Date: 20061208
Docket:
T-189-06
Citation: 2006 FC 1472
Ottawa, Ontario, December 8, 2006
PRESENT: The Honourable Mr. Justice Blais
BETWEEN:
Omega Engineering, Inc.
Applicant
and
Omega SA (Omega AG) (Omega Ltd.)
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
This
is an application made under section 57 of the Trade-Marks Act, R.S.C. 1985, c. T-13
(the “Act”), for an order that Trade-mark Registration No. TMDA05009, for the
trade-mark OMEGA & Design, be amended or in the alternative, a declaration that
the trade-mark has been abandoned.
BACKGROUND
[2]
The
applicant is the owner of three trade-marks, Nos. 849,631, 849,629 and 849,630
for OMEGA and ΩE DESIGN, ΩE DESIGN and OMEGA respectively. All three
trade-marks are for use in association with scientific and industrial clocks
and timers, amongst other measuring instruments used in science and industry.
The respondent is the owner of the trade-mark registration No. TMDA05009, for
the trade-mark OMEGA & Design. The statement of wares as described in the
TMDA05009 trade-mark currently reads as follows:
1. Montres et boîtes pour montres;
2. Chaînes de montres, outils et
accessoires ainsi que toutes fournitures et parties détachées employées
dans l’horlogerie et la bijouterie y soient inclus;
3. Étuis et emballages, nommément:
contenants sous forme de housses et tissues et botes; compteurs et
chronographes qui servent au chronométrage sportif; et appareils techniques et
scientifiques pour l’électricité, l’optique, la télégraphie, le cinéma, la
radio, la téléphonie, la télégraphie, nommément: la (sic) cellules
photo-électriques, portails à contact, compteurs enregistreurs sur bande de
papier, pistolets de start à contacts électriques.
[3]
The
respondent’s TMDA05009 trade-mark was originally registered in 1895 and, as a
result, it has initiated separate opposition proceedings in respect of the
applicant’s three, more recent trade-marks. These proceedings are still ongoing
and allege that the applicant’s trade-marks are not registrable in light of the
TMDA05009 trade-mark.
[4]
On
August 2, 2001, counsel for the applicant initiated proceedings pursuant to section
45 of the Act, which allows for expungement of a trade-mark for non-use, on
application to the Registrar. Pursuant to these proceedings, a Hearing Officer
removed part of the statement of wares of the TMDA05009 trade-mark. On appeal
to the Federal Court, the trial judge further amended the statement of wares,
removing essentially the same part of the statement of wares that is at issue
in this application.
[5]
On
appeal to the Federal Court of Appeal, the Hearing Officer’s decision was
restored. The Court of Appeal determined that the trial judge had no authority
to amend the statement of wares herself on a section 45 proceeding. The Federal
Court of Appeal held that under expungement proceedings, the validity of the
registration is not in dispute. Rather, only under section 57 can the validity or
the register be questioned and struck out or amended, when it does not
accurately express or define the existing rights of the owner of the mark (see:
Ridout & Maybee LLP v. Omega SA et al., 2005 FCA 306, 43 C.P.R. (4th)
18).
[6]
In
light of the Federal Court of Appeal’s ruling, the applicant instituted the
present proceedings under section 57.
ISSUES FOR
CONSIDERATION
[7]
There
are two issues before the Court in this application:
a) Whether the
definition of wares, “appareils techniques et scientifiques pour l’électricité,
l’optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie”
and the specific wares “ la (sic) cellules photo-électriques, portails à
contact, compteurs enregistreurs sur bande de papier, pistolets de start à
contacts électriques” accurately express the existing rights of the respondent
under the TMDA05009 trade-mark.
b) Whether the
respondent has abandoned its use of the TMDA05009 trade-mark in association
with “appareils techniques et scientifiques pour l’électricité, l’optique, la
télégraphie, le cinéma, la radio, la téléphonie, la télégraphie, nommément: la (sic)
cellules photo-électriques, portails à contact, compteurs enregistreurs sur
bande de papier, pistolets de start à contacts électriques”.
