Docket: T-267-11
Citation: 2011 FC 1338
Ottawa, Ontario, November 22,
2011
PRESENT: The Honourable Mr. Justice Martineau
BETWEEN:
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CLIC INTERNATIONAL INC
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Applicant
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and
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CONVENIENCE FOOD INDUSTRIES (PRIVATE)
LIMITED
and
THE REGISTRAR OF TRADE-MARKS
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Respondents
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REASONS FOR JUDGMENT AND
JUDGMENT
[1]
This
is an appeal under section 56 of the Trade-Marks Act, RSC 1985, c T-13,
as amended, (the Act), of the decision of the Registrar of Trade-Marks (the
Registrar) dated December 10, 2010, to expunge the trade-mark LAZIZA &
Design (the Trade-mark) registered as TMA323,215 in association with “canned fava beans”, further to
a section 45 proceeding initiated by Convenience Food Industries (Private)
Limited (the respondent) against Clic International Inc (the applicant), who is
the owner of the Trade-mark.
[2]
An
illustration of the Trade-mark is reproduced below:
[3]
On
December 5, 2010, the Registrar issued a notice requiring the applicant to
furnish an affidavit or a statutory declaration showing,
with respect to each of the wares or services specified in the registration,
whether the trade-mark was “in use” in Canada at any time during the three year
period immediately preceding the date of the notice (the relevant period). Section
4 of the Act provides that a trade-mark in association with wares is deemed to
be “in use” where 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 manners associated with the wares that notice of the association is then
given to the person to whom the property or possession is transferred.
[4]
The oft-cited decision in Philip Morris Inc v Imperial
Tobacco Ltd (1987), 13 CPR (3d) 289
at 293, 8 FTR 310 (FCTD) explains the purpose of
section 45 and describes the evidence required to prove use of the registered
trade-mark under this provision:
It is well established that the purpose and scope of s. 44
[now section 45] is to provide a simple, summary and expeditious procedure for
clearing the register of trade marks which are not bona fide claimed by their
owners as active trade marks. The procedure has been aptly described as one for
removing “deadwood” from the register [...] The Registrar’s decision is not one that finally determines
substantive rights but only whether the trade mark entry is liable to be
expunged under s. 44 or not. If use is relied on then the evidence filed in
response to the notice must “show” the use or at least sufficiently relate the
facts from which such use can be inferred. Mere statutory tracking in the
nature of a bare statement that the registrant was currently using the trade
mark in the normal course of trade in association with the wares is
insufficient to establish use unless coupled with facts that are descriptively
corroborative of the same. Evidence of a single sale, whether wholesale or
retail, in the normal course of trade may well suffice so long as it follows
the pattern of a genuine commercial transaction and is not seen as being
deliberately manufactured or contrived to protect the registration of the trade
mark. Evidence in response to a s. 44 notice should be forthcoming in quality,
not quantity, and there is no need nor justification for evidentiary overkill.
[5]
In response to the section 45 notice, the applicant filed the affidavit of Mr. Antoine
Kassas, the applicant’s Executive Vice-President, with samples of labels that
were affixed to the cans of the beans marketed in Canada during the relevant period. An
illustration of one such sample is reproduced below:
[6]
The
applicant readily admitted before the Registrar that the trade-mark in use
depicted certain modifications compared to the original version of the disputed
Trade-mark, characterized by the word LAZIZA (the word portion) and the palm
trees in a circle design (the design portion), but contended that the
modifications were not substantial and should not affect its rights on the
disputed Trade-mark. The applicant argued that the only dominant feature
of the Trade-mark is the word portion, LAZIZA, which being of a foreign
language, annihilated any likelihood of confusion in the minds of consumers as
to the source of the wares sold in association with the Trade-mark.
[7]
However,
the Registrar did not find this to be case. The hearing officer rather decided
that the design portion of the Trade-mark was also an “essential feature” and a
“distinctive element” of it. Thus, he concluded that the absence of this essential
feature, combined with the variations and additions that the modified version
of the Trade-mark contained, changed the identity of the Trade-mark in a way that the use of the modified
version of the Trade-mark could not constitute use of the Trade-mark. Accordingly,
the Trade-mark was expunged from the register.
[8]
It is
not disputed in the present case that no additional evidence has been filed
with the Court and both parties agree that the applicable standard of review is
that of reasonableness. Counsel for the parties submit that the question is
whether the Registrar’s impugned decision is supported by reasons that can
withstand a “somewhat probing” examination and is not “clearly wrong”, to use
the words of the Supreme Court in Mattel Inc v 3894207 Canada Inc,
[2006] 1 S.C.R. 772 at para 40, citing, with approval, Molson
Breweries, a Partnership v John Labatt Ltd, [2000]
FCJ 159 at para 51.
[9]
The Court
notes that since Dunsmuir v New Brunswick, [2008] 1 S.C.R. 190 at para 62,
the appropriate standard of review in an appeal under section 56 of the Act has
been settled as being that of reasonableness, and confirmed by the Federal
Court of Appeal in Scott Paper Limited v Smart & Bigger et al, 2008
FCA 129 at para 11 (see also Matol Biotech Laboratories
Ltd v Jurak Holdings Ltd, 2008 FC 1082 at paras 6-8; Advance
Magazine Publishers Inc v Wise Gourmet Inc, 2009 FC 1208 at paras
34-40; and Fasken Martineau Dumoulin
sencrl, srl c Laboratoires Bio-Santé
Inc, 2011
FC 802 at para 18).
