Date: 20090626
Docket: T-1298-07
Citation: 2009 FC 669
Ottawa, Ontario, June 26,
2009
PRESENT: The Honourable Madam Justice Simpson
BETWEEN:
MIRANDA
ALUMINUM INC.
Applicant
and
MIRANDA
WINDOWS & DOORS INC.
Respondent
REASONS FOR JUDGMENT AND
JUDGMENT
[1]
This
case involves a dispute between Antonio Miranda (the Father) and one of his
sons, Tony Miranda (the Son) over the use of their surname as a trademark.
The Father’s company is applying to have two trademarks registered by the Son’s
company expunged pursuant to section 57
of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act).
THE PARTIES AND THEIR
TRADEMARKS
The
Applicant
[2]
Miranda
Aluminum Inc. (the Applicant) is the Father’s current company. It was
incorporated on March 23, 2000 and the Father alleges that, since then, it
has carried on business selling and installing aluminum products such as
windows and doors using both its corporate name and the trade name Miranda
Direct. The latter was registered as a business name on January 5, 2006. There
is no evidence showing when the trade name was first used.
[3]
The
Applicant has no registered trademarks.
The
Respondent
[4]
Miranda
Windows & Doors Inc. (the Respondent) is the Son’s current company. It was
incorporated on March 2, 2005 and, since then, has carried on business
selling and installing aluminum products.
[5]
On
February 20, 2006, the Respondent filed applications for the registration of
two trademarks. The first was for the name Miranda (the Word Mark) and the
second was a design mark which shows the name Miranda surrounded by an outline
which represents a house with a roof and chimney (the Design Mark). The
applications for registration say that the first use of both marks was at least
as early as August 31, 1991.
TRADEMARK 683,429
[6]
The
‘429 trademark is for the Word Mark. It was registered by Miranda Windows &
Doors on March 13, 2007 for use in association with services described as
the “Custom design and installation of windows, doors, porch enclosures,
sunrooms, siding, soffit, fascia, eavestroughs, patios, garden doors, aluminum
railings and railings; home renovation”. This mark was advertised on
October 11, 2006.
TRADEMARK 683,558
[7]
The
‘558 trademark is for the Design Mark. It was registered by Miranda Windows &
Doors on March 14, 2007 for use in association with the services described
above. This mark was advertised on November 15, 2006.
[8]
The
identity of the creator of the Design Mark is in dispute. The Father says he
created it in 1995 with the Son who was working for him at the time. However,
there is no documentary evidence to show that the Son was in the Father’s
employ in 1995. In fact, the reverse was true. The Father worked for the Son
for several months that year. The Son, on the other hand, says that, in 1990,
he alone created the Design Mark. He provided drafts and printing order forms
to support his claim. I have therefore accepted the Son’s evidence and conclude
that he created the Design Mark in 1990 without his Father’s assistance.
PREVIOUS HISTORY
[9]
Both
the Father and the Son were involved in businesses supplying and installing
aluminum products prior to the incorporation of their current companies. Both
their businesses operated at the retail level and primarily served members of
the Portuguese community in the Toronto region.
[10]
Although
the Father’s legal name is Antonio Miranda, the evidence suggests that he is
sometimes referred to as “Tony” by the Son. The Father says that, in business,
he was addressed as both “Tony” and “Antonio”.
The Father
[11]
In
1976, the Father incorporated 339231 Ontario Limited (the Numbered Company).
According to the Father, it carried on business using the unregistered trade
name “Miranda Aluminum”. The Numbered Company became inactive when the Father
was imprisoned in connection with a conviction for cocaine trafficking. The
Son’s evidence is that the Father was convicted in November of 1989 and that
his company became inactive in 1988. The Father refused to provide the dates of
his imprisonment after undertaking to do so on his cross-examination. In the
absence of his cooperation, I infer that he was in pre-trial custody starting
sometime in 1988 and that the Numbered Company became inactive at that time.
[12]
The
Corporation Profile Report from the Ontario Ministry of Consumer and Business
Services shows that the Numbered Company was cancelled on February 26,
1990. At this time, the Father was still in prison.
[13]
After
his release on
day parole in July or September of 1990, the Father worked for
the Son until 1994 as a commissioned salesman on a full-time basis. From 1994
until 2000, the Father worked only sporadically for the Son, in part because he
was also involved in the operation of his own new company. It was Miranda Home
Improvements Ltd. and it was incorporated in 1994.
