Omega SA v. Ridout & Maybee LLP, 2005 FCA 306

Date: 20050920

Docket: A-676-04

Citation: 2005 FCA 306

CORAM:        DESJARDINS J.A.

LÉTOURNEAU J.A.

NOËL J.A.

BETWEEN:

                                        OMEGA SA (OMEGA AG) (OMEGA LTD.)

                                                                                                                                            Appellant

                                                                           and

                                                       RIDOUT & MAYBEE LLP

                                                                                                                                        Respondent

                                       Heard at Ottawa, Ontario, on September 20, 2005.

                 Judgment delivered from the Bench at Ottawa, Ontario, on September 20, 2005.

REASONS FOR JUDGMENT OF THE COURT BY:                                        LÉTOURNEAU J.A.

Date: 20050920

Docket: A-676-04

Citation: 2005 FCA 306

CORAM:        DESJARDINS J.A.

LÉTOURNEAU J.A.

NOËL J.A.

BETWEEN:

                                        OMEGA SA (OMEGA AG) (OMEGA LTD.)

                                                                                                                                            Appellant

                                                                           and

                                                       RIDOUT & MAYBEE LLP

                                                                                                                                        Respondent

                                     REASONS FOR JUDGMENT OF THE COURT

                   (Delivered from the Bench at Ottawa, Ontario, on September 20, 2005)

LÉTOURNEAU J.A.

[1]                This is an appeal from a decision of the Federal Court by which the Federal Court judge overturned the decision of the Registrar of Trade-marks and ordered, in an expungement proceeding for non-use of the trade-mark under section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (Act), that certain wares and the general class containing them be expunged. We will identify these wares and their general class later.

[2]                In our opinion, the outcome of this appeal is governed by the decision of this Court in Renaud Cointreau et Cie v. Cordon Bleu International Ltée (2002), 18 C.P.R. (4th) 415, at page 416, where it was held that in an expungement proceeding under section 45 of the Act, the validity of the registration is not in dispute; it must be discussed under section 57. In fact, section 57 of the Act gives the Federal Court exclusive jurisdiction to strike out or amend an entry in the Register when it "does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark".

[3]                The Registrar was entitled to refuse to become involved in analyzing the wording of the registration and the general class to which some specifically identified wares are associated in this case. But the Federal Court judge, in deciding to expunge the wares and the general class in question, undertook this kind of analysis, which lies beyond the scope of section 45 and the jurisdiction of the Registrar, although there was evidence, recognized and accepted by the judge and by the respondent firm, not only of the sale of the wares in association with the trade-mark (which held the monopoly (section 19 of the Act)), but also evidence linking these wares to some of the areas listed in the general class.

[4]                In short, in our opinion, the Federal Court judge only had to find that the appellant's mark was being used in regard to property specified under the general class. Whether the wording of the registration accurately expressed or defined the appellant's rights was not an issue before her.

[5]                The respondent contended that in any event the Federal Court judge was wrong to find that evidence of the use of the trade-mark had been adduced. It relied in this regard on the fact that the word "Electronics" had been added to the mark as used, this word appearing under the mark and separated from it by a broken line.

[6]                The Federal Court judge concluded, like the Registrar, that this addition did not affect the first impression left by the graphic mark and that accordingly there was evidence of the use of the mark. This was a conclusion that was supported by the evidence.

[7]                For these reasons, the appeal will be allowed and the decision of the Federal Court judge, dated December 3, 2004, in docket T-2248-03, ordering the expungement of the wares and the general class in question, will be set aside.

[8]                The decision of the Registrar, dated September 30, 2003, maintaining in the Register the following general class and wares "et appareils techniques et scientifiques pour l'électricité, l'optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie nommément : cellules photo-électriques, portails à contact, compteurs enregistreurs sur bande de papier, pistolets de start à contacts électriques" will be restored.

[9]                The appellant will be entitled to its costs both on appeal and in the Federal Court.

                                                                                                                               "Gilles Létourneau"               

                                                                                                                                                      J.A.

                                                  FEDERAL COURT OF APPEAL

                            NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                          A-676-04

APPEAL FROM AN ORDER OF THE HONORABLE JUSTICE TREMBLAY-LAMER DATED DECEMBER 3, 2004 IN DOCKET NO. T-2248-03.

STYLE OF CAUSE:                          OMEGA SA (OMEGA AG) (OMEGA LTD.) v. RIDOUT & MAYBEE LLP

PLACE OF HEARING:                    OTTAWA, ONTARIO

DATE OF HEARING:                      September 20, 2005

REASONS FOR JUDGMENT        DESJARDINS J.A.

OF THE COURT BY:                       LÉTOURNEAU J.A.

NOËL J.A.                    

DELIVERED FROM THE

BENCH BY:                                      LÉTOURNEAU J.A.

APPEARANCES:

SOLICITORS OF RECORD: