Date: 20090108
Docket: T-1612-07
Citation: 2009 FC 21
Ottawa, Ontario, January 8, 2009
PRESENT: The Honourable Mr. Justice Phelan
BETWEEN:
PARFUMS
DE COEUR, LTD.
Applicant
and
CHRISTOPHER
ASTA
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
I. INTRODUCTION
[1]
Parfums
de Coeur, Ltd. (PDC) seeks an order, pursuant to s. 57 of the Trade-marks
Act, removing Registration No. TMA 604,943 (Registration) from the
Trade-marks Register. The Registration is in the name of Christopher Asta
(Asta) carrying on business as Asta Hairstyling School.
[2]
The
grounds of this application are that the Registration is void or invalid
because it was obtained by means of a Declaration of Use which contained either
a fraudulent misrepresentation or a materially false statement that was
fundamental to the Registration.
II. BACKGROUND
[3]
Asta
filed a trademark application on November 23, 1999 for the trademark BOD on the
basis of proposed use. The wares in association with the proposed use of the
mark were:
Hair care, namely shampoo, conditioner, treatment,
styling aids, hairsprays, hairpolish, perms, colours, lighteners, brushes; skin
care, namely, bar soap, makeup removers, lotions, moisturizers, treatments,
creme, toners, exfoliating scrub, masques, eye treatments and pads, essential
oils; cosmetics, namely, makeup, eye shadow, powder, blush, concealer,
neutralizer, mascara, colours, pencil, lip colour, nail colour, prime, finish,
treatment; body care, namely, moisturizers, bars, exfoliators, body
wash, bath oil, bath crystals, bubble bath, body sprays, perfumes (the
“Original Wares”).
[Emphasis added]
[4]
In
his Declaration of Use signed February 12, 2004, Asta declared that by himself
or through a licensee he had commenced use of the trademark in Canada in
association with the same Original Wares.
[5]
Based
on this Declaration of Use, the Registration for the trademark BOD was issued
on March 11, 2004 covering these Original Wares.
[6]
The
Applicant, PDC, is a U.S. corporation which began selling products
bearing the BOD MAN trademark in Canada as early as October
2002. PDC had sold body sprays bearing the BOD MAN trademark in the U.S. since the
spring of 2000.
[7]
PDC
wrote to Asta giving notice of its intention to commence a proceeding to cancel
the Registration. As a consequence, Asta filed an amendment to his trademark to
reflect his actual use in respect of wares. The wares in use were “hair care,
namely shampoo, conditioner.” The remaining wares were deleted from the list of
Original Wares.
[8]
On
October 13, 2006, the Trade-marks Office confirmed that the BOD Registration
had been amended to reflect the amended use (Amended Registration).
[9]
PDC
seeks to strike out the Amended Registration. This Amended Registration has
been cited by the Trade-marks Office as a bar to the registration of PDC’s
trademark for BOD MAN in association with “men’s fragrances, namely, cologne,
eau de toilette, aftershave, scented body sprays and personal deodorants.”
III. ISSUE
[10]
The
issue in this application is whether, pursuant to s. 57, this Court should
strike the Amended Registration.
IV. ANALYSIS
[11]
Section
57 of the Trade-marks Act gives the Court the power, but not the
obligation, to strike out or amend an entry from the trademark register where
the registration does not “accurately express or define the existing rights of
the person appearing to be the registered owner of the mark.”
|
57. (1) The Federal
Court has exclusive original jurisdiction, on the application of the
Registrar or of any person interested, to order that any entry in the
register be struck out or amended on the ground that at the date of the
application the entry as it appears on the register does not accurately
express or define the existing rights of the person appearing to be the
registered owner of the mark.
(2) No person is entitled to institute under this section any
proceeding calling into question any decision given by the Registrar of which
that person had express notice and from which he had a right to appeal.
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57. (1) La
Cour fédérale a une compétence initiale exclusive, sur demande du registraire
ou de toute personne intéressée, pour ordonner qu’une inscription dans le
registre soit biffée ou modifiée, parce que, à la date de cette demande,
l’inscription figurant au registre n’exprime ou ne définit pas exactement les
droits existants de la personne paraissant être le propriétaire inscrit de la
marque.
(2) Personne n’a le droit d’intenter, en vertu du
présent article, des procédures mettant en question une décision rendue par
le registraire, de laquelle cette personne avait reçu un avis formel et dont
elle avait le droit d’interjeter appel.
|
[12]
The
law in Canada has been
summarized by Dr. Fox as follows:
It is provided, in s. 18(1), and the
registration of a trade mark is invalid if (a) the trade mark was not
registrable at the date of registration; (b) the trade mark is not distinctive
at the time proceedings bringing the validity of the registration into question
are commenced; or (c) the trade mark has been abandoned; and subject to s. 17,
it is invalid if the applicant for registration was not the person entitled to
secure the registration. There is, however, no provision in the Act under
which mis-statements in an application for registration or extension of wares
become grounds for invalidating the registration unless the mis-statement had
the effect of making the trade mark not registrable under s. 12 of the Act or
unless there was a fraudulent misrepresentation.
[Emphasis added in WCC,
below]
Harold Fox, Canadian Law of Trade
Marks and Unfair Competition, 3rd ed. (Toronto: Carswell, 1972)
at 252-3, cited with approval in WCC Containers Sales Ltd. v. Haul-All
Equipment Ltd., 2003 FC 962 at paragraph 19 [WCC].
[13]
Further,
the term “date of the application” in s. 57 refers not to the date of the
original application to the Trade-marks Office, which would include the
Original Wares, but to the date of the application for expungement in this
Court (MacKenzie v. Busy Bee Enterprises International Ltd., [1977] 2
F.C. 124 (F.C.T.D.); Tommy Hilfiger Licensing Inc. v. Produits de Qualité
I.M.D. Inc., 2005 FC 10). On that date Asta had the Amended Registration,
which was limited to shampoo and conditioner only.
