Date: 20081105
Docket: T-1889-07
Citation: 2008 FC 1237
Ottawa, Ontario, November
5, 2008
PRESENT: The Honourable Mr. Justice Shore
BETWEEN:
VÊTEMENT
MULTI-WEAR INC.
Applicant
and
RICHES,
MCKENZIE & HERBERT LLP
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
I. Overview
[1]
While the purpose of section 45 of the Trade-marks
Act,
R.S., 1985,
c. T-13 (TMA),
may be to rid the Trade-marks Register of “dead wood”, trade-marks no longer in
use; evidence of use allows the trade-mark to remain on the register.
[2]
Thus,
even evidence of a single sale in the normal course of trade has been found to
be sufficient so long as it is considered to be a genuine commercial
transaction, and not contrived to protect the registration of a trade-mark (Philip
Morris Inc. v. Imperial Tobacco Ltd. (1987), 8 F.T.R. 310, 13 C.P.R. (3d) 289 at 293 (F.C.T.D.)).
II. Judicial Procedure
[3]
The
Applicant seeks an order to set aside the Registrar of Trade-Marks’ decision
indicating that registration no. 498,437 for the trade-mark L’AMADEI would be
expunged from the Trade-marks Register (Registrar’s decision), pursuant to
subsection 45(4) of the TMA. This is an
unopposed appeal pursuant to section 56 of the TMA.
III. Background
A.
Facts
[4]
The
Applicant, Vêtement Multi-Wear Inc. (Multi-Wear), manufactures and sells
women’s clothing to retail outlets in Canada and the United States of
America.
On August 7, 1998, the Canadian Intellectual Property Office granted
registration no. 498,437 in respect to the L’AMADEI trade-mark to Multi-Wear.
The trade-mark covered ladies’ clothing, namely, pants, vests, skirts, dresses,
blouses and sweaters.
[5]
On
or about March 30, 2007, Multi-Wear received a notice, dated March 28, 2007
(the Registrar’s notice). This notice from the Registrar of Trade-marks (the
Registrar) stated that the Respondent, Riches, McKenzie & Herbert LLP (RMH),
had requested a Section 45 Proceeding in respect to the L’AMADEI trade-mark.
The Registrar’s notice indicated that Multi-Wear must provide an affidavit or
statutory declaration providing sufficient evidence that it has been using the
L’AMADEI trade-mark in Canada within three years of the date of the
Registrar’s notice. Failure to provide such evidence within three months may
lead to the expungement of the trade-mark registration.
[6]
Multi-Wear
consulted its attorney and claims that by its own inadvertence it neglected to
supply its attorney with all the information and documents required to respond
to the notice. Due to the failure of Multi-Wear to file a timely response to
the notice, the Registrar issued a decision on September 6, 2007. The
Registrar’s decision advised Multi-Wear that its registration for the
trade-mark L’AMADEI would be expunged from the Trade-marks Register for reason
of the failure to file the evidence required, unless an appeal is filed with
the Registrar and in the Federal Court within the time limit specified in
section 56 of the TMA.
[7]
On
October 31, 2007, Multi-Wear timely filed a notice of application appealing the
decision to expunge the trade-mark L’AMADEI.
[8]
RMH
is not opposing the application.
B.
Registrar’s
Decision
[9]
The
Registrar’s decision, dated September 6, 2007, expunging the trade-mark
L’AMADEI from the Trade-marks Register is the decision at issue in this
judicial review. The Registrar’s decision reads in relevant part:
|
You are advised that by reason of the
failure to file the evidence required, the registration will be expunged from
the register pursuant to Sub-Section 45(4) of the Trade-mark Act.
The procedure prescribed by Sub-Section
45(5) of the Act will be followed unless an appeal is filed with the
Registrar and the Federal Court within the time limited by Section 56 of the Act.
|
Vous êtes avisé par la présente qu’en
raison de l’omission de fournir la preuve requise, l’enregistrement sera
radié du registre, conformément au paragraphe 45(4) de la Loi sur les
marques de commerce.
Les dispositions prescrites au
paragraphe 45(5) de la Loi seront suivies à moins qu’un appel soit
produit au Bureau du registraire et à la Cour Fédérale dans le délai prévu
par l’article 56 de la Loi.
|
IV. Issues
[10]
(1) Is
it for the Court to take into consideration new evidence in a section 56 appeal
of a decision of the Registrar?
