Docket: T-738-13
Citation:
2015 FC 165
[UNREVISED ENGLISH CERTIFIED TRANSLATION]
Ottawa, Ontario, February 9, 2015
PRESENT: The Honourable Madam Justice Gagné
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BETWEEN:
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ILLICO COMMUNICATION INC.
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Appellant
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and
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NORTON ROSE LLP
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Respondent
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JUDGMENT AND REASONS
[1]
Before me is the appeal from a decision of the
Registrar of Trade-marks, dated February 18, 2013, in which he expunged
the registration of the trade-mark ILLICO COMMUNICATION, registered under
No. TMA526,959. The Registrar was of the opinion that the appellant,
Illico Communication Inc., had not provided sufficient evidence of use of the
mark in association with each of the services listed in the registration over
the three-year period preceding the sending of the notice at the respondent’s
request, in accordance with section 45 of the Trade‑marks Act,
RSC 1985, c T-13 [Act]. The applicant is requesting that the decision of the
Registrar be set aside and that the trade-mark be maintained.
[2]
For the reasons set out below, I am of the view
that this appeal must be dismissed.
I.
Background
A.
Facts
[3]
The appellant is a small Quebec company,
originally known under the company name of Illico Informatique Inc. and
offering, when it started up, computer-assisted jurisprudential research
products and services. It publishes the newsletters Le Recherchiste and
the Bulletin de Jurisprudence des Cours municipales du Québec [BJCMQ].
Over the years, it expanded its activities by adding the design, hosting and
maintenance of a few websites, and, on a few occasions, it provided promotional
and communication services for candidates seeking the vice-presidency of the
Barreau du Québec. Jean-Yves Côté is Illico’s sole director and shareholder,
and, essentially, its sole employee.
[4]
In December 2003, the appellant changed its
name to ILLICO COMMUNICATION INC.
[5]
During the relevant period, it owned the
following trade-marks:
•
ILLICO, registered by the appellant on August 13,
1993, under No. TMA415,524, in association with “Computer-assisted
jurisprudential research services”;
•
ILLICO COMMUNICATION, acquired by the appellant
on October 18, 2001, but registered by a third party on April 25,
2000, under No. TMA526,959, in association with services in “Publishing graphics, corporate graphics and promotional and
communication graphics, specifically advertising, magazines and signs, design
of Internet showcases and photographs, and related services, specifically
writing, translation and proofreading”;
•
ILLICO, registered by the appellant on January 25,
2007, under No. TMA680,397, in association with the following wares: “Stationery, namely paper supplies for use in legal
professions, preprinted sheets of paper, labels, chart pads, paperboard items
for use in legal professions, namely folders, portfolios, binders, sleeves,
charts, bindings, dividers, tabs; printed goods, namely books, journals,
periodicals, casebooks, copies of decisions, magazines”; and the
following services: “Advice, information and
business information, namely legal advice. Publishing, namely services related
to the publishing of books, magazines, periodicals; publication of documents on
a worldwide computer network for the exchange and distribution of a broad range
of information. Research, namely research on decisions on behalf of third parties
on electronic networks, development of decision research systems on behalf of
third parties.”
[6]
The dispute concerns only the second of these
marks (TMA526,959), which is not a design mark.
[7]
On November 14, 2011, at the request of the
respondent, Norton Rose OR LLP (now Norton Rose Fulbright Canada LLP), counsel
for Vidéotron S.E.N.C., the Registrar sent the appellant a notice, under
section 45 of the Act, requesting that it provide evidence of use of the
mark in association with each of the services specified in the registration at
any time during the three years preceding the date of the notice, that is,
between November 14, 2008, and November 14, 2011.
[8]
In reply to the notice, the appellant filed the
affidavit of Jean-Yves Coté, supported by some evidence. It did not file any
written submissions, and neither of the parties requested a hearing.
[9]
On February 18, 2013, the Registrar rendered
the impugned decision, expunging the mark.