ANALYSIS
Proceedings
Under Section 57
[8]
Section
57 of the Act grants this Court exclusive jurisdiction to strike out or amend
any entry on the register on the ground that the entry as it appears does not
accurately express or define the existing rights of the person appearing to be
the registered owner of the mark. The purpose of this provision is to provide a
summary procedure whereby the Registrar of Trade Marks or any interested party,
may apply to the Court to clarify the validity of a registration of a trade
mark in the register (Pitney Bowes Inc. v. Canada (Registrar of Trade Marks),
[1993] F.C.J. No. 476,
63
F.T.R. 241 (Fed. T.D.)).
[9]
Section
57 reads as follows:
57. (1) The Federal Court has exclusive
original jurisdiction, on the application of the Registrar or of any person interested,
to order that any entry in the register be struck out or amended on the
ground that at the date of the application the entry as it appears on the
register does not accurately express or define the existing rights of the
person appearing to be the registered owner of the mark.
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57. (1) La Cour fédérale a une
compétence initiale exclusive, sur demande du registraire ou de toute
personne intéressée, pour ordonner qu’une inscription dans le registre soit
biffée ou modifiée, parce que, à la date de cette demande, l’inscription
figurant au registre n’exprime ou ne définit pas exactement les droits
existants de la personne paraissant être le propriétaire inscrit de la
marque.
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(2) No person
is entitled to institute under this section any proceeding calling into
question any decision given by the Registrar of which that person had express
notice and from which he had a right to appeal.
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(2) Personne
n’a le droit d’intenter, en vertu du présent article, des procédures mettant
en question une décision rendue par le registraire, de laquelle cette
personne avait reçu un avis formel et dont elle avait le droit d’interjeter
appel.
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[10]
Section
57 clearly requires that a proceeding be undertaken only when it is brought by a
“person interested”. Section 2 of the Act defines a “person interested”
as follows:
2. […]
“person
interested” includes any person who is affected or reasonably apprehends that
he may be affected by any entry in the register, or by any act or omission or
contemplated act or omission under or contrary to this Act, and includes the
Attorney General of Canada;
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2. […]
« personne
intéressée » Sont assimilés à une personne intéressée le procureur
général du Canada et quiconque est atteint ou a des motifs valables
d’appréhender qu’il sera atteint par une inscription dans le registre, ou par
tout acte ou omission, ou tout acte ou omission projeté, sous le régime ou à
l’encontre de la présente loi.
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[11]
The
jurisprudence confirms that there is a de minimis threshold which the
applicant must satisfy to establish that it is a person interested (John
Labatt Ltd. v. Carling Breweries Ltd.,
[1974] F.C.J. No. 1104,
18 C.P.R. (2d) 15 (Fed. T.D.)). In the case at bar, both parties are owners of
similar marks. Further, the respondent has already initiated opposition
proceedings against the applicant in respect of the TMDA05009 trade-mark. It is
clear, therefore, that the applicant in this case is an interested party capable
of instituting this application.
[12]
Proceedings
under section 57 place an onus on the applicant to show that the registration
should be expunged. As the respondent correctly notes, there is always a
presumption that a trade-mark is valid (Consorzio Del Prosciutto di Parma v.
Maple Leafs Meats, [2001] 2 F.C. 536, 11 C.P.R. (4th) 48).
[13]
In Veuve
Clicquot Ponsardin v. Boutiques Cliquot Ltée, [2006] S.C.J. No. 22,
at paragraph 5, Justice Binnie held:
…Under
s. 19 of the Act, the respondents’ marks are presumptively valid, and entitles
them to use the marks as described above.
Later on, at paragraph 15, Justice Binnie
continues:
…Again,
however, the onus of proof to establish the likelihood of such depreciation
rested on the appellant. Despite the undoubted fame of the mark, the likelihood
of depreciation was for the appellant to prove, not for the respondents to
disprove, or for the court to presume.