(2) Does
the new evidence demonstrate sufficient use to warrant setting aside the
Registrar’s decision expunging registration no. 498,437 for the trade-mark
L’AMADEI?
V. Standard of Review
[11]
Subsection 56(1) of the TMA
provides for an appeal “from any decision of the Registrar under this Act.” Subsection
56(5) provides that the Federal Court may consider additional evidence that was
not before the Registrar and may exercise any discretion vested in the
Registrar.
[12]
The
case law also supports a broad review power of the Federal Court. On appeal,
where no new evidence is filed, that would materially affect the Registrar’s
findings or exercise of discretion, the standard is reasonableness whether the
issue is one of fact or mixed fact and law (Molson Breweries v. John Labatt
Ltd., [2000] 3 F.C. 145 (C.A.), 5 C.P.R. (4th)
180 at para. 51.)
[13]
If
new evidence is filed, however, the standard of review is different. As Justice
Marshall Rothstein, noted:
[51] …where
additional evidence is adduced in the Trial Division that would have materially
affected the Registrar’s findings of fact or the exercise of his discretion,
the Trial Division must come to his or her own conclusion as to the correctness
of the Registrar’s decision.
(Molson Breweries, above; reference is
also made to Accessoires d'Autos Nordiques Inc. v.
Canadian Tire Corp., 2007 FCA 367, 62
C.P.R. (4th) 436 at para. 29.)
[14]
In
coming to his or her own conclusion as to the correctness of the Registrar’s
decision, the Court will substitute its own opinion for that of the Registrar
without any need to find an error in the Registrar’s reasoning (Guido Berlucchi
& C. S.r.l. v. Brouilette Kosie Prince, 2007 FC 245, 310 F.T.R. 70 at
para. 24). That is, the Court must decide the issue on the merits based on the
evidence before it (Maison Cousin (1980) Inc. v. Cousins
Submarines Inc., 2006 FCA 409, 60
C.P.R. (4th) 369 at para. 4).
[15]
To determine whether the new
evidence is sufficient to warrant a de novo determination, one should
look at the extent to which the additional evidence has a probative
significance that extends beyond the material that was before the Registrar (Guido
Berlucchi, above at para. 25). Indeed, Justice John Evans held that “[t]he
more substantial the additional evidence, the closer the appellate Court may
come to making the finding of fact for itself.” (Garbo Group Inc. v. Harriet
Brown & Co., [1999] 176 F.T.R. 80, 3 C.P.R. (4th) 224 at para. 38
(F.C.T.D.).)
[16]
Since
the Registrar’s decision was based on a failure to provide evidence of use as
required by the Section 45 Notice provision, the new evidence of use presented
in this appeal has probative significance; therefore, the standard of review in
this case is correctness. That is, the Registrar’s decision warrants a de
novo determination whereby this Court may decide the issue on the merits
based on the evidence before it.
VI. Analysis
(1) Is it for the Court to
take into consideration new evidence in a section 56 appeal of a decision of
the Registrar?
[17]
The
Applicant has, in a section 56 appeal of a Registrar’s decision, the same
opportunity to file evidence which he had before the Registrar (Austin Nichols & Co.
(c.o.b. Orangina International Co.) v. Cinnabon, Inc., [1998] 4 F.C. 569, 82
C.P.R. (3d) 513 at para. 13 (F.C.A.)). Thus, the Court sitting
in appeal may take into consideration new evidence even in cases where the Applicant
failed to file evidence before the Registrar (Austin Nichols & Co., above at para.
22). In Baxter International Inc. v. P.T. Kalbe Farma TBK., 2007 FC 439, 157 A.C.W.S. (3d) 632 at paragraph 13, Justice
Yvon Pinard held that even though a Section 45 Notice was sent to the correct
addresses of the Applicant and the Applicant’s representative of service, the
Court could accept new evidence.
[18]
Thus, this Court has the discretion to consider new
evidence in this application appealing the Registrar’s decision.
(2) Does the new evidence
demonstrate sufficient use to warrant setting aside the Registrar’s decision expunging
registration no. 498,437 for the trade-mark L’AMADEI?
