for "biscuit mix". I have arrived at this conclusion keeping in mind the intent and purpose of Section 45. |
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| Concerning the remaining wares, I conclude that the registrant's intention to resume use with such wares has not been substantiated by factual elements. There is no clear evidence of any steps taken prior to the date of the notice in order to reintroduce these products under the trade-mark. As to the allegation in the Strachan affidavit that as of March 23, 1993 Pauma Pacific was regularly manufacturing and packaging instant pancake mix, instant bake mix and instant fry mix for Quaker Oats, there is no clear indication that this was in respect of the trade-mark SNACKERY KRUSTEAZ. I would assume from Mr. Schoo's statement at paragraph 14 of his affidavit, that package design work is currently underway (the affidavit being dated October 25, 1993) for the entire line of SNACKERY KRUSTEAZ products, that it was not the case. |
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| In view of the evidence furnished, I conclude that the trade-mark was not in use during the relevant period in association with the registered wares but that there are special circumstances that excuse the absence of use of the trade-mark in association with "instant biscuit mix". Consequently, the trade-mark registration will be amended by deleting the wares "instant pancake mix, instant muffin mix, instant bake mix and instant fry mix" from the registration. |
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The appellant now seeks an order setting that decision aside and expunging registration No. 184,386 from the Register. The essence of the appellant's complaint is that the Registrar erred in accepting the affidavit evidence of Messrs. Schoo and Strachan. It maintains that parts of the affidavits are intentionally misleading and ambiguous. According to the appellant, when the section 45 Notice was received around the end of March of 1993, the respondent's licensee, Quaker Oats, scrambled to generate some use of the mark and added the word KRUSTEAZ to a previous order for a reprint of SNACKERY biscuit mix labels. The appellant submits that this shipment was manufactured or contrived to protect the trade-mark registration.
However, having regard to the evidence, I am satisfied, as was the Registrar of Trade-marks, that the respondent and its licensee formed an intention to reintroduce the trade-mark prior to the issuance of the section 45 notice. It is clear that steps had been taken to redesign the packaging for SNACKERY KRUSTEAZ products and that an order had been placed for labels bearing the trade-mark. All of this occurred prior to the issuance of the notice. Very shortly after the notice, instant biscuit mix bearing the trade-mark was packaged and shipped by the respondent and its licensee in the normal course of trade.
There is simply no basis for the appellant's contention that certain parts of the affidavit evidence submitted by the respondent should be rejected by this Court as untrue or deliberately misleading. When one gives a fair reading to the evidence, it clearly establishes the relevant facts as found by the Registrar.
I am unable to conclude, therefore, that the Registrar was in error in his assessment of the evidence or that he improperly interpreted or considered the facts before him.
For these reasons, the appeal is dismissed with costs.
O T T A W A
August 29, 1997 "James A. Jerome"
A.C.J.
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