[14]
Generally,
an application to amend or strike out an entry in the register is made under
one of the grounds in subsection 18(1) of the Act. However, there have also
been other instances beyond the scope of subsection 18(1) where the Court has
amended or struck out an entry on the register. These include instances where
an agent has not fulfilled his fiduciary duty by registering his principal’s
trade-mark in his own name, cases of fraudulent or material misrepresentations
or cases where a mark is invalidated where it is primarily functional (see, for
example, Ling Chi Medicine Co. (H.K.) Ltd. v. Persaud (1998), 81 C.P.R.
(3d) 369 (Fed. C.A.) or Andres Wines
Ltd. v. E. & J. Gallo (1975), 25 C.P.R. (2d) 126 (Fed. C.A.))
[15]
While
the Act is designed in part to protect the consumer, as well as the
rightful owners of trade-marks from unfair competition, section 57 has a
particular function to protect the public interest by preserving the purity of
the register (see
Harold G. Fox, The Canadian Law of Trade Marks and Unfair Competition, 3rd ed.
(Toronto: Carswell Co. Ltd., 1972)).
[16]
At
page 11-24, Fox also reviews when it will be appropriate to amend or strike out
an entry in the register. He writes:
Section
57 of the Act permits the court to strike out or amend any registration if it
does not accurately express or define the existing rights of the person
appearing as the registered owner. The courts have interpreted this power to
mean that if the registration as a whole is invalid, it will be struck out. If
the registration is invalid only in respect of certain wares, for example, the
registration will be amended accordingly.
Amendment of an Invalid Trade-Mark
[17]
The
applicant argues that the Hearing Officer, the Federal Court and Federal Court
of Appeal, were prohibited by the Act from determining whether the wares as
described in the trade-mark TMDA05009 were properly associated with the general
classification of “appareils techniques et scientifiques pour l’électricité,
l’optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie”,
under the previous section 45 hearing.
[18]
It
submits, however, that under section 57 proceedings, the Court may consider
whether the description of wares is consistent with the classification of “appareils
techniques et scientifiques”. Therefore, the Court may seek to determine
whether the description should be amended to either remove the general
classification altogether, or substitute the classification with one proposed by
the applicant, namely “appareils sportifs”.
[19]
While
not challenging the Court’s role in a section 57 proceeding, the respondent submits
numerous reasons why this Court should decline to amend the register. It notes
that there have been several limitations placed on the Court’s jurisdiction
when acting under section 57 and that creating the new “appareils sportifs”
classification would ignore the rights of third parties who may see their own
marks infringed as a result of its adoption.
[20]
The
respondent further submits that the Court may only amend the register where the
mark is open to expungement. Acting under section 57, therefore, only allows
the Court to save an otherwise invalid mark. The respondent argues that, in any
event, the wares appropriately fall under the general classification as it
currently reads.
[21]
Even
if the Court were to determine that the description of wares in the general
classification is inappropriate, the respondent argues that the proposed
amendment to “appareils sportifs” would not be a satisfactory replacement. The
term “sportif” is normally associated with products that are used directly by
athletes in their sporting discipline. However, the respondent submits that its
products are destined for measuring athletes’ performances.
[22]
To
summarize, there is no suggestion by the applicant in the case at bar that the
registration of the respondent’s trade-mark as a whole is invalid. Rather, the
applicant submits that the general classification that precedes the statement
of wares is not descriptive of the wares that follow that statement.
[23]
The
applicant is essentially making two arguments in support of its application.
First, the applicant states that a 1994 world wide settlement agreement (the
“Co-existence Agreement”) between the parties forbids the respondent from
selling products that fall under the description of wares as it currently
exists. Second, the applicant relies on the affidavit of Philip Lefebvre, Director
of Servtrotech Inc., which the applicant claims demonstrates that although the
respondent used the trade-mark in association with the specific wares, there
was no evidence that those wares could be described as technical or scientific
apparatus for use in the fields of electricity, optics, telegraphy, cinema,
radio and telephony.
