Date:
20121207
Docket:
A-362-11
Citation: 2012 FCA 321
CORAM: BLAIS
C.J.
SHARLOW
J.A.
WEBB
J.A.
BETWEEN:
IWASAKI
ELECTRIC CO. LTD.
Appellant
and
HORTILUX
SCHREDER B.V.
Respondent
REASONS
FOR JUDGMENT
WEBB
J.A.
[1]
This
is an appeal from the decision of the Federal Court (2011 FC 967) rendered by
Russell, J. allowing the appeal of Hortilux Schreder B.V. (Hortilux Schreder)
from the decision (2010 TMOB 179) of the Member of the Trade-marks Opposition
Board (the Member). The judge refused the application (Serial No. 1,064,360) by
Iwasaki Electric Co. Ltd. (Iwasaki) for registration under the Trade-marks
Act, R.S.C. 1985, c. T-13 (the Act) of the trade-mark HORTILUX (the Mark)
in association with electric lamps.
Standard of
Review
[2]
In
an appeal to the Federal Court under the Act, the parties are allowed to
introduce new evidence (subsection 56(5) of the Act). If no new material
evidence is adduced, the standard of review to be applied by the judge in an
appeal under the Act from the decision of the Trade-marks Opposition Board is
reasonableness (Mattel Inc v 3894207 Canada Inc, (2006), 49 CPR (4th)
321 at paragraph 40). If new material evidence is adduced, then, as noted by
Rothstein, JA (as he then was) in Molson Breweries v. John Labatt Ltd. [2000]
3 F.C. 145, paragraph 51, “the Trial Division judge
must come to his or her own conclusion as to the correctness of the Registrar's
decision”.
[3]
The
task of this Court on an appeal from the Federal Court of a decision of the
Trade-Marks Opposition Board is to determine whether the judge correctly
determined and applied the applicable standard of review (Dr. Q. v. College
of Physicians and Surgeons of British Columbia, [2003] 1 S.C.R. 226, 2003
SCC 19). If additional material evidence is presented at the hearing in the
Federal Court in relation to any of the issues raised before the judge, then,
in relation to such issues, the judge’s legal conclusions are reviewed for
correctness and his conclusions of fact or mixed law and fact must stand absent
a palpable and overriding factual error or an extricable error of law: Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 S.C.R. 235; Spirits
International B.V. v. BCF s.e.n.c.r.l., 2012 FCA 131.
Background
Summary
[4]
Iwasaki
applied for registration of the Mark in association with electric lamps,
claiming December 31, 1997 as the date of first use in Canada. Hortilux Schreder (formerly Hortilux B.V.) opposed the application on the basis
that Iwasaki had not used the Mark in Canada on or before December 31, 1997 and
that, in any event, it had used the Mark in Canada in association with lighting
reflectors before Iwasaki had first used the Mark in Canada. Hortilux Schreder
also claimed that Iwasaki’s proposed use of the same mark in association with
electric lamps would be confusing. The judge found that Iwasaki’s proposed use
of the Mark would be confusing with the use of the Mark by Hortilux Schreder in
association with lighting reflectors and there has been no challenge to this
finding of confusion.
[5]
The
Member granted Iwasaki’s application for registration on the basis of evidence
that Iwasaki’s first use of the Mark in Canada had occurred in October of 1997
when its North American sales representative, Eye Lighting International of
North America Inc., provided two Iwasaki lamps to Standard Products Inc. for no
consideration. The Member also found that Hortilux Schreder had not established
that it had used (as defined in the Act) the Mark in Canada prior this first
use by Iwasaki.
[6]
On
appeal to the Federal Court, the judge reversed the decision of the Member on
the basis that there was no evidence before the Member upon which the Member
could reasonably have concluded that the October 1997 transaction was a use of
the Mark in Canada in the normal course of trade. He also concluded, on the
basis of the evidence before the Member and new evidence submitted to the
Federal Court, that Hortilux Schreder had used the Mark in association with its
lighting reflectors prior to October 1997 and had not abandoned that Mark as of
January 9, 2002, the date of publication of Iwasaki’s application for
registration. Iwasaki challenges all of these conclusions of the judge.