B.
Affidavit evidence submitted to the Registrar
[10]
In his affidavit dated February 13, 2012,
submitted to the Registrar, Mr. Côté essentially explains what his company
does under the ILLICO COMMUNICATION mark, namely, writing, formatting and
publishing the newsletter Le Recherchiste; proofreading; and providing publishing
graphics, communication graphics and the graphics for the BJCMQ CD-ROM. He also
states that the appellant participated in preparing the corporate and
promotional graphics of the Internet showcase www.pierrechagnon.com, and paper
flyers and a promotional email for Pierre Chagnon’s campaign for the
vice-presidency of the Barreau du Québec; and that it provided consulting
services on graphics, and the design of promotional emails with photographs and
of promotional signs with photographs for Anne Lessard’s campaign for the vice-presidency
of the Barreau du Québec.
[11]
Mr. Côté recognizes, however, that, during
the relevant period, the appellant did not use the mark in association with
translation services. He supports his affidavit with the following evidence (to
avoid confusion, the numbers are those provided in Mr. Côté’s second
affidavit, which I will discuss later):
•
JYC‑2 Contractual documents
confirming the sale and the cessation of use of the mark and the company name
ILLICO COMMUNICATION, and of the domain name illico.ca for the benefit of the
applicant;
•
JYC‑3 Documents concerning the
registration of the mark and the change in title for the benefit of the
applicant;
•
JYC‑4 Newsletter Le Recherchiste
(issue No. 34);
•
JYC‑5 BJCMQ (paper copy dated
January-February 2011);
•
JYC‑6 BJCMQ (2008 CD-ROM and
printed sleeves from 2010);
•
JYC‑7 Promotional letter concerning
Pierre Chagnon’s campaign accompanied by the letter delivery email and invoice No. 19359
dated April 14, 2008; and
•
JYC‑8 Documents concerning the
organization of Anne Lessard’s electoral campaign.
C.
Decision under appeal
[12]
The Registrar’s main, determinative conclusions
can be found in the following excerpt:
[28] Therefore, in summary, the documentary
evidence shows the use of “illico Communication Inc.” as a company name and does
not constitute proof of the use of a trade-mark in association with services
[see Sunny Fresh Foods Inc.]. On some documents, we find the mention
“illico” but followed by “®”to indicate that this term is a registered mark.
This is not a use of the Mark, since everything is followed by “Communication
Inc.” in order to clearly identify the Registered Owner’s company name. Some of
the documents submitted are from after the Relevant Period and the only
invoice submitted is prior to the Relevant Period. Lastly, even if I were
to conclude that exhibits JYC‑3 and JYC‑5 [JYC‑4 and JYC‑6
according to the list in paragraph 10 of these reasons] are illustrations
of the fruits of services performed by the Registered Owner, these services
were not offered to third‑parties but were performed for the sole
benefit of the Registered Owner.
[29] There remain therefore only Mr. Côté’s
statements regarding the use of the Mark. However, such statements not
corroborated by documents, as is the current case, are insufficient to
conclude in use of the Mark in association with the Services during the
Relevant Period. [Emphasis added]
[13]
The Registrar acknowledges Mr. Côté’s
admission that the mark had not been used in association with translation
services and concludes from the outset that this service will be struck from
the list of services. This conclusion is not being challenged in this appeal.
D.
Le Recherchiste and BJCMQ newsletters
[14]
The Registrar then found that the evidence
presented by the appellant did not establish that the relevant services had
been performed or advertised in association with the mark. For example, in Exhibit JYC‑4,
an issue of the Le Recherchiste newsletter, one can see that the
appellant summarizes a few recent decisions in civil law and, because the issue
contains an order form, that it offers the services of [translation] “on-demand case law”.
These services are not listed in association with the mark.
[15]
The Registrar adds that,
in Exhibit JYC‑4, the appellant uses a mark (Illico, not Illico
Communication) in association with a product (the newsletter itself) but not in
association with a service. The use of the ® symbol
next to the word “illico” could indicate use of
a registered trade-mark, even though the Act does not require such marking. The
Registrar is therefore of the view that the appellant’s use of “©illico Communication Inc.” and “illico Communication Inc.” refers to the entity that
publishes this legal newsletter.
[16]
The Registrar makes the
same finding with respect to Exhibit JYC‑6, the cover of the box
containing the BJCMQ CD-ROM. The reference to
Illico® Communication Inc. found on it serves to identify the publisher of the
CD-ROM and represents the appellant’s company name, not the mark.
[17]
Moreover, with respect to both publications, the
Registrar finds that since the appellant is their publisher, the services of
publishing graphics and related services were performed for the appellant and
not offered to the public or performed for the benefit of a third party (Ralston
Purina Co v Effem Foods Ltd (1997), 81 CPR (3d) 528).
[18]
Finally, the Registrar is of the opinion that
the references on the newsletters Le Recherchiste and BJCMQ to “illico Inc.”,
the website “www.illico.ca” and the address “illico@illico.ca” also do not constitute use of the
trade-mark.
E.
Mr. Chagnon’s and Ms. Lessard’s
electoral campaigns
[19]
Exhibit JYC‑7 reproduces,
in a bundle, a flyer promoting Mr. Chagnon’s candidacy for the
vice-presidency of the Barreau du Québec, a promotional email from Mr. Chagnon
dated April 24, 2008, and an invoice from the appellant for services
rendered to Mr. Chagnon, dated April 14, 2008. The Registrar notes
that there is no mention of the mark on the flyer and that the other two documents
predate the relevant period.
[20]
For the same reasons, the Registrar does not consider
Exhibit JYC‑8, which reproduces, in a bundle, some promotional
emails and flyers concerning Ms. Lessard’s candidacy for the
vice-presidency of the Barreau du Québec. This time, all the documents, except
for the first email, postdate the relevant period. The only email sent during
the relevant period is an invitation to a meeting sent to the members of Ms. Lessard’s
campaign organizing committee, including Mr. Côté. It includes no
reference to any mark, let alone that of the appellant.
F.
New evidence filed for this appeal
[21]
In accordance with subsection 56(5) of the
Act, the appellant submitted new evidence for this appeal. It submitted three
affidavits, namely, (i) the affidavit of Jacques Marquis dated April 24,
2013; (ii) the affidavit of Pierre Chagnon dated May 23, 2013; and (iii)
the affidavit of Jean-Yves Coté dated June 6, 2013. The last affidavit is
supported by Exhibits JYC‑9 to JYC‑22, and the Court
accepted the filing of Exhibits JYC‑23 and JYC‑24 at the
hearing. The following is a list of the exhibits:
•
JYC‑9 Excerpt from the Canadian
trade-marks database regarding the mark ILLICO No. TMA415,524;
•
JYC‑10 Excerpt from the Canadian
trade-marks database regarding the mark ILLICO No. TMA680,397;
•
JYC‑11 Legal opinion dated July 25,
2001, from law firm Lapointe Rosenstein sent to Vidéotron Ltée regarding the
availability of the ILLICO marks;
•
JYC‑12 Information on Illico
Communication Inc. from the Quebec Enterprise Register;
•
JYC‑13 Home page of the Illico
Communication Inc. website, www.illico.ca (the same as Exhibit JYC‑16);
•
JYC‑14 Invoices sent to various
clients in relation with legal research services;
•
JYC‑15 Example of case law research
performed by the appellant;
•
JYC‑16 Home page of the Illico
Communication Inc. website, www.illico.ca (the same as Exhibit JYC‑13);
•
JYC‑17 Statements and invoices from
Domainsatcost.ca regarding the appellant’s reservation of domain names for
third parties;
•
JYC‑18 Invoices for the design,
development and hosting of the website of a client of the appellant;
•
JYC‑19 A mix of correspondence with
the Barreau du Québec regarding the deactivation of the website of a client of
the appellant;
•
JYC‑20 Invoices for BJCMQ CD
subscriptions and orders, in a bundle;
•
JYC‑21 Promotional documents for the
BJCMQ, created and distributed by the appellant;
•
JYC‑22 Various invoices in
association with the appellant’s activities;
•
JYC‑23 Invoice from the appellant to
Anne Lessard for [translation] “design
of campaign flyers and promotional emails”;
•
JYC‑24 Contract of assignment of
copyright dated July 23, 2014, between the Honourable Pierre G. Bouchard,
on the one hand, and Jean-Yves Côté and the appellant, on the other, regarding
the BJCMQ.
