Date: 20090120
Docket: T-861-08
Citation: 2009 FC 47
Ottawa, Ontario, January 20, 2009
PRESENT: The Honourable Mr. Justice Harrington
BETWEEN:
MICHAEL CURB
Applicant
and
SMART & BIGGAR
Respondent
REASONS FOR ORDER AND ORDER
[1]
Mike Curb
is a well-known American record producer. His company, Curb Records, represents
such well-known Country and Western artists as LeAnn Rimes, Tim McGraw and Jo
Dee Messina. He is also the registered owner of the Canadian Trade-Mark
Registration Number TMA521,953 for Curb Records which originally covered:
Wares: Audio and audio-visual recordings;
printed materials, namely posters; clothing, namely, t-shirts and caps.
Services: Entertainment services provided by
pre-recorded and live music; and the production, publishing and distribution of
audio and audio-visual recordings.
[2]
Pursuant
to section 45 of the Trade-marks Act, the Registrar sent a notice on 4
November 2005 requiring Mr. Curb, at the request of the respondent Smart &
Biggar, to file evidence that the trade-mark had been used in Canada in association with each of
the above wares and services at any time during the preceding three years.
[3]
Following
affidavit evidence from Tracy Moore, Senior Vice-President at Curb Records, and
an exchange of written submissions, the Registrar found that the trade-mark had
been used in Canada during the relevant period in
association with audio and audio-visual recordings. However, she also found
that there was insufficient evidence of use in association with the other wares
and all the services listed in the Registration and ordered that the trade-mark
be amended to delete posters, t-shirts and caps, entertainment services
provided by pre-recorded and live music and the production, publishing and
distribution of audio and audio-visual recordings. This is an appeal from that
decision pursuant to section 56 of the Act.
[4]
Neither
the respondent nor the Registrar chose to participate.
POINTS IN ISSUE
[5]
The points
in issue in this appeal are:
a. What is the appropriate
standard of review of the Registrar’s decision?
b. Did Curb use the Curb Records
trade-mark in Canada, during the relevant period,
in association with each of the deleted wares and services?
STANDARD OF REVIEW
[6]
A section
56 appeal is a hybrid in that new evidence is allowed by right. In this case,
new evidence has been submitted with respect to four of the five wares or
services deleted. Although no new specific evidence has been led with respect
to the fifth item, namely t-shirts and caps, the Court has been invited to
infer from all the circumstances, particularly the new evidence submitted on
other points, to overturn the Registrar’s decision on that point as well.
[7]
When new
evidence has been filed that would have materially affected a registrar’s
finding, the Court is entitled to consider the issue de novo, without
owing deference to the Registrar or having to identify an error committed by
her (Maison Cousin (1980)
Inc. v. Cousins Submarines Inc.,
2006 FCA 409, 60 C.P.R. (4th) 369 and John Labatt Ltd. et
al v. Molson Breweries, a Partnership, 5 C.P.R. (4th) 180).
[8]
If new
evidence is not filed, the standard for reviewing findings of fact or mixed
fact and law is reasonableness (Guido
Berlucchi & C. S.r.l. v. Brouillette Kosie Prince, 2007 FC 245, 56 C.P.R. (4th)
401 and Maison Cousin, above). Errors in law are reviewed on the correctness standard (Molson,
above).
DECISION
[9]
I have
come to the conclusion that the new evidence filed would have materially
affected the Registrar’s decision. Considering the matter de novo I am
satisfied that this appeal succeeds, except with respect to t-shirts and caps.
I do not think that the new evidence filed spills over into the issue of
whether sales or distribution of these items occurred in Canada. The Registrar’s findings in
this regard were reasonable. Even if I were to exercise my discretion de
novo I would come to the same conclusion.
[10]
The
evidence before the Registrar, as aforesaid, was an affidavit from Tracy Moore.
The evidence before me is another, far more detailed, affidavit from Ms. Moore.
[11]
The
relevant portions of the Act are sections 4(1), 4(2), 45(1) and 45(2). Section
4 provides:
|
4. (1) A trade-mark is deemed to be used
in association with wares if, at the time of the transfer of the property in
or possession of the wares, in the normal course of trade, it is marked on
the wares themselves or on the packages in which they are distributed or it
is in any other manner so associated with the wares that notice of the
association is then given to the person to whom the property or possession is
transferred.
(2) A trade-mark is deemed to be used in
association with services if it is used or displayed in the performance or
advertising of those services. […]
|
4. (1) Une marque de commerce
est réputée employée en liaison avec des marchandises si, lors du transfert
de la propriété ou de la possession de ces marchandises, dans la pratique
normale du commerce, elle est apposée sur les marchandises mêmes ou sur les
colis dans lesquels ces marchandises sont distribuées, ou si elle est, de
toute autre manière, liée aux marchandises à tel point qu’avis de liaison est
alors donné à la personne à qui la propriété ou possession est transférée.
