Date: 20010220
Docket: A-356-00
Neutral citation: 2001 FCA 66
CORAM: ROTHSTEIN J.A.
SEXTON J.A.
MALONE J.A.
BETWEEN:
UNITED GRAIN GROWERS LIMITED,
Appellant,
- and -
LANG MICHENER
Respondent.
Heard at Ottawa, Ontario, on Tuesday, February 20, 2001
Judgment delivered at Ottawa, Ontario, on Tuesday, February 20, 2001
REASONS FOR JUDGMENT OF THE COURT
Date: 20010220
Docket: A-356-00
Neutral citation: 2001 FCA 66
CORAM: ROTHSTEIN J.A.
SEXTON J.A.
MALONE J.A.
BETWEEN:
UNITED GRAIN GROWERS LIMITED,
Appellant,
- and -
LANG MICHENER
Respondent.
REASONS FOR JUDGMENT OF THE COURT
BY THE COURT
[1] This is an appeal from an order of the Trial Division upholding a decision of the Registrar of Trade-marks that the appellant's trade-mark COUNTRY LIVING be expunged from the Trade-mark Register under proceedings brought at the instance of the respondent under section 45 of the Trade-marks Act.
FACTS
[2] The appellant publishes a magazine entitled COUNTRY GUIDE. COUNTRY LIVING is a regular feature of the magazine. It is listed in the table of contents in every issue and is promoted in the magazine's advertising. COUNTRY LIVING is a section devoted to issues related to running a farm household. The appellant registered the trade-mark COUNTRY LIVING in association with "printed periodicals, namely magazines", on May 31, 1991.
[3] According to the record, the respondent is agent for the Hearst Corporation which applied for the trade-mark COUNTRY LIVING AND COUNTRY LIVING GARDEN to be used in association with magazines.
[4] On March 4, 1997, the Registrar, at the request of the respondent, issued a notice pursuant to section 45 requiring the appellant to provide evidence that the trade-mark had been used during the previous three years. Subsections 45(1) and (3) provide:
| 45. (1) The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months 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 and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
[...]
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45. (1) Le registraire peut, et doit sur demande écrite présentée après trois années à compter de la date de l'enregistrement d'une marque de commerce, par une personne qui verse les droits prescrits, à moins qu'il ne voie une raison valable à l'effet contraire, donner au propriétaire inscrit un avis lui enjoignant de fournir, dans les trois mois, un affidavit ou une déclaration solennelle indiquant, à l'égard de chacune des marchandises ou de chacun des services que spécifie l'enregistrement, si la marque de commerce a été employée au Canada à un moment quelconque au cours des trois ans précédant la date de l'avis et, dans la négative, la date où elle a été ainsi employée en dernier lieu et la raison de son défaut d'emploi depuis cette date.
[...]
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| (3) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trade-mark, either with respect to all of the wares or services specified in the registration or with respect to any of those wares or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trade-mark is liable to be expunged or amended accordingly.
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(3) Lorsqu'il apparaît au registraire, en raison de la preuve qui lui est fournie ou du défaut de fournir une telle preuve, que la marque de commerce, soit à l'égard de la totalité des marchandises ou services spécifiés dans l'enregistrement, soit à l'égard de l'une de ces marchandises ou de l'un de ces services, n'a été employée au Canada à aucun moment au cours des trois ans précédant la date de l'avis et que le défaut d'emploi n'a pas été attribuable à des circonstances spéciales qui le justifient, l'enregistrement de cette marque de commerce est susceptible de radiation ou de modification en conséquence.
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The appellant filed an affidavit in response to the Registrar's notice. The affidavit contained excerpts from issues of the COUNTRY GUIDE magazine which listed COUNTRY LIVING as a separate section in the table of contents. After reviewing the evidence, the Registrar issued an order expunging the trade-mark from the Register.
[5] The appellant appealed this decision to the Trial Division and filed a further affidavit. The second affidavit contained evidence showing that the appellant promoted COUNTRY LIVING as a distinct section of COUNTRY GUIDE in material distributed to potential subscribers and advertisers.
[6] The Trial Division Judge confirmed the order of the Registrar for the reasons given by the Registrar and dismissed the appeal. The appellant appeals that decision to this Court.
REGISTRAR'S DECISION
[7] As the Trial Judge did not issue separate reasons for his decision, it is necessary to consider the reasons of the Registrar. The Registrar found that the main issue was whether the evidence showed use of the words COUNTRY LIVING as a trade-mark for magazines. In answering this question in the negative, the Registrar found that the use of the words COUNTRY LIVING did not distinguish the appellant's magazine from those of others. The title of the magazine COUNTRY GUIDE appeared on the cover and on each page of the magazine, including pages where the COUNTRY LIVING section was featured. COUNTRY LIVING was not listed in the table of contents in a manner that was any different from any of the other major sections. Although consumers might flip through the magazine before purchasing it and might buy the magazine specifically for the COUNTRY LIVING section, it was the use of the words COUNTRY GUIDE which distinguished the appellant's magazine from those of others in the minds of consumers, not the use of the words COUNTRY LIVING.