[14]
Three
or four years later (in 1997 or 1998), the Father transferred Miranda Home
Improvements Ltd. to his son Edward. Edward operated it until 2000. Thereafter,
in 2007, the company was cancelled for its failure to file tax returns.
[15]
The
Father’s next step was to incorporate his current company, Miranda Aluminum
Inc., on March 23, 2000. As described above, it is the Applicant herein.
[16]
For
a short period in 2005 (from March to November), the Father again worked as a
salesman for the Son. However, the evidence does not show whether this was a
full time activity.
The Son
[17]
The
Son’s first company was called T.M. Renovations Inc. (TMR). He incorporated it
on May 11, 1989 when he was sixteen years old. On November 2, 1990,
he registered the trade name Miranda Aluminum and Vinyl Products as a division
of TMR.
[18]
Fifteen
years later, on June 17, 2004, TMR was dissolved under section 240 of the Ontario
Business Corporations Act, R.S.O. 1990, c. B. 16 (OBCA). However, the Son
was unaware of the dissolution and evidence relating to his corporate insurance
shows that he continued to carry on business as TMR and continued to use his
registered trade name until he incorporated his current company on
March 2, 2005. It is the Respondent in this proceeding.
John Miranda
[19]
The
Father’s brother and the Son’s uncle is John Miranda. From the early 1970s
until 1995, he carried on wholesale businesses using two corporate names which
included his surname. They were Miranda Aluminum Products Limited and Miranda
Aluminum Products Inc.
[20]
In
1995, John Miranda changed the first name to a numbered company and, in 1999,
he changed the second name to Miranda Vinyl Products Inc. These companies are
currently in business.
[21]
On
January 3, 2008, John Miranda assigned to TMR on his own behalf and on
behalf of his companies “any trade-name or trade mark rights that he may have
in the name MIRANDA”. The effective date of this assignment is November 21,
1990.
THE ISSUES AND ANALYSIS
[22]
Against
this background the issues are:
1. Are the
Respondent’s registrations invalid because they consist of a word that is
primarily merely the name or surname of an individual who is living or has died
within the preceding thirty years?
2. Are the
registrations invalid because the Respondent was not the person entitled to register
them owing to the Father’s prior use in association with the sale and
installation of aluminium products?
3. Are the
Respondent’s registrations invalid because they falsely suggest a connection
with a living individual, namely the Father?
4. Are the Respondent’s
registrations invalid because they falsely misrepresent the date of first use
of the Word and Design Marks?
5. Are the
Respondent’s registrations invalid because the Word and Design Marks do not
distinguish the Respondent’s wares from those of the Father and John Miranda?
Issue 1 Paragraph
12(1)(a) of the Act – Primarily Merely a Surname
[23]
The
Applicant says that the Respondent’s trademark registrations are contrary to
paragraph 12(1)(a) of the Act because Miranda is primarily merely the surname
of an individual.
[24]
Paragraph
12(1)(a) provides that:
|
12. (1)
Subject to section 13, a trade-mark is registrable if it is not
(a) a word that is primarily
merely the name or the surname of an individual who is living or has died
within the preceding thirty years;
|
12. (1)
Sous réserve de l’article 13, une marque de commerce est enregistrable sauf
dans l’un ou l’autre des cas suivants :
a) elle est constituée d’un mot n’étant principalement que le nom
ou le nom de famille d’un particulier vivant ou qui est décédé dans les
trente années précédentes;
|
The Word Mark
[25]
With
regard to the Word Mark, there is no question that Miranda is a surname. The
question is whether it is primarily merely a surname. Although Miranda is used
to describe the rights of an accused when arrested in the United States, I do not think that
this meaning is well known in this country. In my view, the Word Mark would not
be registrable under paragraph 12(1)(a). However, subsection 12(2) deals with
acquired distinctiveness and reads as follows:
|
12. (2) A trade-mark that is not registrable
by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by
the applicant or his predecessor in title as to have become distinctive at
the date of filing an application for its registration.