[24]
Regarding
the first argument, I am not satisfied that the 1994 Co-existence Agreement
proves the respondent is prohibited from using the trade-mark as argued by the
applicant.
[25]
Paragraph
4(b) of the Co-existence Agreement states:
OMEGA
SA undertakes not to use, register or apply to register any trademark
consisting of or containing the world OMEGA or the Greek letter Ω, or any
element colourably resembling either of those two elements, in respect of:
“Apparatus
industrially and/or scientifically employed for measuring or controlling
variable parameters such as temperature, pressure, force, load, vibration,
electrical conductivity, liquid level, acidity, humidity, strain and flow”. [Emphasis in original.]
[26]
In
my opinion, the products that are listed in this agreement are not similar to
the wares that are described in the register. While the agreement prohibits the
use of the products for scientific purposes, it does so in the context of measuring or controlling
variable parameters such as temperature, pressure, force, load, vibration,
electrical conductivity, liquid level, acidity, humidity, strain and flow. The
description of wares at issue in this application are for “appareils techniques
et scientifiques pour l’électricité, l’optique, la télégraphie, le cinéma, la
radio, la téléphonie, la télégraphie”. Therefore, the wares are not similar to those
whose use is prohibited by the agreement.
[27]
However,
as already noted, the applicant also relies on the affidavit of Mr. Lefebvre
that was affirmed for the purposes of the section 45 proceedings as a second
argument in support of its application. Attached to Mr. Lefebvre’s affidavit
are several orders for products sold under the trade-mark at issue. They
describe the sale of various devices for sport timekeeping, such as a starting
gate, a starting gun, and a digital scoreboard. Other products sold under the
trade-mark include such items as cameras, computers and their accessories and
tripods. The respondent alleged in the section 45 proceedings that the sale of
these products demonstrated use of the wares.
[28]
In
the section 45 proceedings, the trial judge concluded that the products sold by
the respondent did not fall within such a general description (see Ridout
& Maybee LLP v. Omega SA et al., 2004 FC 1703, 39 C.P.R. (4th)
261). However, as already noted, this decision was reversed by the Federal Court
of Appeal on the grounds that the validity of a registration is not in dispute
on a section 45 proceeding and a trial judge is precluded from considering the
wording of the registration. Nevertheless, the Court of Appeal held in Ridout
& Maybee LLp v. Omega SA (2005), 43 C.P.R. (4th) 18,
2005 FCA 306, at paragraph 3:
…
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.
[29]
In
my opinion, there is no question that the respondent’s equipments are
“appareils techniques et scientifiques” pursuant to the usual definition that
is provided. There is also evidence that they are “pour l’électricité” and also
“pour l’optique”, pursuant to documents provided by Mr. Lefebvre.
[30]
As
discussed above, the respondent also suggests that we cannot use section 57
application to modify a valid registered trade-mark. The respondent refers to
paragraphs 10 and 11 of the decision in Patou (Jean) Inc. v. Luxo
Laboratories Ltd., [1998] F.C.J. No. 1910,
158 F.T.R. 16, which read as follows:
Patou’s
application for the expungement of the trademark BOOSTER raises two issues: (a)
was the trademark BOOSTER distinctive of Luxo’s wares when this proceeding was
commenced, pursuant to s. 18(1)(b) of the Act; and (b) if so, has Luxo
abandoned the trademark through non-use, pursuant to s. 18(1)(c) of the Act?
If
the trademark is found to be valid and is not expunged, Patou seeks an order
from this court amending the entry in the register so that Luxo’s use of its
trademark in association with its wares be limited “for the hair salon market”.
This raises two further issues, namely, the jurisdiction of this court to grant
this relief and the appropriateness of doing so in this case.