[7]
Iwasaki
can succeed in this appeal only if this Court reverses the decision of the
judge on the first point (thus restoring the decision of the Member), and also
reverses either the judge’s conclusion that Hortilux Schreder had used the Mark
prior to Iwasaki’s first use, or the judge’s finding of non-abandonment.
[8]
Since,
in my opinion, the judge did not err in finding that:
a. Hortilux
Schreder had used the Mark prior to any claimed first use of the Mark in Canada by Iwasaki; and
b. Hortilux
Schreder had not abandoned the Mark,
there is no need to address the
issue of whether Iwasaki had first used the Mark in October 1997. This should
not be interpreted as an agreement (or disagreement) with the conclusions of
the judge in relation to whether Iwasaki first used the Mark in October 1997.
First Use by
Hortilux Schreder
[9]
Hortilux
Schreder claimed that it first used the Mark in Canada before Iwasaki first
used the Mark in Canada. The earliest possible date for Iwasaki’s first use,
based on the evidence presented in this case, was in October 1997. Hortilux
Schreder had claimed that it first used the Mark in Canada based on an invoice
dated August 26, 1997. Hortilux Schreder also submitted two other invoices
dated September 12, 1997 and October 2, 1997. These invoices accompanied light
reflectors that were imported into Canada by P.L. Light Systems Canada Inc., a
wholly-owned subsidiary of Hortilux Schreder (affidavit of Johan De Leeuw,
paragraphs 2 and 10, Appeal Book pages 107 and 108). The Member found that these
invoices did not establish the use of the Mark by Hortilux Schreder as the Mark
was not used in the body of these invoices. The Member does not review any
authorities in her written reasons in relation to this issue.
[10]
Although
Hortilux Schreder did introduce additional evidence at the Federal Court
hearing, the additional evidence was not related to the use, as defined in the
Act, of the Mark by Hortilux Schreder prior to October 1997. Section 2 (in
part) and subsection 4(1) of the Act provide as follows:
|
2. “use”, in relation to a
trade-mark, means any use that by section 4 is deemed to be a use in
association with wares or services;
…
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.
|
2.
« emploi » ou « usage » À l’égard d’une marque de commerce, tout emploi qui,
selon l’article 4, est réputé un emploi en liaison avec des marchandises ou
services.
…
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.
|
[11]
In
order for a person to establish use of a trade-mark mark in association with
certain wares, the person must establish that the particular trade-mark was, in
some way, associated with those wares when the property in or possession of the
wares was transferred. The additional evidence introduced at the Federal Court
hearing does not address the use (as defined in the Act) by Hortilux Schreder
of the Mark in association with light reflectors before October 1997. Therefore
the judge had to determine whether the decision of the Member that the invoices
introduced by Hortilux Schreder at the initial hearing before the Trade-marks
Opposition Board did not establish a prior use of the Mark, was reasonable.
[12]
The
judge, in his decision, reviewed various decisions of the Trade-marks
Opposition Board and concluded that:
67 Upon consideration of the
relevant factors, the invoices in Exhibit "B" of the de Leeuw
affidavit establish use of the trade-mark HORTILUX in association with lighting
reflectors. I agree with the Appellant that virtually every factor referred to
in the jurisprudence discussed above supports a finding of "use" in
the present case:
1. The trade-mark
HORTILUX appears in very large font (different from the surrounding text) and
in a stylized form with design elements (different from the surrounding text),
and is therefore prominent and distinguished from other matter in the invoice;
2. It is clear that
HORTILUX at the top of the invoices is a reference to the trade-mark HORTILUX
as opposed to the company name. Indeed, the company name "Hortilux B.V."
appears separately, immediately above the company's address;
3. The recipient of the
goods, P.L. Light Systems, is not an end consumer, but rather a distributor,
who would have familiarity with the Appellant's business, and would therefore
understand that HORTILUX is distinguishing the source of the reflectors
referred to in the invoice from the reflectors of others;
4. The only wares
referenced in each invoice are reflectors. Thus it is clear that the goods of
only one manufacturer are being sold;
5. No other trade-mark
appears in the invoices (whether in the body or otherwise).