|
12. (2) Une marque de
commerce qui n’est pas enregistrable en raison de l’alinéa (1)a) ou b)
peut être enregistrée si elle a été employée au Canada par le requérant ou
son prédécesseur en titre de façon à être devenue distinctive à la date de la
production d’une demande d’enregistrement la concernant.
|
[26]
The
Father submits that the Son’s evidence of use is not meaningful because much of
it refers to the Son personally and not to the Respondent corporation, which is
the registered owner of the marks. The Father says that the Respondent’s
advertisements, customer testimonials, and evidence of use show that his
customers associated the Word and Design Marks only “with
Tony E. Miranda, personally” as of February 20, 2006, when the
applications for trademark registration were filed. The Son, on the other hand,
says that the fact that customers identify his wares and services with him
personally proves the acquired meaning and distinctiveness of the marks and the
fact that they actually distinguish his company’s wares and services from those
of others. I agree with the Respondent and have therefore concluded that the
Word Mark had acquired distinctiveness by February 20, 2006.
[27]
I
have based this finding on: (i) evidence showing that the Respondent received
the 2006/2007 Top Choice Award for “Home Improvement Company of the Year”; (ii)
photographs which show prominent use of the Word and Design Marks on the
Respondent’s mobile showroom, its fleet of trucks and trailers, its booths, its
banners and its promotional material at community events; and (iii) the
Respondent’s two English language television commercials which show the Son
associated with the Respondent. I have also relied on thirty testimonials from
clients and others showing that the public associates the Word and Design Marks
with the products and services of the Son and his company, Miranda Windows
& Doors Inc.
The Design Mark
[28]
The
Design Mark is not disqualified under paragraph 12(1)(a) of the Act because, in
my view, the outline of the house with the chimney on the roof is sufficient to
support a finding that the Design Mark is not primarily merely a surname. In
any event, the evidence cited above also supports a finding of “acquired
distinctiveness” for the Design Mark as of the date of filing the trademark
applications.
Issue 2 Was the Father
the Prior User of a Confusing Mark?
[29]
The
Father says that, the Son’s first company, TMR, lost its ownership of its Word
and Design Marks in 2004 when it was dissolved. I agree that, pursuant to
section 244 of the OBCA, the common law Word and Design Marks were forfeited to
and vested in the Crown on the dissolution of TMR in June of 2004. The Father
says that, at this date, he became the prior user under the Act based on his
use since 1976.
[30]
Subsection 17(1) of the Act reads as follows:
|
17. (1) No application for registration of
a trade-mark that has been advertised in accordance with section 37 shall be
refused and no registration of a trade-mark shall be expunged or amended or
held invalid on the ground of any previous use or making known of a confusing
trade-mark or trade-name by a person other than the applicant for that
registration or his predecessor in title, except at the instance of that
other person or his successor in title, and the burden lies on that other
person or his successor to establish that he had not abandoned the confusing
trade-mark or trade-name at the date of advertisement of the applicant’s
application.
|
17. (1) Aucune demande d’enregistrement d’une marque de
commerce qui a été annoncée selon l’article 37 ne peut être refusée, et aucun
enregistrement d’une marque de commerce ne peut être radié, modifié ou tenu
pour invalide, du fait qu’une personne autre que l’auteur de la demande
d’enregistrement ou son prédécesseur en titre a antérieurement employé ou
révélé une marque de commerce ou un nom commercial créant de la confusion,
sauf à la demande de cette autre personne ou de son successeur en titre, et
il incombe à cette autre personne ou à son successeur d’établir qu’il n’avait
pas abandonné cette marque de commerce ou ce nom commercial créant de la
confusion, à la date de l’annonce de la demande du requérant.
|
[31]
On
the issue of prior use it is helpful to start with a summary of the Father’s
use of the name Miranda:
(a)
1976-1988
– The Father says that Miranda was used by his Numbered Company in its
unregistered trade name, Miranda Aluminum. However, there is no supporting
documentary evidence. There are no corporate or financial records, no
advertisements and no yellow pages listings. The only purported evidence is a
picture of a truck with a sign which reads “Miranda Aluminum”. The Father’s
evidence is that the truck was used in the 1970s. However, the license plate is
dated March 1973 which was before the incorporation of the Numbered Company.