[19]
According
to Multi-Wear, the evidence provided shows sales in the normal course of trade
sufficient to show use within the meaning of section 45 of the TMA. Multi-Wear,
however, does acknowledge that during the three year period prior to the date
of the notice, Multi-Wear has not used its trade-mark L’AMADEI in association
with ladies’ vests and sweaters. Its registration should not, however, be
expunged with regard to ladies’ clothing, namely pants, skirts, dresses and
blouses.
[20]
The
test that has to be met by the registered owner under section 45 is not onerous
(Austin
Nichols & Co.,
above at para. 29). The Federal Court of Appeal in Eclipse
International Fashions Canada Inc. v. Cohen, 2005 FCA 64, 48 C.P.R. (4th) 223, has
reiterated:
[6] …it
is not necessary, in the context of an expungement request under section 45, to
provide an over-abundance of evidence of use or utilization of the mark. The
purpose of section 45 is to rid the register of “dead wood”…
[21]
Moreover, the use must be of a commercial nature. In The Molson
Companies Limited v. Halter (1976), 28 C.P.R. (2d) 158 (F.C.T.D.), [1976]
F.C.J. No. 302 (QL), Justice Frederick Gibson held:
[32] In essence, in order to prove “use” in Canada of a trade
mark for the purpose of the statute, there must be a normal commercial
transaction in which the owner of the trade mark completes a contract in which
a customer orders from the owner the trade mark wares bearing the trade mark
which wares are delivered by the owner of the trade mark pursuant to such
contract to such customer. In other words, as section 4 of the Act prescribes,
the “use” must be “in the normal course of trade” at the time of the transfer
of the property in or possession of such wares.
[22]
Thus,
even evidence of a single sale in the normal course of trade has been found to
be sufficient so long as it is considered to be a genuine commercial transaction,
and not contrived to protect the registration of a trade-mark (Philip Morris
Inc., above).
[23]
Through the evolution of
jurisprudence and the more recent Eclipse International Fashions Canada
decision of the Federal Court of Appeal, above, the Court recognizes that in
the present case it is not a matter of a single sale in the normal course of
trade, but rather significant commercial transactions duly documented with
invoices.
[24]
To this effect, Multi-Wear provides as evidence of use an
affidavit from Ms. Paola
Altomonte, the President of Multi-Wear. She states that Multi-Wear has used the
trade-mark L’AMADEI in Canada in association with
ladies’ clothing since June 1991. Multi-Wear registered the trade-mark L’AMADEI
on August 7, 1998. She also provides invoices for 16 sales of Multi-Wear
ladies’ clothing bearing the trade-mark L’AMADEI located on the hangtags of the
clothes. Six of the sales were to Canadian companies while the remaining 10
sales were to one client located in the United States of America. These sales
took place from between March 29, 2005 to March 27, 2007, which is within the
three year period required by the Section 45 Proceeding.
[25]
These
invoices refer to normal commercial transactions wherein the owner of the trade
mark enters contracts in which customers purchase merchandise bearing the
owner’s trade mark. While the invoices themselves do not mention the L’AMADEI
trade-mark, based
on Ms. Altomonte’s affidavit, Multi-Wear affixed hangtags bearing the L’AMADEI
trade mark onto the items of ladies’ clothing listed in the invoices. An
inference exists from the contents of the invoices that ladies’ clothing had
been delivered subsequent to contracts of sale.
VII. Conclusion
[26]
The affidavit evidence and invoices establish that the
trade-mark L’AMADEI has been used in association with ladies’ clothing within
the three year period preceding the Section 45 Notice.
[27]
Based
on the foregoing, the Registrar’s Decision indicating that registration no.
498,437 for the trade-mark L’AMADEI would be expunged is set aside and
registration no. 498,437 for the trade-mark L’AMADEI is to be maintained on the
register, but only in respect of ladies’ clothing, namely, pants, skirts,
dresses and blouses.
JUDGMENT
THIS COURT ORDERS that the Registrar’s Decision indicating that registration no.
498,437 for the trade-mark L’AMADEI would be expunged be set aside and that
registration no. 498,437 for the trade-mark L’AMADEI be maintained on the
register, but only in respect of ladies’ clothing, namely, pants, skirts,
dresses and blouses. The whole without costs.
“Michel M.J. Shore”
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