II.
Issues
[22]
The issues raised in this appeal are the
following:
•
What is the standard for intervention of this Court
when sitting on appeal from a decision of the Registrar of Trade-marks?
•
Has the applicant provided acceptable evidence
of use of the mark, as required by section 45 of the Act?
III.
Analysis
A.
Test for intervention
[23]
In the absence of new evidence, the case law
informs us that the Court only intervenes if it finds the Registrar’s
conclusion to be unreasonable. However, when additional evidence is produced
before this Court, the standard of correctness applies when the new elements of
this evidence could have materially affected the Registrar’s decision, and the
Court must decide the issue de novo (Hayes v
Sim & McBurney, 2010 FC 924 at paras 14-15; Empresa
Cubana Del Tabaco (Trading also as Cubatabaco) v Shapiro Cohen,
2011 FC 102 at paras 46-48; Locke v Osler, Hoskin & Harcourt
LLP, 2011 FC 1390 at paras 19-20).
[24]
The appellant is asking the Court for a de
novo ruling on the basis that the additional evidence produced increases
the weight of the evidence before the Registrar. The respondent submits that
the applicable standard is that of reasonableness since the additional evidence
would not have materially affected the Registrar’s decision (Spirits
International B.V. v BCF S.E.N.C.R.L., 2012 FCA 131 [Spirits
International B.V.] at para 10). The respondent argues that in order
for the Court to depart from the reasonableness standard in an appeal from a
decision of the Registrar, the evidence produced must be of quality and not of
quantity (Hawke & Company Outfitters LLC v Retail Royalty,
2012 FC 1539 [Hawke] at para 31).
[25]
I agree with the appellant on this issue and
adopt the words of my colleague Justice Manson, in CEG License Inc v Joey
Tomato’s (Canada) Inc, 2012 FC 1541 at para 14:
[14] Given new evidence was filed by
the opponent in this matter that was not before the Opposition Board, the Court
has an unfettered discretion to consider the matter and come to its own
conclusion as to the correctness of the Board’s decision, if the new evidence
is significant and would materially affect the underlying decision: (Bojangles’
International, LLC v Bojangles Café Ltd, 2006 FC 657 [Bojangles];
Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at paras 35,
37)[.]
[26]
My colleague Justice Kane recently summarized
the case law on this Court’s standard for intervention, in Gemological
Institute of America v Gemology Headquarters International, 2014 FC
1153 at para 25:
The test for
new evidence
[25]In order
to determine whether new evidence would have materially affected the Board’s
decision, the Court must consider the evidence’s nature and quality, taking
into account its significance, probative value and reliability (Bojangles’
International LLC et al v Bojangles Café Ltd, 2006 FC 657 at para 10,
293 FTR 234 [Bojangles]; CEG, above, at paras 16 and
20). The test is one of quality not quantity (London Drugs, above, at para 35;