This suggests that it was John Miranda’s truck. He was the only member of
the Miranda family in the aluminum business in 1973 and, at that time, both his
corporate names began with the words Miranda Aluminum. I have therefore
concluded that the Father’s evidence that the truck showed his use is not
credible.
(b)
1988-1994
– The name Miranda was abandoned by the Father. He was in prison and the
Numbered Company was cancelled. He also worked for his Son in this period.
(c)
1994-1997/1998
– The name Miranda was allegedly used by the Father in connection with Miranda
Home Improvements Ltd., but, in my view, he abandoned the name when he
transferred the company to his son Edward. In any event, the only purported
evidence of use before the transfer is based on a picture dated 1996 which
shows the Father beside a truck bearing a sign which, although partly hidden by
plants, clearly reads “Miranda Windows and Doors” and shows 974 as the final
three digits of a telephone number. This is the Son’s corporate name and the
Son’s telephone number ends in 974. I therefore accept the Son’s evidence that
the truck in the photograph belonged to the Son and, again, find that the
Father’s evidence is not credible.
(d)
2000
to the present – The Father’s evidence of his use of the name Miranda name in
this period shows that he used it in a manner that appears to have been intended
to make his potential customers believe that his business was actually his
Son’s business. The evidence is as follows:
(i)
Seven
purchase orders dated between May 2000 and September 2004 which show the Son’s
Design Mark altered by the Father to include the words Miranda Aluminum.
(ii)
A
lawn sign which shows the Son’s Design Mark without alteration accompanied by the
words “windows and doors” so that the words, when read together, appear to be
the Son’s corporate name. Approximately 100 such signs were allegedly displayed
in the period from 1999 to the present. The Father’s phone number appears at
bottom of the sign.
(iii)
The
Father says he distributed thousands of flyers annually in this period. The
flyers were apparently printed with three different headings: Miranda Aluminum
Inc., Miranda Direct, and the Design Mark. The “representative” flyer in the
Father’s evidence is headed Miranda Direct Ltd. and says in large print “call
Tony Miranda”. It bears the Father’s phone number. Since Miranda Direct only
became the Applicant’s registered trade name on January 5, 2006, I assume,
in the absence of evidence about its actual use, that this flyer was not used
before 2006. It is noteworthy that the pictures of installed windows and doors
on the flyer are identical to the pictures on the Son’s flyer.
(iv)
A
second version of the Father’s flyer was produced by the Son. It has the Design
Mark at the top altered to say “Aluminum and Vinyl Products” under the name
Miranda. This had been the Son’s registered trade name for TMR. It also says
“call Tony Miranda” and shows the photos of installed windows and doors which
appear on the Son’s flyer. The flyer does bear the Father’s telephone number.
(v)
The
Father provided a DVD which played a television commercial in the Portuguese
language. No translation was provided. The commercial aired during Portuguese
programming on OMNI television in Toronto in 2006. It showed the Father and a lawn sign
which read Miranda Direct, Vinyl Windows and Doors. It also included his phone
number and said “call Tony Miranda”. The Son says, and I accept, that two of
the windows featured in the commercial were, in fact, his installations. A
report from Mr. Julio Peters, the Son’s private investigator,
indicated that, at the time the commercial was being shown, a call to the
telephone number displayed led to a subsequent meeting during which the
investigator was advised by the Father that the Son’s company Miranda Windows
and the Father’s company Miranda Direct were the same company.
[32]
In
my view, the Father’s evidence does not establish prior use of the name Miranda.
Before 2000, the evidence of use is not credible and, even if the Miranda name
was used, it was twice abandoned. Further, between 2000 and 2004, when TMR was
dissolved, the Father’s use of the name Miranda in the Design Mark was
calculated to confuse customers. This is not prior use which entitles the
Applicant to the benefit of subsection 17(1) of the Act.