[10]
The
applicant submits that the evidence of use required in a section 45 proceeding needs
only to satisfy the Registrar, on a relatively low threshold, that the
registered trade-mark is still in use. The applicant contends that the changes depicted in the modified version
of the Trade-mark amount to no more than “cautious variations” that are permitted by
the jurisprudence as far as the dominant features of a trade-mark are
maintained and the differences are so unimportant as not to mislead an unaware
purchaser (Promafil Canada Ltee v Munsingwear Inc, [1992]
FCJ 611 (FCA)).
[11]
The
applicant contends that the Registrar erred in deciding
that the absence of the palm trees design would change the identity of the
Trade-mark. In this sense, the applicant notably refers to Alibi
Roadhouse Inc v Grandma Lee’s International Holdings Ltd, [1997]
FCJ 1329, wherein this Court held that the use of the word ALIBI with a bold
underline constituted use of the registered trade-mark ALIBI BAR & Grill
& Design, the word Alibi being the dominant element in both marks. The
applicant also relies on Eva Gabor International Ltd v 1459243 Ontario Inc,
[2011] FCJ 27, in which this Court held that the use of
XTS – VIRTUAL REALITY (without the original square shaped frame) did constitute
use of the registered trade-mark VIRTUAL REALITY & DESIGN.
[12]
The
respondent submits that in the case of composite word and design marks,
evidence of use of the word portion alone is insufficient to show use of the
trade-mark as registered. Accordingly, the Registrar could reasonably decide that
the applicant’s registration only protects the Trade-mark that includes both
the word component and the design component. The respondent maintains that this
ruling is in line with the case law, notably Bierrsdorf AG v Becton, Dickinson and Co, (1992), 44
CPR (3d) 151, wherein it was decided that the trade-mark consisting of letters
“B-D” in a box design constituted use of the registered trade-mark originally
consisting of “B‑D” incorporated in a maple-leaf design.
[13]
Having
considered the impugned decision in light of the totality of the evidence, the
Registrar’s findings and ultimate conclusion are not unreasonable. I fail to
see any error of law by the hearing officer, and the reasons in the impugned
decision are transparent, provide a rational basis to expunge the Trade-mark,
and constitute a defensible and acceptable outcome. This is not the role of
this Court to re-weigh the evidence that was before the Registrar. The
conclusion made by the hearing officer that the design portion of the
Trade-mark is also an essential feature is a conclusion of fact which is supported
by the evidence, and which was reasonably open to the hearing officer whether
the sample illustrated in the Registrar’s decision was cropped or not.
[14]
The
Registrar applied the correct test being that of the unaware purchaser’s
ability to identify goods having the same origin (Canada (Registrar of Trade
Marks) v Cie International pour l’informatique CII Honeywell Bull SA,
(1985) 4 CPR (3d) [CII
Honeywell]). Besides the word LAZIZA, the Registrar could reasonably
decide that the palm tree design was also an essential feature of the
Trade-mark, by which it can be recognized, and that could not be protected if
it was no longer in use during the relevant period as defined by subsection
45(1) of the Act.
[15]
The
Trade-mark as used by the applicant and the Trade-mark as registered differ
more than in petty details and it is rather hard to characterize the
differences as “unimportant”. In the case at bar, the evidence filed by the applicant
clearly shows that in relevant period, the Trade-mark has only been used in a
modified version that not only does not contain the original palm trees in a
circle design, but also is in part characterized by the Arabic characters in an
oval design appearing under the word LAZIZA, giving it rather a different look.
The font of the word LAZIZA in the samples is also quite different from the
font of the actual Trade-mark. Thus, it was not unreasonable on the part of the
Registrar to have decided that such modification departed from a “cautious
variation” of the Trade-mark.
[16]
The applicant also takes issue with the Registrar’s statement that “Clic decided to obtain
protection not only in the word LAZIZA but in combination with a palm
trees design”, contending that the Registrar erred in considering that the
applicant could have filed an application to cover a word version of its
Trade-mark if it wished to protect its rights in the use of the word LAZIZA. In the applicant’s view, this
goes beyond the issue to be determined in a section 45 proceeding. This
argument is not convincing. As it appears in the impugned decision (notably at paragraph
26), this was not the test applied in practice by the hearing officer to decide
whether the Trade-mark was in use during the relevant period. As part of the
reasoning, the comment made by the hearing officer was simply meant to justify
or explain the reasonable conclusion that it was only in combination with the
palm trees design, and not unreservedly, that the applicant obtained protection
for the word LAZIZA as it appeared in the disputed Trade-mark.
[17]
The
applicant finally argues that despite the modifications, consumers still
continue to recognize and associate the Trade-mark with the applicant’s wares
(affidavit of Mr. Antoine Kassas). Justice Pratte in CII Honeywell,
above at para 408, however, specifically mentioned with regard to section 45
proceedings, that “the problem to be resolved is not whether CII deceived the
public as to the origin of its goods. It clearly did not. The real and only
question is whether, by identifying its goods as it did, CII made use of its
trade-mark “Bull”. This question must be answered in the negative unless the
mark was used in such a way that the mark did not loose its identity and remained
recognizable in spite of the differences between the form in which it was
registered and the form in which it was used”. In this case, the Registrar did
not err in answering the question in the negative.
[18]
In view of the
above, this
appeal should be dismissed. At the hearing, counsel agreed that costs should
follow the result of the appeal and that a lump sum of $3,000 should be allowed
to the winning party.
JUDGMENT
THIS COURT’S
JUDGMENT is that the appeal is dismissed. Costs
in the amount of $3,000 are awarded in favour of the respondent Convenience
Food Industries (Private) Limited.
“Luc
Martineau”
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