STANDARD OF REVIEW
[8] In Labatt v. Molson, [2000] 3 F.C. 145, this Court held that decisions of the Registrar, whether of fact, law or discretion within his or her area of expertise, are to be reviewed on a standard of reasonableness simpliciter. Where additional evidence is adduced in the Trial Division that would materially affect the Registrar's findings of fact or exercise of discretion, the Trial Division Judge must come to his or her own conclusion as to the correctness of the Registrar's decision.
[9] In this case, the Registrar concluded that the words COUNTRY LIVING were not used to distinguish the appellant's magazine and that therefore the words COUNTRY LIVING were not used as a trade-mark. The question is whether, on a proper construction of section 45, the Registrar is to take into account whether, with respect to the wares named in the registration, the use of a registered trade-mark distinguishes those wares. That is a question not within the expertise of the Registrar. Rather, it is a question of the construction of section 45.
[10] Further, the Trial Judge made no mention of the additional evidence filed before him. The more specific evidence of long use, in every edition of the COUNTRY GUIDE magazine since January 1974, as well as evidence of COUNTRY LIVING being shown as a section of the magazine in promotional materials, is, we think, evidence that would have materially affected the Registrar's findings in this case. Accordingly, the standard of review is correctness.
ANALYSIS
[11] Section 45 is only invoked where a trade-mark has been registered. The only question is whether the registered trade-mark was, with respect to the wares specified in the registration, in use in Canada at any time during the three year period immediately preceding the date of the notice under section 45. Use of a trade-mark in association with wares is deemed to occur under subsection 4(1), if, at the time of transfer of the property or possession in the wares, the trade-mark is marked on the wares. Subsection 4(1) provides:
| 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
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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
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| so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
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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.
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[12] In this case, there is no dispute that the words COUNTRY LIVING were marked on the COUNTRY GUIDE magazine at the time of the transfer of property or possession in the magazine in the normal course of trade. There is no suggestion that the trade-mark, which is the words COUNTRY LIVING, did not appear in the way in which they appear in the Register1 and in association with the wares named in the registration, namely, a magazine. The appellant has demonstrated use of its registered trade-mark with respect to the wares specified in its registration, in accordance with subsection 4(1).
[13] However, the Registrar was of the view that it was necessary to evaluate whether the words COUNTRY LIVING would be perceived as a trade-mark to distinguish the COUNTRY GUIDE magazine. In this, the Registrar had regard to section 2 which defines a trade-mark as:
| (a) a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,
[...]
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a) marque employée par une personne pour distinguer, ou de façon à distinguer, les marchandises fabriquées, vendues, données à bail ou louées ou les services loués ou exécutés, par elle, des marchandises fabriquées, vendues, données à bail ou louées ou des services loués ou exécutés, par d'autres; [...]
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Citing a decision of this Court, Plough (Canada) Ltd. v. Aerosol Filters Inc. (1980), 53 C.P.R. (2d) 62 (F.C.A.), the Registrar concluded that the words COUNTRY LIVING were not used to distinguish the appellant's magazine, and thus not used as a trade-mark. It was for this reason that she expunged COUNTRY LIVING from the Register.
[14] In our respectful opinion, in embarking upon an inquiry as to whether the words COUNTRY LIVING were used to distinguish the appellant's magazine, the Registrar misinterpreted her function under section 45 and erred in law. No words in section 45 direct the Registrar to re-examine whether the registered trade-mark is used for the purpose of distinguishing, or so as to distinguish, wares. Rather, the Registrar's duty under section 45 is only to determine, with respect to the wares specified in the registration, whether the trade-mark, as it appears in the Register, has been used in the three years prior to the request.
[15] In this case, it is undisputed that the registered trade-mark COUNTRY LIVING was marked on the magazine COUNTRY GUIDE at the time of transfer of property in or possession of the magazine in the normal course of trade. We think once it was determined that the registered trade-mark, as it appears in the Register, was used in association with the wares specified in its registration, the inquiry under section 45 was at an end.
[16] As stated by Hugessen J.A. in Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1991), 40 C.P.R. (3d) 409, at 412, with respect to section 45:
| [...] 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 and if not, why not. |
As noted by Hugessen J.A., section 45 is not intended to provide an alternative to the usual inter partes attack on a trade-mark. It is only a simple and expeditious method, for public purposes, of removing from the Register, marks which have fallen into disuse. If the respondent's purpose is to stop the appellant from using its registered trade-mark COUNTRY LIVING because of a potential conflict between the appellant and the respondent's client, it may pursue that objective under section 57 of the Trade-marks Act.
CONCLUSION
[17] The appeal will be allowed with costs here and in the Trial Division and the Registrar will be ordered to reinstate the appellant's COUNTRY LIVING trade-mark to the Trade-mark Register.
"Marshall Rothstein"
J.A.
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1 See, for example, Filodoro Calze S.p.A v. Doris Hosiery Mills Ltd. (1998) 85 C.P.R. (3d) 76, where this was the issue.
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