Date: 20080820
Docket: T-2252-07
Citation: 2008 FC 959
Ottawa, Ontario, August 20,
2008
PRESENT: The Honourable Mr. Justice Beaudry
BETWEEN:
GRAPHA-HOLDING
AG
Applicant
and
ILLINOIS
TOOL WORKS INC.
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This
is an appeal by Grapha-Holding AG under section 56 of the Trade-marks Act,
R.S.C. 1985, c-T-13 (the Act), of the decision of P.H. Sprung, member of
the Trade-marks Opposition Board for the Registrar of Trade-marks (the
Registrar) maintaining the respondent’s trade-mark, MULLER (the mark),
in association with the wares “packaging and processing machines”, “palletizing
and conveying machines” and “stretching and pre-stretching machines”.
BACKGROUND
[2]
The
applicant, Grapha-Holding AG, is a Swiss company having a place of business in Switzerland.
[3]
The
respondent, Illinois Tool Works Inc, uses the trade-mark MULLER in association
with many wares they fabricate. ITW Canada, a wholly owned subsidiary of
Illinois Tool Works, is a licensee of the various trade-marks of the respondent
and it has not filed an appearance in this case.
[4]
Following
a request by the applicant, the Registrar sent a notice to the respondent under
section 45 of the Act on October 30, 2003. The notice required the respondent,
as the registered owner of the mark, to provide an affidavit or a statutory
declaration showing that they had used the mark at any time in Canada in the three
years preceding the notice.
[5]
If
the owner did not provide 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 would be liable to be expunged or amended
accordingly”.
[6]
The
respondent submitted the affidavit of Faruk Turfan, sworn on April 26, 2004.
Mr. Turfan identified himself as the current Vice-President of ITW Canada
Holdings Company.
[7]
Mr.
Turfan attests that the brochures attached to his affidavit are for the wares
which are sold in Canada in association with the subject trade-mark. He
states that at the time of sale, the trade-mark MULLER is marked on the machine
as shown in the brochures. He identifies one of the brochures as being
currently in use and being in use since about 2002, and the other brochures as
being either currently in use or in use during the normal course of trade for
the wares.
[8]
Mr.
Turfan also states that the sales of the wares sold in association with the
subject trade-mark in Canada during the relevant period have been
significant and continuous. He outlines that these sales have been in excess of
$10,000,000 in 2000, 2001, 2002 and 2003.
[9]
According
to the applicant, there is no evidence to support a finding that the wares
actually sold were marked with the subject mark. The applicant submits that
there is no indication that the brochures referred to in the respondent’s
affidavit accompanied the sale of the wares during the relevant period.
[10]
On
November 1, 2007, the Registrar decided to maintain the registration of the
mark in association with the wares “packaging and processing machines”,
“palletizing and conveying machines” and “stretching and pre-stretching
machines” and to expunge the registration of the mark in association with
“merchandise handling machines”.
[11]
According
to the Registrar, it was apparent from the evidence provided in Mr. Turfan’s
affidavit, including the brochures and the sales figures for the relevant
period that the sales of the wares did occur. As well, the Registrar stated
that the brochures, although not useful, did support the sworn affidavit of Mr.
Turfan.
ISSUES
[12]
The
applicant submits the following questions to the Court:
a) What is the
appropriate standard of review of the Registrar’s decision?
b) What
type of evidence is required for section 45 proceedings?
c) Does
the evidence filed before the Registrar satisfy the requirements of the
Act?
ANALYSIS
Standard of Review
[13]
The
appropriate standard of review of this type of 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 of review is reasonableness (Mattel,
Inc. v. 3894207 Canada Inc., 2006 SCC 22, [2006] 1 S.C.R. 772; Spirits
International N.V. v. (Canada) Registrar of Trade-marks, 2006 FC 520, 291
F.T.R. 172).
The role of the Court is not to reassess the evidence, but rather to consider
whether the conclusion based on the evidence is unreasonable.