Bojangles, above, at para 15; Hawke & Company
Outfitters LLC v Retail Royalty Co, 2012 FC 1539 at para 31,
424 FTR 164 [Hawke]); the new evidence cannot be merely repetitive
or supplementary to the material that was before the Board, but must add
something of significance and enhance its cogency (Telus Corp v Orange
Personal Communications Services Ltd, 2005 FC 590 at para 33,
273 FTR 228; Rothmans, Benson & Hedges, Inc v
Imperial Tobacco Products Ltd, 2014 FC 300 at para 34,
239 ACWS (3d) 473, quoting Vivat Holdings Ltd v Levi
Strauss & Co, 2005 FC 707 at para 27, 139 ACWS
(3d) 93; Advance, above, at paras 38 and 41; Prince v
Orange Cove-Sanger Citrus Assn, 2007 FC 1229 at para 9,
322 FTR 212; Chamberlain Group, Inc v Lynx Industries Inc,
2010 FC 1287 at para 31, 379 FTR 270 [Chamberlain Group]).
[27]
She adds the following at paragraph 62:
[62] The Court is required to put
itself into the mind of the TMOB to assess whether the new evidence – had it
been provided to the Hearing Officer – would have made a difference to the
result. The question is whether the new evidence addresses the deficiencies
noted by the TMOB which led to its findings and whether that evidence has
sufficient significance or probative value that it would have changed the
factual basis for the decision or otherwise materially affected the decision.
[28]
I find that some of the new evidence submitted
by the appellant before this Court is sufficient to displace the deferential
standard of reasonableness. In light of the Registrar’s reasons, it is my view
that this new evidence, which I will discuss later, could have had a concrete
effect on his conclusions. In assessing the significance and quality of the
evidence submitted, the Court must determine whether the various factors “would materially affect [the Registrar’s] findings of fact
or the exercise of his discretion” (Spirits International B.V.; Hawke,
at para 30). The Registrar states on a few occasions in his reasons that
the only invoice produced under Exhibit JYC‑7 predates the relevant
period. In support of this appeal, the appellant filed various invoices, and,
even though many of them are of no relevance to the issues under review, some
are, because they relate to the relevant period and are not repetitive of the
evidence submitted before the Registrar (Vivat Holdings Limited v Levi
Strauss & Co, 2005 FC 707 at para 27). The invoices
could have had an effect on one of the Registrar’s findings of fact since they
corroborate some of Mr. Coté’s allegations, specifically with respect to
the services provided to Ms. Lessard (see Spirits International B.V.,
at paras 22 to 24).
[29]
Unlike the additional evidence submitted in Hawke,
above, at para 39, the new evidence submitted in the present proceeding
addresses several of the Registrar’s concerns and could have influenced his
findings. I will therefore apply the correctness standard and assess the
evidence de novo.
(1)
Has the applicant provided acceptable
evidence of use of the mark, as required by section 45 of the Act?
[30]
The context of this case is a particular one in
that the appellant is a very small company that, essentially, is the alter
ego of its sole shareholder and that does not have a large business volume.
Mr. Côté argues that Vidéotron acted in a cavalier fashion in 2001 in
launching its digital television service under the name of ILLICO and that,
since filing various applications for trade-marks, which, to date, have been
neither registered nor denied, it has been hounding the appellant.
[31]
While a small company such as the appellant is
entitled to the same protection of its marks as a multinational one, it is also
subject to the same statutory requirements and cannot lay claim to greater
protection than that offered by the Act.
[32]
I have therefore painstakingly reviewed the
evidence before me in light of the services specified in the registration,
which can be dissected as follows:
a.
Publishing graphics and photographs and related
services, specifically writing and proofreading;
b.
Corporate graphics and photographs and related
services, specifically writing and proofreading;
c.
Promotional and communication graphics, specifically
advertising, magazines and signs, and photographs and related services, specifically
writing and proofreading;
d.
Design of Internet showcases and photographs and
related services, specifically writing and proofreading.
[33]
The segment “and
photographs, and related services, specifically writing, translation and
proofreading” may be interpreted as not applying to the service of design
of Internet showcases or even as being related to the four types of services
specified in the registration. For the purposes of the present reasons and
since the parties have not taken a position on this issue, I have chosen the
interpretation that is most favourable to the appellant, by withdrawing the
related service of translation.