[31]
In
paragraph 42 of the above decision, Justice Allan Lutfy, now Chief Justice
Allan Lutfy, held:
In
my opinion, the power to amend the register as set out in s. 57(1) is only to
be exercised where a trademark is otherwise open to expungement. The ability to
amend the register in this way allows the court to save an otherwise invalid
mark and not to restrict the existing rights of the registered owner of a valid
mark.
[32]
As
suggested by the respondent, to be successful in these proceedings the
applicant must demonstrate that the registration of the mark in question is
invalid but that, nevertheless, the registration can be saved through an
amendment reflecting the real use of the trade-mark.
[33]
As
was noted at paragraph 14, an application to amend or strike out an entry in
the register is normally made under one of the grounds in subsection 18(1) of
the Act, which reads as follows:
18. (1) The registration of a trade-mark
is invalid if
(a) the
trade-mark was not registrable at the date of registration,
(b) the
trade-mark is not distinctive at the time proceedings bringing the validity
of the registration into question are commenced, or
(c) the
trade-mark has been abandoned,
and subject to
section 17, it is invalid if the applicant for registration was not the
person entitled to secure the registration.
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18. (1) L’enregistrement d’une
marque de commerce est invalide dans les cas suivants :
a) la marque de commerce
n’était pas enregistrable à la date de l’enregistrement;
b) la marque de commerce
n’est pas distinctive à l’époque où sont entamées les procédures contestant
la validité de l’enregistrement;
c) la marque de commerce a
été abandonnée.
Sous
réserve de l’article 17, l’enregistrement est invalide si l’auteur de la
demande n’était pas la personne ayant droit de l’obtenir.
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[34]
The
first and second grounds listed, namely the registrability of the trade-mark at
the date of registration and the lack of distinctiveness of the mark at the
time the proceedings are commenced, were not in fact argued by the applicant.
As for the third ground, namely that the trademark has been abandoned, it will
be discussed in the next section of our analysis.
[35]
What
the applicant would have this Court do, as set out in paragraph 18 of this
decision, is to replace the existing general classification of wares which
forms part of the respondent’s valid registration, and replace it with a
different general classification.
[36]
The
respondent for his part argues, and I agree, that the remedy suggested by the
appellant – that the general classification should be found inappropriate and
replaced by another description of general classification – is not allowed in a
section 57 application, as explained by Justice Barry L. Strayer in the following
passage from Royal Doulton Tableware Ltd. v. Cassidy’s Ltée, [1984]
F.C.J. No. 270:
The
plaintiff is also entitled, as requested, to an order expunging registration
number 162,829 in the name of Cassidy’s Ltd. – Cassidy’s Ltée from the trade
mark register. Such an order is clearly within the exclusive jurisdiction of this
Court set out in subsection 57(1) of the Trade Marks Act.
Later on, at paragraph 22, Justice Strayer
continues:
It
was suggested by counsel for the plaintiff, and resisted by counsel for the
defendant, that it would be open to me simply to substitute as registered owner
Paragon China Limited for Cassidy’s Ltd. with respect to registration number
162,829. Counsel for the plaintiff contended that this could be regarded as an
amendment of the register which by subsection 57(1) of the Trade Marks Act
the Court is entitled to order. In Friendly Ice Cream Corp. v. Friendly Ice
Cream Shops Ltd., [1972] F.C. 712; 7 C.P.R. (2d) 35 (T.D.), Heald J. held
at page 717 F.C.; at page 40 C.P.R. that the Court has no jurisdiction to make
an amendment of this sort and I respectfully concur. If one examines the scheme
of the Trade Marks Act, particularly the procedure by which registration
of trade marks is obtained, it is clear that parliament contemplated a process
of examination to be carried out with respect to any registrant which process
has not taken place here with respect to Paragon China Limited. In particular
section 29 of the Act requires a considerable amount of information to be
provided by an applicant to the Registrar which has not happened in this case
with respect to Paragon china Limited. There is of course also the process of
advertising under section 36 and the process of considering opposition to
registration under section 37, none of which has happened here. In my view any
specific proposed registration should go through these processes and it matters
not that another applicant, Cassidy’s Ltd, has undergone this process with
respect to the same trade mark. I can find nothing in the Act nor in the
jurisprudence which would support an interpretation of the Court’s power of
amendment of the register so as to include ordering the involuntary
substitution – as compared to a transfer consented to by the registrant – of
one registrant for another.