[14]
For
a decision to be reasonable there must be justification, transparency and
intelligibility within the decision making process. The decision must fall
within a range of possible, acceptable outcomes which are defensible in respect
of the facts and the law (Dunsmuir v. New Brunswick, 2008 SCC 9,
291 D.L.R. (4th) 577).
Type of
evidence required
[15]
Section
45 is
intended to be a summary and expeditious procedure for cleaning up the
trade-mark register of trade-marks that have fallen into disuse. It is not
designed to resolve issues in contention between competing commercial
interests.
[16]
The affidavit
submitted in response to a request under section 45 must only supply facts from
which, on balance, a conclusion of use may follow as a logical inference (Osler,
Hoskin & Harcourt v. United States Tobacco Co., 139 F.T.R. 64, 77
C.P.R. (3d) 475 (F.C.T.D.)).
[17]
As
well, subsection
4(1) of the Act establishes the requirement for a trade-mark that is used in
association with wares:
|
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.
|
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.
|
[18]
The
evidence must also 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 v. Limco
Investments, Inc., 232 N.R. 190, (1998), 84 C.P.R. (3d) 164, (F.C.A.)).
[19]
In BMW Canada
Inc. v. Nissan Canada Inc., 2007 FCA 255, 60 C.P.R. (4th) 181, at
paragraph 25, the Federal Court of Appeal underlined a requirement where, in
order to demonstrate use in association with brochures, there must be evidence
that the brochures have been given at the time of transfer of the property or
possession of the wares.
Does the evidence
satisfy the requirements of the Act?
[20]
The
evidence
provided by the affidavit must describe the use of the mark within the meaning
of section 4 of the Act and should not simply state the use of the mark. The
Registrar inferred that the sales of the wares occurred and stated that
invoices for the sales of the machines were not necessary because the evidence,
as a whole, showed the use of the mark. In my view, the Registrar did not have
sufficient evidence before her to demonstrate the use of the mark.
[21]
In Boutique
Limité Inc., the Federal Court of Appeal upheld the decision of the
Registrar to expunge a trade-mark because, although there was 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”. The
registered owner must provide clear evidence on which the Registrar can base
their determination that the trade-mark was “in use”.
[22]
Furthermore,
referring
to use on dates that are contained both within and outside the relevant period
does not provide clear evidence, because it cannot be determined if any use has
occurred specifically during the relevant period. Justice Pinard underlined this
point in 88766 Canada Inc. v. Monte Carlo Restaurant Ltd., 2007 FC 1174,
63 C.P.R. (4th) 391 at paragraph 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. …
[23]
The brochures
contained in the affidavit show where the mark is situated on the various types
of wares sold by the respondent. But, the evidence does not indicate that these
brochures have been given at the time of transfer of the property in or
possession of the wares. The relevant period is between October 30, 2000 and
October 30, 2003. The Federal Court of Appeal stated this requirement in BMW
Canada Inc. v. Nissan Canada Inc. (2007), 60 C.P.R.(4th) 181
(F.C.A).
[24]
In
Mr. Turfan’ affidavit, the words :
·
"currently
sold in Canada… currently
in use and has been in use since about 2002…" (paragraph 4);
·
"…currently
in use" (paragraph 6);
·
"…currently
sold in Canada… currently marked on… presently in use in Canada"
(paragraph 6);
·
"...
similar brochures regularly accompany the sales of the wares in the normal
course of trade…" (paragraph 10);
do not meet the test of the jurisprudence. The
special circumstances in section 45 create an obligation on the Registrar to
ensure that the evidence adduced is solid and reliable (88766 Canada Inc. v.
Monte Carlo Restaurant Ltd., above, citing at paragraph 8 Boutique
Limité Inc., above). Such is not the case here. The
allegations in the affidavit are not precise enough.
[25]
The
Court is not satisfied that the evidence supported the Registrar’s conclusions
that the trademark had been used during the relevant time period.
[26]
Accordingly,
this appeal must be allowed.
JUDGMENT
THIS COURT ORDERS that the appeal is allowed.
1. The decision
rendered by the Registrar of Trade Marks, dated November 1, 2007 is set aside;
2. Registration
TMA 356,039 for the trade-mark MULLER is expunged in totality from the register
and the Registrar is directed to amend the register accordingly.
3. No costs are
awarded.
“Michel Beaudry”
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