Docket:
T-1056-11
Citation: 2013 FC 1006
Ottawa, Ontario, October 2, 2013
PRESENT: The Honourable Mr. Justice Harrington
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BETWEEN:
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MEDOS SERVICES CORPORATION
MARATHON MEDICAL INC.
ALEXANDER VLASSEROS
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Applicants
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and
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RIDOUT AND MAYBEE LLP
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Respondent
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REASONS FOR JUDGMENT AND JUDGMENT
[1]
Unlike other pieces of intellectual property, if
a trade-mark is not used, it may be expunged from the register. Section 45 of
the Trade-Marks Act provides that the Registrar may, on request of
anyone who pays the prescribed fee, give notice to the registered owner of the
trade-mark requiring him to furnish within three months an affidavit or
statutory declaration showing, with respect to each of the wares or services
specified in the registration, whether the trade-mark was in use during Canada
at any time in the previous three years and, if not, the date when it was last
used and the reason why it has not been used since.
[2]
On 23 December 2010, the Registrar of Trade-marks,
at the request of the law firm Ridout & Maybe LLP, mailed a letter by Express
Post to Medos Services Corporation, the owner of the trade-mark MEDOS. As no
reply was received, the trade-mark was expunged on 26 April 2011. Medos, its
principal Alexander Vlasseros, and a related corporation, Marathon Medical
Inc., have appealed that decision. They make much of the fact that the letter
from the Registrar was unclaimed, and returned. However, it was addressed to
the last address on file, and indeed Mr. Vlasseros used the same address
in a subsequent affidavit.
[3]
Decisions of the Registrar may be appealed to
the Federal Court. Unlike other appeals and judicial reviews, s. 56 of the Trade-Marks
Act provides that on such appeals additional evidence may be adduced. The
appellants have proffered evidence which they submit establishes use of the
trade-mark within the three years at issue. Thus it is not necessary to
consider whether there was a valid reason for non-use. The trade-mark was for
services being the “operation of a wholesale and retail business dealing in the
distribution and sale of medical and healthcare supplies and equipment through
multiple distribution centers.” The respondent submits that the evidence does
not establish use of the trade-mark by anyone.
[4]
In the alternative, if the Court is satisfied
that there was use of the trade-mark, it was used by Marathon Medical Inc. Use
by Marathon only constitutes use within the meaning of Section 50 of the Act if
it was licensed by Medos who nevertheless maintained control of the character
or quality of the service. The respondent submits there is no evidence to
support this proposition.
[5]
Mr. Vlasseros, who is not a lawyer, was given
leave to represent his Medos and Marathon corporations.
NATURAL
JUSTICE
[6]
There is no basis for Mr. Vlasseros’ submission
that the appellants were not afforded natural justice. Apart from the fact that
no explanation has been given as to why the Section 45 letter was unclaimed,
the law provides him a perfectly adequate recourse, an appeal with new
evidence. This is what has happened in similar cases such as Promotions CD
Inc v Mcburney, 2008 FC 1071, 71 CPR (4th) 63. Neither counsel for the
respondent nor I am aware of any instance in which an expungement in these
circumstances was sent back to the Registrar for reconsideration.
THE EVIDENCE
[7]
The burden upon the appellants to establish use
is not high. The matter before the Registrar is not a civil trial where both
side adduce evidence and the matter is decided on the balance of probabilities.
As Mr. Justice Hugessen noted in Meredith & Finlayson v Canada (Registrar of Trade Marks) (1991), 40 CPR (3d) 409, 138 NR 379 (FCA), at
paragraph 4:
Subsection 45(2) is
clear: the Registrar may only receive evidence tendered by or on behalf of the
registered owner. Clearly it is not intended that there should be any trial of
a contested issue of fact, but simply an opportunity for the registered owner
to show, if he can, that his mark is in use or if not, why not.
[8]
Evidence of use can take the form of a single
commercial transaction in the ordinary course of business (Sols R Isabelle
Inc v Stikeman Elliott LLP, 2011 FC 59, 92 CPR (4th) 83).
[9]
Mr. Vlasseros proffered four forms of evidence:
a.
a series of bills from Rogers addressed to Medos
Services Corporation;
b.
correspondence with foreign suppliers;
c.
receipts addressed to Mr. Vlasseros, Medos
Services Corporation and Marathon Medical Inc. for rent of office, warehouse
and repair space; and
d.
invoices from Marathon Medical Inc. to the
Société de l’assurance automobile du Québec (SAAQ), with respect to certain
patients. The invoices cover repair of hospital beds, hydrostatic safety tests,
refills, masks and tubing, and annual inspections.
[10]
It is not enough to say that a trade-mark has
been used. It must be shown that it has been used (Curb v Smart & Biggar,
2009 FC 47, 72 CPR (4th) 176, and cases cited therein.
Rogers Bills
[11]
The Rogers bills appear to be telephone bills,
no more, no less. They do not evidence use of the trade-mark. Mr. Vlasseros
tried to explain that these invoices covered yellow page advertisements,
although they certainly do not say so. The respondent, who had noted many
procedural irregularities, but who did not rely upon them, objected to what was
tantamount to evidence. I maintained that objection. A self-represented
litigant can no more testify in an appeal by way of application than a party
represented by counsel. As Lord Atkins said in Evans v Bartlam [1937] AC
473, [1937] 2 All ER 646, at page 479:
The fact is that
there is not and never has been a presumption that every one knows the law.
There is the rule that ignorance of the law does not excuse, a maxim of very
different scope and application.
Correspondence
with Foreign Suppliers
[12]
The correspondence with foreign suppliers
indicates that Mr. Vlasseros was seeking business. No mention was made of the
Medos trade-mark. He suggests that if these inquiries had borne fruit, he could
have put the Medos trade-mark on the equipment imported into Canada. Not only is this outright speculation, it certainly does not evidence use of the
Medos trade-mark.
Rental Receipts
[13]
Nor are the rental receipts helpful. There is no
evidence of the Medos name being used for advertising purposes as set out in s.
4 of the Act.
Invoices to
SAAQ
[14]
The closest that one comes to possible evidence
of use are the invoices from Marathon to the SAAQ. It is noteworthy that the
word “Medos” does not appear anywhere. Mr. Vlasseros, under objection, tried to
explain that there were Medos stickers on the hospital beds and that Marathon, authorized by Medos, was carrying out post-sale maintenance. I doubt that
maintenance relates to the services covered by the trade-mark being the
“operation of a … business dealing in the distribution and sale … of medical
and healthcare supplies...”
[15]
Furthermore, the trade-mark was issued in 1990
based on a claim that the Medos trade-mark had been used in Canada since at least August 1983. These invoices do not establish use because there is not
even a mention of Medos. If Medos medical equipment had been sold, it may have
been sold decades before.
[16]
As there is no evidence of use of the Medos
trade-mark by anyone within the three years in question, it is not necessary to
determine whether Marathon or Mr. Vlasseros was licensed within the meaning of
s. 50 of the Act.
[17]
Mr. Vlasseros provided copy of a letter from the
Registrar dated 16 August 2013 expunging the trade-mark. This letter must have
been issued in error as one cannot expunge what has already been expunged.
COSTS
[18]
Counsel for the respondent sought costs. The
Court prefers, when feasible, to order lump sum costs. Counsel left it to me to
issue an order, realizing that I would be conservative. Counsel had to travel
from Toronto to Montreal for the appeal. Apart from the appeal itself, there
were a few interlocutory motions. The appeal was not difficult, and so I base
myself on Tariff B, Colum 2. I shall fix costs at $2,500, all inclusive,
realizing that if taxed costs would be higher.
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