[34]
The appellant had to establish prima facie
that, during the relevant period, it had provided the specified services to
third parties, in association with the ILLICO COMMUNICATION mark. The parties
agree that Plough (Canada) Limited v Aerosol Fillers Inc, [1981]
1 FC 679, and Guido Berlucchi & C. S.r.l. v Brouilette
Kosie Prince, 2007 FC 245 [Guido Berlucchi], apply to the
treatment of evidence adduced under section 45 of the Act. However, the
appellant insists on the fact that the evidence filed in this case suffices for
it to meet its lower burden, and it considers that in failing to [translation] “remove” use of the mark
from the evidence, the Registrar imposed too heavy a burden on it.
[35]
The evidence before me shall be analyzed by specified
service. Since the appellant did not provide any evidence that it had provided
corporate graphics services in association with the mark, this issue will not
be discussed.
(a)
Publishing graphics and related services
[36]
As indicated, the appellant’s first and main
activity is jurisprudential research and other legal services. Both of its
ILLICO marks are in association with this activity: the first was registered in
1993, and the second in 2007, in part to take into account the dramatic advance
of the Internet and various research platforms.
[37]
Some exhibits are related to the publication of
the Le Recherchiste newsletter (JYC‑4, JYC‑12, JYC‑13,
JYC‑14, JYC‑15 and JYC‑16) and others to the publication of
the BJCMQ (JYC‑5, JYC‑6, JYC‑12, JYC‑20, JYC‑21 and
JYC‑24), while one exhibit is related to various related legal services (JYC‑22),
such as the preparation of an appeal memorandum or the photocopying of a
Superior Court docket.
[38]
The fact that the appellant is both a service
provider and the publisher of the Le Recherchiste newsletter is a
determinative factor here. Since the publishing graphics services in
association with this publication were not offered to or performed for the
benefit of a third party, the adduced evidence, albeit abundant, is irrelevant.
Indeed, I agree with the other reasons given by the Registrar for rejecting
this evidence of use of the mark.
[39]
The evidence concerning the publication of BJCMQ
requires a more thorough analysis. The appellant filed Exhibit JYC‑24
at the hearing; it consists of a contract assigning the Honourable Pierre G.
Bouchard’s copyright in this publication. The only consideration provided in
the contract seems to be the appellant’s obligation to pursue and modernize this
work, while continuing to associate it with the name of Retired Justice
Bouchard. The appellant argues that the rights were assigned in 2014 because
they belonged to a third party during the relevant period and that therefore
the publishing graphics services had been offered to the public and performed
for a third party.
[40]
However, the contract under Exhibit JYC‑24
sheds only little light on the terms of the agreement that allegedly prevailed
between the appellant and Justice Bouchard during the relevant period. Did
Justice Bouchard grant a licence to the appellant, which paid him royalties? We
do not know. One thing is certain: the appellant was the publisher of the work,
and, as confirmed by the many invoices produced under Exhibit JYC‑20,
all BJCMQ subscription fees were paid to the appellant. The information from
the Quebec Enterprise Register (Exhibit JYC‑12) reveals that the
appellant has been using the trade name BJCMQ since 2004, and so Justice
Bouchard must have certainly permitted it to do so.
[41]
What we do not know is the identity of the
beneficiary of the publishing graphics services. Was it the publisher, the
appellant? There is no invoice for these services, which the appellant would
have offered to itself. Or was it Justice Bouchard? In this case, there would
have been invoices addressed to Justice Bouchard specifically for these
services. No such invoice was filed. As indicated above, the many invoices
filed in association with the BJCMQ suggest rather the opposite, namely, that
the appellant was providing itself, in its capacity as the publisher of the
BJCMQ, with publishing graphics and related services.
