Date: 20060530
Docket: T-1490-05
Citation: 2006 FC 655
Toronto, Ontario, May 30, 2006
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
LEVI STRAUSS & CO.
Applicant
and
THE REGISTRAR OF TRADE-MARKS and
AIRD AND BERLIS LLP
Respondents
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an appeal from a decision of the Registrar of Trade Marks, brought by way of application under Rule 300(d). The Registrar, in proceedings instituted by a law firm under section 45 of the Trade Marks Act, R.S.C. 1985, c.T-13, amended the Applicant's registration of a trade mark so as to delete certain wares from that registration. I am satisfied, upon further evidence filed in this application that "shirts" should be restored to that registration.
[2] At issue is the registration of a trade mark, number 278,290, which comprises a design which can be briefly described as an orange tab sewn into the seam of a garment. The registration as it originally stood extended to wares described as:
"Clothing for men, women and children, namely: trousers, overalls, jeans, shirts, jackets, skirts and blouses"
[3] A Toronto law firm instituted a challenge to that registration under the provisions of section 45 of the Act. The Applicant Levi Strauss & Co., the registered owner, filed an affidavit of Ellen Baker, a trade mark specialist of Levi Strauss & Co. (Canada) Ltd. a wholly owned subsidiary and licensee of the Applicant, in response. The requesting law firm raised several arguments challenging the registration and sufficiency of the evidence, all of which were dealt with by the Hearing Officer designated by the Registrar to deal with such proceedings in a written decision dated June 30, 2005.
[4] The decision the Hearing Officer determined, inter alia, that the evidence was completely silent as to "trousers, overalls, skirts and blouses" and that those wares ought to be deleted from the registration. Further, as to "shirts" the Hearing Officer found that the evidence was unclear as to use of the trade mark as to those wares and that the absence of such use was not adequately excused. Thus "shirts" was also deleted from the registration.
[5] On this appeal further evidence has been filed by the Applicant, as is permitted by section 56(5) of the Act. This evidence is a further affidavit of Baker sworn September 28, 2005 and exhibits thereto. The requesting law firm did not file any evidence and took no part in this appeal nor did the Registrar.
[6] Where the new evidence is directed to relevant matters that were not before the Hearing Officer, I am entitled to consider the matter de novo (eg. House of Kwong Sang Hong International Ltd. v. Borden Ladner Gervais (2004), 31 C.P.R. (4th) 252 (FC) at paragraph 39).
[7] In this case the further affidavit of Baker satisfies me that the trade mark was in use in respect of "shirts" during the period immediately preceding the institution of the section 45 proceeding. Therefore "shirts" should be restored to the list of wares contained in the registration.
[8] As is usual in such matters, no cost will be awarded.
JUDGMENT
UPON APPEAL by way of application from a decision of the Hearing Office dated June 30, 2005 respecting section 45 proceedings under the Trade Marks Act, R.S.C. 1985 c.T-13 as to Registration Number 278,290 deleting certain wares from said registration;
AND UPON review, the Record herein including, in particular, the affidavit of Ellen Baker sworn September 28, 2005 and Exhibits thereto.
AND UPON hearing counsel for the Applicant, no one appearing for either Respondent;
AND FOR the Reasons delivered herewith;
THIS COURT ADJUDGESthat:
1. The appeal is allowed to the extent that "shirts" is permitted to remain in the statement of wares of registration number 278,290 such that the statement of wares shall be:
"Clothing for men, women and children namely jeans, shirts and jackets"
2. There is no award of costs.
"Roger T. Hughes"
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