68 Accordingly, the invoices
in Exhibit "B" of the de Leeuw affidavit establish prior use by the
Appellant of the trade-mark HORTILUX.
[13]
At
the hearing of the appeal before us, Iwasaki expressed concern that the
decision of the judge was not consistent with his earlier decision in Tint
King of California Inc. v Canada (Registrar of Trade-marks), 2006 FC
1440, [2006] FCJ No 1808 (Tint King). The judge referred to Tint King
in paragraph 31 of his reasons. It should be noted that in Tint King the
judge had stated that
32 The use of a
trade-mark on an invoice may or may not be considered use in association with
wares described in the invoice. The major consideration is whether the
trade-mark is being used as a trade-mark in describing the wares contained in
the invoice and, as such, whether appropriate notice of such use is being given
to the transferee of the wares. The jurisprudence appears somewhat mixed in
this regard. It appears that whether the use of a trade-mark on an invoice is
use as a trade-mark in association with wares is most often decided on its
position on the invoice. If a trade-mark is placed at the top of the invoice,
with no use in the body of the invoice, the use will not generally be in
association with the invoiced wares…
[14]
The
judge noted in Tint King that a trade-mark placed only at the top of an
invoice would not generally be considered to be used in association with
the invoiced wares. In this case the judge reviewed the decisions which were
the exceptions to this general rule and therefore it does not seem to me that
this case conflicts with the decision of the judge in Tint King.
[15]
As
noted above, the Member (in paragraph 47 of her written reasons) dismisses the
invoices as evidencing use of the Mark by Hortilux Schreder because the Mark
was not used in the body of the invoice without referring to any jurisprudence.
Clearly there are decisions of the Trade-mark Opposition Board which confirm
that the placement of a trade-mark at the top of an invoice could be use of the
trade-mark in association with wares (Gowling Lafleur Henderson LLP v.
Bulova Watch Co. (2006), 51 CPR (4th) 470; 88766 Canada Inc. v. Phillips,
2008 CarswellNat 2206; 88766 Canada Inc. v. Texinvest Inc., 2008
CarswellNat 767; Messrs. Stewart McKelvey Stirling Scales v.
Peninsula Farm Ltd., 2006 CarswellNat 4228). Since the Member did not
explain why she concluded that simply because the Mark was not in the body of
the invoice it could not be a use of the Mark in association with the wares
which accompanied the invoice and for which the invoice was issued, in seems to
me that the decision of the Member on this issue was not reasonable. The judge
did not commit a reviewable error in analyzing the jurisprudence and in
reaching a different conclusion. I would not interfere with the decision of the
judge on this issue.
Abandonment
[16]
If
Hortilux Schreder had abandoned the Mark at the date of advertisement (January
9, 2002), then Hortilux Schreder’s prior use of the Mark would not prevent
Iwasaki from registering the Mark (subsection 16(5) of the Act). Since the
Member found that Hortilux Schreder had not used the Mark before Iwasaki had
used the Mark, the Member did not address the issue of whether Hortilux
Schreder had abandoned the Mark. Since the Member had not addressed this issue,
there was no decision of the Member on this point to review on a reasonableness
basis.
[17]
Since
the judge had found that Hortilux Schreder had used the Mark prior to October
1997, he addressed the issue of whether Hortilux Schreder had abandoned the
Mark at the date of publication. Hortilux Schreder had also submitted
additional evidence in relation to this issue. Therefore the applicable
standard of review in relation to this issue is whether the judge committed a
palpable and overriding error in relation to his findings of fact and whether
his legal conclusions are correct.