(b)
Promotional and communication graphics and
related services
[42]
Exhibits JYC‑4 and JYC‑7 (PC-1)
concern the services rendered by the appellant in association with Mr. Chagnon’s
campaign for the vice-presidency of the Barreau du Québec. They all predate the
relevant period; the services were rendered and invoiced, and Mr. Chagnon
was elected, before the relevant period. This evidence is therefore of no
assistance to the appellant.
[43]
However, in my view, the appellant filed
sufficient evidence to establish that it offered promotional and communication
graphics services to Ms. Lessard during the relevant period. In his
affidavit dated May 23, 2013, Mr. Chagnon explains that he contacted
the appellant in early October 2011 (which is during the relevant period)
in order to retain its services [translation]
“in IT, telecommunications, the design and development
of promotional tools, graphics and documents in the organization and running of
the campaign of Anne Lessard, who was seeking the vice-presidency of the Barreau du Québec”. Exhibits JYC‑8 and JYC‑23 confirm that the
appellant provided Ms. Lessard with promotional and communication graphics
services between early October 2011 and an unknown date, and that Ms. Lessard
was invoiced for these services in July 2012. A single sale in a business’s
normal course of trade can suffice to establish prima facie that
services were rendered (Guido Berlucchi, at para 17).
[44]
Were they, however, rendered in association with
the mark?
[45]
On both the home page of its website and its
invoices, the appellant uses a logo showing two doors between a set of columns
(which could represent the entrance to a courthouse), next to which is a
computer mouse. Underneath this image are the following words:
Illico®
Communication inc.
[46]
In most cases, the appellant’s address,
telephone number and website address are right next to the logo and the words.
[47]
When a company’s corporate name and principal
trade name are identical to the trade-mark, as in the matter at bar, there
exists a rebuttable presumption that the corporation is using its trade name
rather than its trade-mark (Road Runner Trailer Manufacturing Ltd v Road
Runner Trailer Co. (1984), 1 CPR (3d) 443 [Road Runner]). The appellant
refers to certain decisions of the Trade-marks Opposition Board that clearly
show that each case must be analyzed on its own merits, but that it is up to
the appellant to rebut this presumption (Société Canadian Tire Corporation v
CTC Bank of Canada, 2005 CanLII 78207; Bulova Watch Company Limited
v Gowlings Lafleur Henderson, (2006), 51 CPR (4th) 470; Capri
Insurance Services Ltd v Intercity Equity Corp (2009), 74 CPR (4th)
49; Good Earth Cafes Ltd (Re), 2013 TMOB 75).
[48]
For its part, the respondent reiterates the
arguments made by the Registrar and submits that the appellant’s choosing to
associate the ® symbol with the word ILLICO rather than with the expression ILLICO
COMMUNICATION, and its almost always adding “Inc.” to this expression, clearly
confirm that the presumption is not rebutted here. Relying on AGF Management
Ltd (Re), (2003), 29 CPR (4th) 411, it adds that, in any event, the
presence of a symbol is not sufficient to suggest use of the mark.
[49]
The relevant exhibits for analyzing this issue
are JYC‑13 (home page of the appellant’s website), JYC‑14 (bundle
of invoices for jurisprudential research services), JYC‑16 (home page of
the appellant’s website), JYC‑20 (bundle of invoices for BJCMQ
subscription fees), JYC‑22 (invoices for various legal services) and JYC‑23
(invoice for promotional services rendered to Ms. Lessard).
[50]
First, the appellant uses the same invoice form
for each of its commercial activities. Since the form depicts the logo and words
described at paragraph 45 of these reasons, this suggests that the form
was developed in association with the appellant’s first and main activity,
namely research and other related legal services, and there is every reason to
believe that the form was developed at a time when the mark the appellant
wished to promote was that associated with these services, namely ILLICO. One
can readily appreciate that the appellant chose to use the same invoice form
when it diversified its activities. One can also appreciate that the home page
of the appellant’s website refers almost exclusively to these same legal
research services (except for a single reference to the website design and
hosting service to be discussed below). No reference is made to the promotional
and communication graphics services. The appellant therefore does not advertise
these services in association with any mark whatsoever.