[14]
Asta
has admitted that the original Declaration of Use contained a critical
misstatement arising from his lack of understanding of the trademark system. He
said that he believed that as long as he had used the mark BOD in relation to
just one of the wares in the list of Original Wares, then he could file the
Declaration of Use.
[15]
The
Applicant did not push the issue of fraudulent statement that it originally
claimed, and it was appropriate for the Applicant to refrain from pursuing this
avenue. In this case, there is a misstatement, whether innocent or negligent,
but it is not fraudulent.
[16]
In
General Motors of Canada v. Decarie Motors Inc. [2001] 1 F.C. 665 (F.C.A.),
that Court confirmed that a registration could be invalidated by two types of
misstatements: (i) fraudulent, intentional misstatements, and (ii) innocent misstatements
that are material in the sense that without them the section 12 barriers to
registration would have been insurmountable.
[17]
There
is no question that the identification of the wares was fundamental to the
Registration and the Amended Registration. Likewise, there is no question that
the Registration contained material misstatements. However, if the claim of use
as to shampoo and conditioner is accurate, it supports the registration as
reflected in the Amended Registration.
[18]
On
the basis of the jurisprudence referred to in paragraph 13 of these Reasons,
for PDC to succeed it must show that the Amended Registration was secured by
material misstatement.
[19]
The
Applicant, in its submissions, attempted to import the U.S. doctrine of
fraud on the Trade-marks Office, which does not require real fraud. In that
doctrine, material misstatement is sufficient and any material misstatement in
the processing of a registration renders the entire resulting registration
void. Applied to the current case, the misstatement of use of the Original
Wares would render the Amended Registration void.
[20]
However,
the law in Canada (in particular s. 57 of the Trade-marks Act) and the
jurisprudence referred to in these Reasons, does not go as far as the U.S. While there
is something initially attractive in the notion that a material misstatement in
the trademark process renders the monopoly granted in the registration void,
Parliament has not embraced that principle and, absent an amendment to the Trade-marks
Act, this Court will not do so.
[21]
The
Applicant does allege a misstatement that would affect the Amended Registration
if it carries weight. The Applicant says that Asta was not carrying on business
as Asta
Hairstyling School and
therefore there is no evidence of use by the registrant.
[22]
While
the evidence of use by Asta is somewhat equivocal, the Court is satisfied that
Asta meets the requirements for use of the mark. The legal entity at issue is
Asta personally – the reference to the trade name Asta Hairstyling does not
negate the fact that the legal owner of the mark is Asta himself.
[23]
In
addition, while Asta’s ownership in Asta Hairstyling School is not well
documented, it is a family business in which his father, the original owner of
the business, confirmed to Asta that he was one of the owners. In a family-run
concern, the absence of rigid legal structures is not unusual and I am prepared
to accept Asta’s evidence on this issue.
[24]
Asta
has provided evidence that he began using the shampoo and conditioner in early
2001. This evidence included the purchase of 4,941 bottles of shampoo and
conditioner bearing the BOD mark. However, the invoice for the products is to
BOD at an address that is not Asta’s.
[25]
While
the evidence of the invoice for the products to Asta is confusing, the product
packaging bears the legend of the mark BOD and an address which is Asta’s. In
addition, Asta provided evidence of direct sales by himself and others to
Asta’s clients at the hairstyling salon in which he had some type of interest.
[26]
While
the evidence of use contains numerous flaws and deficiencies, on balance it is
sufficient to show first use of BOD in relation to shampoo and conditioner in
early 2001.
[27]
Asta’s
excuse for his overly broad Declaration of Use is that he believed that having
used some of the Original Wares – the shampoo and conditioner – he was entitled
to file a Declaration in respect of all the Original Wares. While clearly
wrong, this was an innocent (or potentially negligent) misstatement, and was
not sufficient to make the mark unregistrable in relation to shampoo and
conditioner (see General Motors of Canada, above).
[28]
In
this situation, as in WCC, the overbroad misstatement is not sufficient
to render the mark unregistrable. In WCC, above, the misstatement as to
the number of years of use was not sufficient to deem the mark unregistrable.
Similarly, here the misstatement as to the scope of use does not render the
mark unregistrable in relation to the Original Wares actually put into use. It
is significant to this case that Asta amended his registration prior to the
filing of this application by PDC.
[29]
The
case of Unitel Communications Inc. v. Bell Canada (1995), 61 C.P.R. (3d)
12, is distinguishable in that the flaw was that there was no use by the owner
at all. In that case, a subsequent change to the registration could not cure
the fundamental defect in the Declaration of Use. In contrast, in this current
situation, the registrant has used the mark but not as broadly as claimed. The
Amended Registration covers only the wares that were put into use.
[30]
The
Applicant has advanced a policy basis for its claim for expungement – that
there must be an incentive to tell the truth. The Applicant relies on the U.S. model of
draconian results for even an innocent mistake.
[31]
Canadian
law is more nuanced and balanced. Canadian law looks to substance – an
intentional misstatement should and would void a registration. However, where
the misstatement is innocent and in good faith, there is an opportunity to
amend the registration as provided in s. 45 of the Act.
[32]
The
Respondent having availed himself of this opportunity to amend, the Court is
not prepared to exercise its powers under s. 57 to deprive the Respondent of
the trademark in respect of shampoo and conditioner to which he otherwise has a
legitimate basis of right.
V. CONCLUSION
[33]
Therefore,
this application will be dismissed with costs.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that this
application is dismissed with costs.
“Michael
L. Phelan”
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