[18]
In
addressing the issue of abandonment, the judge quoted the following excerpt
from Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 17 CPR
(3d) 289 (FCA):
It is established law that
"mere non-use of a trade mark is not sufficient to create abandonment.
That non-use must also be accompanied by an intention to abandon":
Cattanach J. in Marineland Inc. v. Marine Wonderland and Animal Park
Ltd. [1974] 2 F.C. 558, 574 (1974) 16 C.P.R. (2d) 97, 110-1. Fox provides
the reason for the rule as follows (The Canadian Law of Trade Marks and Unfair
Competition, 3rd ed., p. 280):
Mere non-use of a trade mark is
not of itself sufficient to create abandonment for non-use may be
satisfactorily explained. There must be present an intention to abandon.
[19]
Iwasaki
does not disagree that this is a correct statement of the law but submits that
the intention to abandon can be inferred as a result of a person not using a
particular trade-mark for a period of time. In Marineland Inc. v.
Marine Wonderland and Animal Park Ltd. Cattanach, J., after the part quoted
above, stated that:
83 In my opinion, the
intention to abandon the use of the trade mark "Marineland" in
association with films in the circumstances of the present matter, is to be
inferred from the appellant's long disuse. I take it from the evidence that the
appellant produced the one series of films for distribution. It has produced no
others for exhibition and there has been no exhibition in Canada. There has been no use by the appellant of that trade mark in connection with the
particular wares since 1964. I take as a premise that the use of a trade mark
with respect to wares of different general classes as well as with respect to
services is severable, separate and distinct.
84 Therefore, in the
circumstances outlined, I am of the opinion that the appellant
has not discharged the burden of
establishing that the use of its trade mark in association with films has not
been abandoned in Canada and, accordingly, I conclude, assuming that such trade
mark use existed, the trade mark has been abandoned in Canada.
[20]
The
relevance of abandonment arises as a result of the provisions of subsection
16(5) of the Act. This subsection provides as follows:
|
16 (5) The right of an
applicant to secure registration of a registrable trade-mark is not affected
by the previous use or making known of a confusing trade-mark or trade-name
by another person, if the confusing trade-mark or trade-name was abandoned at
the date of advertisement of the applicant’s application in accordance with
section 37.
|
16
(5) Le droit, pour un requérant, d’obtenir l’enregistrement d’une marque de
commerce enregistrable n’est pas atteint par l’emploi antérieur ou la
révélation antérieure d’une marque de commerce ou d’un nom commercial créant
de la confusion, par une autre personne, si cette marque de commerce ou ce
nom commercial créant de la confusion a été abandonné à la date de l’annonce
de la demande du requérant selon l’article 37.
|
[21]
Subsection
16(5) of the Act is not based on a person ceasing to use (as defined in the
Act) a trade-mark but rather on a person abandoning a particular trade-mark. As
noted above, abandonment of a trade-mark is not determined based solely on a
person ceasing to use that trade-mark. The person must also have intended to
abandon the trade-mark. I would agree that in determining
whether a person has an intention to abandon a trade-mark, an inference of such
intention could, in the absence of any other evidence, be drawn as a result of
a failure to use the trade-mark for a long period of time.
[22]
However,
there was other evidence in this case as noted by the judge in paragraphs 94 to
97 of his reasons and in the affidavit of Marco Brok (Appeal Book pages 75 to
79). Even though these examples are not examples of the use (as defined in the
Act) of the Mark in association with the wares, these examples support a
finding that Hortilux Schreder did not intend to abandon the Mark at January 9,
2002. In my opinion, the judge has not made a palpable and overriding error in
finding that Hortilux Schreder had not abandoned the Mark at the date of
publication.
[23]
As
a result I would dismiss the appeal, with costs.
“Wyman
W. Webb"
“I
agree
Pierre Blais C.J.”
“I
agree
K. Sharlow J.A.”
Email this Content