[51]
It is also obvious, on both the appellant’s
invoices and the first page of its website, that the reference there to Illico
Communication or Illico Communication inc. is a reference to its trade name and
not to its trade-mark. This is confirmed by the testimony of Mr. Chagnon
and of Mr. Marquis, who, in their affidavits respectively refer to the company
(“entreprise”) ILLICO COMMUNICATION and to the firm (“firme”) ILLICO
COMMUNICATION, without mentioning the trade-mark.
[52]
I am therefore of the opinion that the appellant
has not succeeded in rebutting the presumption discussed by Justice Lemieux in Road
Runner. The appellant did not establish that, during the relevant
period, it offered and rendered to the public services in association with the
mark.
(c)
Design of Internet showcases and related
services
[53]
The relevant exhibits for analyzing this issue
are JYC‑13 and JYC‑16 (home page of the appellant’s website), JYC‑17
(statement and invoices from Domainstatcost.ca to the appellant for hosting
websites), JYC‑18 (invoice for the design, development and hosting of
website www.michelcyravocat.ca) and JYC‑19 (exchange of emails between
the appellant and the Barreau du Québec regarding the closing of the website
of a disbarred advocate).
[54]
As indicated earlier, the first page of the
appellant’s website, produced by the appellant, contains a reference to the
website design and hosting services offered by the appellant. However, below
this reference is the following statement: “Site développé par !llico
(illico.net)” [site developed by !llico (illico.net)]. Consequently, if the
appellant offered the design of Internet showcases as a service during the
relevant period, it did not do so in association with the mark but with another
trade-mark that is not at issue here.
[55]
The respondent filed the affidavit of Lisa
Saltzman, the director of the trade-marks research department at Onscope. In
this affidavit, Ms. Saltzman explained that, as part of a mandate related
to the appellant’s opposition to the registration of the ILLICO mark of
Videotron S.E.N.C., she visited the appellant’s website on December 14,
2011, and printed its first page, which she produced as Exhibit LS-2.
[56]
Even though the page shows the statement “Site
développé par !llico (illico.net)”, there is no mention of the fact that the
appellant was offering website design and hosting services. This statement was
therefore added by the appellant after the relevant period, and it does not
suggest that the appellant was offering such services to the public during the
relevant period.
[57]
The first two pages of JYC‑17 contain
a history of the invoices sent by Domainstatcost.ca to the appellant over the
course of the relevant period. They do not contain any reference to the mark,
or any details about the websites concerned or the ownership of these sites.
The following pages consist of seven invoices from Domainstatcost.ca, sent to
the appellant and covering the services of hosting various websites during the
relevant period. A number of these sites belong to the appellant, while two of
them belong to Richard Morand and Mr. Marquis, respectively. These
documents do not establish that the appellant offered its design of Internet showcases
services during the relevant period, but that, at the most, and, quite
incidentally, it offered website hosting services. In his affidavit, Mr. Marquis
states that his site was designed by the appellant in 2005 and that it has been
hosted and maintained by the appellant since, without interruption. This is not
evidence that the appellant offered and rendered design of Internet showcases services
to the public during the relevant period, except if one concludes that there is
a design element in the maintenance services.
[58]
However, and even if this were the case, for the
reasons set out above, these services were not offered in association with the
mark since any reference to ILLICO COMMUNICATION in the documents filed is a
reference to the appellant’s trade name, or a reference to the ILLICO mark.
IV.
Conclusion
[59]
For all of these reasons, it is my view that the
appellant’s appeal must be dismissed and that the trade-mark ILLICO
COMMUNICATION, registered under No. TMA526,959, must be expunged from the
Register in accordance with subsection 45(3) of the Act.
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