[37]
In
my view, the respondent is also correct when he suggests that section 37 of the
Act and rule 16(f) of the Regulations apply. In fact, since such an amendment
could negatively impact the rights of third parties, notice would have to be
given to allow anybody to oppose the new general classification if they have
any reason for it. Therefore, the suggestion that we should simply substitute
another description that would fit more with what the respondent is doing is
simply not an acceptable remedy.
[38]
In
other words, while the applicant’s objection could have been properly raised as
a ground of opposition, it cannot be entertained in a section 57 application. As
was mentioned before, the only remaining possibility for the applicant to
succeed is to prove the abandonment of the trade-mark.
Abandonment of the
Trade-Mark
[39]
The
applicant has argued that in the alternative, this Court should find that the
respondent has abandoned its trade-mark due to a long period of disuse.
[40]
The
Court may strike out or amend an entry in the register where the use of the
mark has been abandoned. The grounds upon which this application may be made
are set out at paragraph 18(1)(c) of the Act. For the sake of clarity, I
repeat the relevant part of section 18:
18. (1) The registration of a trade-mark
is invalid if
[…]
(c) the
trade-mark has been abandoned,
[…]
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18. (1) L’enregistrement d’une
marque de commerce est invalide dans les cas suivants :
[…]
c) la marque de commerce a
été abandonnée.
[…]
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[41]
The
burden lies on the applicant to prove abandonment under subsection 18(1). It is
trite law that in abandonment proceedings, the applicant must prove both the
actual non-use of the mark, as well as intent on the part of the owner of a
trade-mark to abandon the mark (Promafil Canada Ltée v. Munsingwear Inc.
(1992), 44 C.P.R. (3d) 59 (Fed. C.A.)).
[42]
That
is, the mere non-use of a trade-mark does not establish abandonment. Non-use
must also be accompanied by an intention to abandon. The respondent can
successfully oppose a claim of abandonment by demonstrating the smallest use of
the trade-mark. Such evidence will renounce any claim for abandonment (Philip
Morris Inc. v. Imperial Tobacco Ltd. (1987), 17 C.P.R. (3d) 289 (Fed. C.A.)).
[43]
The
applicant correctly notes that an intention to abandon a trade-mark may be
inferred from a long period of disuse (Good Humor Corp. of America v. Good Humor Food
Products Ltd.
[1937] Ex. C.R. 61). However, each case of abandonment is a question of fact
that must be determined according to the circumstances of the case. Other
factors, such as for instance whether the trade-mark owner has maintained the
trade-mark on the register, must be considered.
[44]
The
applicant submits that the use of the general classification has been
abandoned. However, it concedes that during the section 45 proceedings, both
the Hearing Officer and the Federal Court of Appeal showed use of the
trade-mark in association with the specific wares listed in the registration,
namely, “cellules photo-électriques, portrails à contact, compteurs
enregistreurs sur bande de papier, pistolets de start à contact électriques.” As
such, there is clearly evidence of use of the trade-mark with the specific
wares under the general classification.
[45]
While
the general classification that precedes the description of wares may not be
very specific, an applicant is nonetheless free to identify broadly the general
classes of wares associated with its mark (Kom Inc. v. Levitan, Kohl &
Associates Ltd., [1991] T.M.O.B. No. 19, (1991) 35 C.P.R. (3d) 121).
[46]
Finally,
the statement of wares cannot be examined in isolation. Given that there is
evidence of use of the trade-mark with the specific wares that follow the
general classification, I do not believe that the applicant has met its burden
to show that use of the trade-mark has been abandoned solely in respect of the
general classification.
JUDGMENT
- The application under section 57 is
dismissed;
- Costs in favour of the respondent.
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