Issue 3 Paragraph 9(1)(k)
of the Act – Falsely Suggesting a Connection with the Father
[33]
Paragraph
9(1)(k) provides that:
|
9. (1) No person shall adopt in connection
with a business, as a trade-mark or otherwise, any mark consisting of, or so
nearly resembling as to be likely to be mistaken for,
[…]
(k) any matter that may falsely suggest a connection with
any living individual;
|
9. (1) Nul ne peut adopter à l’égard d’une
entreprise, comme marque de commerce ou autrement, une marque composée de ce
qui suit, ou dont la ressemblance est telle qu’on pourrait vraisemblablement
la confondre avec ce qui
suit
:
[…]
k)
toute matière qui peut faussement suggérer un rapport avec un particulier
vivant;
|
[34]
The Son adopted the name
Miranda in November 1990 when he registered Miranda Aluminum and Vinyl Products
as TMR’s trade name. At that date: the Father was working for the Son as a
salesman; the Father had been out of business since 1988; and the corporate
registration for his Numbered Company had been cancelled. Further, the Father’s
arrest and imprisonment was publicized. In these circumstances, it cannot be
said that the Son adopted the name Miranda at a time when the public would
falsely have made a connection with the Father in association with the supply
and installation of aluminum products.
Issue 4 Is there a False
Claim of First Use?
[35]
The
Respondent claims first use at least as early as August 31, 1991. However,
the earliest documentary evidence of use is a purchase order dated at Mississauga on October 5,
1991.
[36]
The
Applicant relies on the decision of Mr. Justice Fred Gibson in Unitel
Communications Inc. c. Bell Canada, 61 C.P.R. (3d) 12, in which two trademarks were found to
be void ab initio because the declarations of use were false. In that
case, applications for the proposed use of the trademarks Calling Card and
Carte d’appel were applied for and thereafter declarations of use were filed.
However, counsel for the Respondent admitted that the declarations were false
and that the marks had, in fact, never been used.
[37]
In
my view, this decision has no present application. There is no evidence in this
case to suggest that the Respondent’s declaration of first use is false. The
Son’s affidavit states that TMR used the marks before August 1991. In these
circumstances, the fact that the first documentary evidence of use is dated two
months after the first use stated in the trademark applications is not
sufficient to justify expunging the Respondent’s trademarks.
Issue 5 Distinctiveness
[38]
Paragraph
18(1)(b) of the Act provides that a registration is invalid if a trademark is
not distinctive at the time the proceedings bringing the validity of the mark
into question are commenced.
[39]
The
Father commenced this application to expunge the Word and Design Marks on
July 16, 2007. By that date the Father had incorporated Miranda Aluminum
Inc. (on March 23, 2000) and had allegedly carried on business supplying
aluminum products using the names Miranda Aluminum Inc. and Miranda Direct.
[40]
The
Father must convince me on a balance of probabilities that his use or use by
John Miranda at July 16, 2007 was such that the Respondent’s Word and
Design Marks had lost the distinctiveness they had acquired by that date.
[41]
Looking
first at the Father, the evidence of his use is described above. For the most
part, it indicates that the Father was carrying on business using altered
versions of the Son’s Design Mark. In these circumstances, he cannot rely on
his evidence of use to show a lack of distinctiveness.
[42]
However,
by July 2007, the Father had also used the Miranda Direct flyer and had aired
the OMNI television commercial. In my view, (i) the evidence of the Son’s
private investigator relating to April 2000 and (ii) the evidence of Maria
Valente, who provided an affidavit in which she said that the Father told her in
April 2006 that Miranda Direct was the same company as Miranda Windows and
Doors, show that the Father’s use of the name Miranda as early as 2006 was not
intended to present the Applicant as a distinct company. Given these facts and
the clear evidence of the distinctiveness of the Respondent’s Word and Design
Marks, I am not persuaded that paragraph 18(1)(b) of the Act applies.
[43]
Further,
the evidence clearly shows that the Respondent’s Word and Design Marks were
widely used and well-known when this application was commenced.
[44]
The
Applicant’s allegation of lack of distinctiveness also involves the business of
John Miranda. However, his business has always been the manufacturing and
sale of aluminum products at the wholesale level. Accordingly, I have concluded
that his use of the Miranda name has no bearing on the distinctiveness of the
Respondent’s Word and Design Marks which are only used in retail sales.
JUDGMENT
THIS COURT ORDERS AND
ADJUDGES that, for the reasons given
above, the application is hereby dismissed with costs.
“Sandra
J. Simpson”
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