(2) Une marque de commerce est
réputée employée en liaison avec des services si elle est employée ou montrée
dans l’exécution ou l’annonce de ces services. […]
|
[12]
Section 45
goes on to provide that the Registrar may, and on written request must, save
good reason to the contrary, require the registered owner of a trade-mark to
furnish an affidavit or statutory declaration “showing” whether the trade-mark
was in use in Canada at any time during the previous three years. Viva voce evidence
is not permitted, but the Registrar may hear representations.
[13]
Section 45
provides a summary procedure to expeditiously clear the Register of “dead wood”.
See for instance Re Wolfville Holland Bakery Ltd. (1965), 42 C.P.R. 88
and Aerosol Fillers Inc. v. Plough Canada (Ltd.) (1980), 45 C.P.R. (2nd) 194. The
registered owner cannot merely assert use; it must “show” use. Some evidence is
required which, if not contradicted, would carry the day.
[14]
Turning
now to the individual wares and services in dispute, the Registrar concluded
there was no evidence before her that posters were used in Canada. However, Ms. Moore has now
provided evidence that, within the relevant period, Jo Dee Messina released a
CD in Canada entitled Delicious
Surprise and that the CD was sold together with a poster.
[15]
With
respect to entertainment services provided by pre-recorded music, again the
Registrar was not satisfied of use in Canada.
The new evidence from Ms. Moore is that from a computer situated in Canada, one could access www.curb.com
and listen to pre-recorded music and view videos. Although trans-border websites
can create interesting problems, for the purposes of what is before me, Mr.
Curb, through his company with whom he had an agreement, provided a service
listened to in Canada. That is sufficient.
[16]
As regards
entertainment services provided by live music in Canada, the evidence before the Registrar
related to a concert by Lisa Brokop. However that concert was outside the
relevant period. The new evidence establishes, to my satisfaction, that Ms.
Brokop also gave another concert in Canada
within the relevant period.
[17]
The Registrar
was also of the view that there was no evidence that any production, publishing
and distribution of audio and audio-visual recordings was done in Canada. Before her was a very small
portion of a Distribution Agreement between Curb Records and EMI Music Canada. More of that contract has
been put before me, which demonstrates Mr. Curb’s control over production,
publishing and distribution. Furthermore, Curb Records produced Lisa Brokop’s
music video “Wildflower” in Vancouver
during the relevant period. This was one of the songs from a CD released in Canada in January 2005. Curb Records
hired the company which filmed the video and approved all aspects of
production, having ultimate control over the music video eventually produced.
This evidence is sufficient.
[18]
However,
when it comes to t-shirts and caps, both before the Registrar and before the
Court, Ms. Moore’s evidence is as follows:
In respect of the clothing items, my
company or its licensed distributors over the years, including the three years
prior to the date of the Section 45 notice, namely November 4, 2005 have sold and/or
distributed t-shirts and caps bearing the CURB or CURB RECORDS mark in the
United States and/or Canada. Now shown to me and attached as exhibit “G”
are photographs of caps and t-shirts bearing the CURB or CURB RECORDS mark
which would have been sold and/or distributed in the United States and/or Canada.
[The Registrar’s emphasis]
[19]
In appeal,
the argument focused on whether there had to be a sale, as opposed to a
distribution by other means in the normal course of business in order to
satisfy section 4 of the Act. However, the preliminary question is whether
there was any distribution at all within Canada. The Registrar found that there was no
such evidence. Ms. Moore’s affidavit can certainly be read that way, without
even resorting to the proposition that any ambiguity in an affidavit should be
construed against the affiant. Her decision was reasonable.
[20]
I have
been asked to infer on the basis of the evidence taken as whole, particularly since
it has been established that Lisa Brokop performed a concert in Canada, that such paraphernalia as
t-shirts and caps would have been commercially available for distribution by sale
or otherwise. Even if I were to consider the matter de novo I would come
to the same conclusion as did the Registrar. Ms. Moore does not show that these
items were available in Canada. A conclusion that they were
would be an exercise in speculation rather than a proper inference from proven
facts.
[21]
If these
items were imported into Canada, and then re-exported, there
should be information available from Mr. Curb’s Customs broker. If these items
were sold, there should be accounting records, particularly when it comes to
the Goods and Services Tax. There is simply no evidence that t-shirts and caps
were available for distribution in Canada.
ORDER
THIS COURT ORDERS that:
1.
The appeal
is granted in part.
2.
The
Registrar’s decision of 27 March 2008 is set aside.
3.
The
Registrar is ordered to maintain Canadian Trade-Mark Registration Number TMA521,953
for Curb Records with the original list of wares and services save that, under Wares,
“clothing, namely, t-shirts and caps” is deleted therefrom.
4.
There be
no costs.
“Sean Harrington”
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