Date: 20071115
Docket: T-2070-06
Citation: 2007 FC 1174
IN RE: Sections
45 and 56 of the Trade-Marks Act (R.S.C. 1985, c. T-13);
IN RE: A
notice under section 45 of the Trade-Marks Act sent at the request of
88766 CANADA INC. to the registered owner of Registration No. TMA283,750, i.e.,
MONTE CARLO RESTAURANT LIMITED;
IN RE: A
decision of the Registrar of Trade-Marks dated September 27, 2006, regarding
the mark MONTE CARLO, the subject of Registration No. TMA283,750;
BETWEEN:
88766 CANADA INC.
Applicant
and
MONTE CARLO RESTAURANT LIMITED
Respondent
REASONS FOR JUDGMENT
Pinard J.
[1]
This
is an appeal under section 56 of the Trade-Marks Act, R.S.C. 1985, c.
T-13 (hereinafter the “Act”), of the decision of D. Savard for the Registrar of
Trade-Marks (hereinafter the “Registrar”) maintaining the respondent’s
trade-mark, MONTE CARLO (hereinafter “the mark”), in association with the wares
“pizza and spaghetti” and the services “operation of a restaurant, food
take-out and food catering”.
[2]
At
the hearing before me, only counsel for the applicant appeared; Mr. Lane, who
represents the respondent, had advised the Registry beforehand that he would
not be appearing. Accordingly, these reasons were written after hearing counsel
for the applicant and reading the written memoranda of both parties.
[3]
Further
to a request by the applicant on January 26, 2005, the Registrar sent a notice
to the respondent under section 45 of the Act on February 10, 2005. The notice
required the respondent, as registered owner of the mark, to furnish an
affidavit showing that it had used the mark in the preceding three years.
[4]
On
September 27, 2006, the Registrar decided to maintain the registration of the
mark in association with the wares “pizza and spaghetti” and the services
“operation of a restaurant, food take-out and food catering” and to expunge the
registration of the mark in association with “operation of a tavern and a
banquet hall”.
[5]
Section
45 of the Act allows a party to request the Registrar to send a notice to the
registered owner of a trade-mark ordering the owner 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”.
Section 4 of the Act defines “in use” as follows:
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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.
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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.
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[6]
If
the owner does not furnish evidence to establish that the trade-mark was in use
during the three-year period immediately preceding the notice, “the registration
of the trade-mark is liable to be expunged or amended accordingly.”
[7]
The
appropriate standard of review of such a decision of the Registrar varies
according to whether new evidence was filed or not. In this case, since there
was no new evidence, the appropriate standard is reasonableness, and both
parties agree on this point (Mattel, Inc. v. 3894207 Canada Inc., [2006]
1 S.C.R. 772, at paragraphs 32 to 41; Spirits International N.V. v.
Registrar of Trade-marks, 2006 FC 520; Express File Inc. v. HRB Royalty
Inc., 2005 FC 542, (2005), 39 C.P.R. (4th) 59).
[8]
Section
45 of the Act permits the Registrar to expunge registered trade-marks that are
not bona fide claimed by their owners as active trade-marks. Only the
registered owner may provide evidence to establish the facts necessary for the
Registrar to determine whether the trade-mark has been “used” as defined by
section 4 of the Act. The special circumstances in section 45 create an
obligation on the Registrar to ensure that the evidence adduced is solid and
reliable. In addition, the evidence must satisfy the Registrar that the
trade-mark has been used during the relevant time period, that is, during the
three-year period immediately preceding the notice under section 45 (Boutique
Limité Inc. v. Limco Investments, Inc. (1998), 84 C.P.R. (3d) 164, [1998]
F.C.J. No. 1419 (F.C.A.) (QL)).
[9]
The
applicant submits that the affidavit of Mr. Galli does not establish that the
mark was used during the relevant period with respect to either the services or
the wares. I agree. The only period established by the affidavit on this point
is Mr. Galli’s statement that the circulars had been distributed during the
preceding five years. The relevant period is the preceding three years. There
is no evidence that the circulars were distributed during the latter period. As
to the photo that Mr. Galli says was displayed in the restaurants, the
affidavit does not state clearly that that occurred during the relevant period.
Yet, it would have been easy for Mr. Galli to confirm these facts, i.e.,
whether the circulars were distributed and the photo displayed between February
10, 2002, and February 10, 2005. He did not do so.
[10]
It
is also important to note that by choosing, as it did, to not file an affidavit
with this Court containing the necessary particulars, which would of course
have allowed the applicant to cross-examine the deponent, the respondent must
rely exclusively on the inadequate evidence that was before the Registrar.
[11]
In
Boutique Limité Inc., above, the Federal Court of Appeal upheld the
decision of the Registrar to expunge a trade-mark because, even if there were
evidence establishing that the mark had been used, the Court noted “a
consistent lack of precision with regard to the dates each ware would have been
sold.” It is incumbent on the registered owner to provide clear evidence on
which the Registrar can base his or her determination that the trade-mark was
“in use”. In my view, in this case, it was unreasonable for the Registrar to
assume that because a circular contained an offer that expired on July 31, 2005,
that circular had necessarily been distributed during the relevant time period.
[12]
Furthermore,
with respect to the wares “pizza and spaghetti”, subsection 4(1) establishes
that a trademark is 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 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.” The
Registrar decided that this had been established in this case because the
circulars that offered the pizza and spaghetti and bore the mark had probably
been used by the customers who ordered the wares.
[13]
In
BMW Canada Inc. v. Nissan Canada Inc., 2007 FCA 255, a decision dated
July 12, 2007, the Federal Court of Appeal stated, at paragraph 25:
. . . For the use of a mark in
advertisement and promotional material to be sufficiently associated with a
ware to constitute use, the advertisements and promotional material would have
to be given at the time of transfer of the property in or possession of the
wares.
[14]
Here,
the Registrar did not conduct an analysis to determine whether the customers
used the circulars at the time of the transfer of the property in or possession
of the wares in question. There was no evidence on this point.
[15]
For
all these reasons, the refusal of the Registrar, under the circumstances, to
completely expunge Registration No. TMA 283,750 for the trade-mark MONTE CARLO
is unreasonable.
[16]
It
follows that the applicant’s appeal must be allowed and an order must be made
that the Registrar expunge the registration of the mark in question, with costs
against the respondent.
“Yvon
Pinard”
Ottawa,
Ontario
November
15, 2007
Certified
true translation
Mary
Jo Egan, LLB
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