Date: 20040518
Docket: T-2094-02
Citation: 2004 FC 717
Ottawa, Ontario, this 18th day of May, 2004
Present: The Honourable Justice James Russell
BETWEEN:
FOOTLOCKER GROUP CANADA INC. formerly VENATOR GROUP CANADA INC.
Applicant
and
R. STEINBERG and THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER AND ORDER
[1] This is an application under s. 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 ("Act") in the matter of an appeal from a decision of the Registrar of Trade-marks dated October 16, 2002 ("Decision") to expunge Registration No. 368,206 for the trade-mark WOOLWORTH ("Trade-Mark") pursuant to s. 45 of the Act.
BACKGROUND
[2] The Respondent, R. Steinberg ("Respondent"), requested that the Registrar issue a Section 45 Notice against the Trade-Mark.
[3] On June 19, 2000, a Section 45 Notice issued against Registration No. 368,206 covering the Trade-Mark in association with retail store services.
[4] The Applicant was granted an extension of time to December 19, 2000, to reply to the Section 45 Notice. On December 18, 2000, the Applicant filed the affidavit of Mr. Ronald Stinson sworn December 15, 2000 ("Stinson Affidavit 1") in reply to the Section 45 Notice.
[5] The Applicant notes that Stinson Affidavit 1 provides that the Trade-Mark has been used in Canada for many years. It was in use during the three year period preceding June 19, 2000, the date of the Section 45 Notice. The Trade-Mark continues to be used today in association with retail store services.
[6] Stinson Affidavit 1 has attached as Exhibit A a photograph showing use of the Trade- Mark in association with the services.
[7] The Registrar advised the Respondent that it could file a written argument. The Respondent chose not to do so.
[8] The Registrar then advised the Applicant that it could file a written argument. The Applicant filed a written argument August 1, 2001, and requested an oral hearing.
[9] The oral hearing was held June 27, 2002, at which both parties were represented.
[10] The Hearing Officer found that the statement in para. 5 of Stinson Affidavit 1 was vague and did not indicate use during the relevant period, i.e., during the three year period preceding June 19, 2000.
[11] The Hearing Officer found that the Appellant's affiant had not indicated when the sign bearing the Trade-Mark was displayed.
[12] The Hearing Officer also found that the statement in Stinson Affidavit 1 showing sales figures was insufficient to conclude that, when the services were rendered, the Trade-Mark was used or displayed as shown in Exhibit A to Stinson Affidavit 1.
[13] The Registrar by the Decision dated October 16, 2002, ordered Registration No. 368,206 to be expunged.
[14] On January 16, 2003, the Applicant filed the affidavit of Mr. Ronald Stinson sworn January 15, 2000 ("Stinson Affidavit 2") in support of this appeal.
[15] The photograph provided as an exhibit to Stinson Affidavit 1 (the same paragraph was also provided as Exhibit l A to Stinson Affidavit 2) shows the Trade-Mark used in a sign affixed to the front of a store located in the City of Toronto, in the Province of Ontario, during the relevant period.
[16] The store sign displaying the Trade-Mark (as described in para. 4 of Stinson Affidavit 2) has been affixed to the store front since 1999 and has remained on the store front continually until after June 19, 2000, the date of the Section 45 Notice.
[17] Stinson Affidavit 2 says that the Trade-Mark was used in Canada by the Applicant in association with retail store services and that the sales in Canada for the years 1999 and 2000 are as follows:
1999 - in excess of $1,380,399.00
2000 - in excess of $1,458,000.00
Stinson Affidavit 2, Paragraph 6
[18] The Respondent points out that Registration no. 368,206 for the Trade-Mark covering retail store services issued on April 27, 1990, in favour of F.W. Woolworth Co. Ltd.
[19] The ownership of the registration was transferred as of January 31, 1993, from F.W. Woolworth Co. Ltd. to Woolworth Canada Inc. as recorded in the Register of Trade-Marks on December 3, 1993.
[20] The ownership of registration no. 368,206 was again transferred effective June 12, 1998, from Woolworth Canada Inc. to Venator Group Canada Inc., which transfer was recorded in the Register of Trade-Marks on March 24, 1999.
[21] The name of the registrant was changed to Foot Locker Canada Inc. effective November 1, 2001, and recorded in the Register of Trade-Marks on December 23, 2002.
[22] At the time of the Section 45 Notice on June 19, 2000, Venator Group Canada Inc. was recorded as the registered owner of Registration No. 368,206.
ISSUES
The Applicant raises the following issues:
Was the WOOLWORTH Trade-Mark in use in association with retail store services by the Applicant during the relevant period, that is during the three year period preceding June 19, 2000, the date of the Section 45 Notice?
ARGUMENTS
Applicant
[1] The Applicant says that the Court may substitute its decision for that of the Registrar if the Registrar came to a wrong decision or if additional evidence is adduced before the Court that would have materially affected the Registrar's findings of fact or the exercise of her discretion (Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 at 196 (F.C.A.), Swabey Ogilvy Renault v. Golden Brand Clothing (Canada) Ltd. (2002), 19 C.P.R. (4th) 516 at 520 (F.C.T.D.), Value-Village Markets (1990) Ltd. v. Canada (Registrar of Trade Marks) (1995), 60 C.P.R. (3d) 502 at 506 (F.C.T.D.)).
[2] The Applicant maintains that the Registrar misinterpreted statements in Stinson Affidavit 1 and made findings of fact that are clearly wrong.
[3] Stinson Affidavit 2 filed in this appeal contains additional information showing the use of the Trade-Mark during the relevant period.
[4] In Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 (F.C.A.), Thurlow C.J. states what evidence is required in a Section 45 proceeding:
What s-s. 44(1) [now section 45] requires is an affidavit or statutory declaration not merely stating but "showing", that is to say, describing the use being made of the trade mark within the meaning of the definition of trade mark in s. 2 and of use in s. 4 of the Act.
Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 at 66 per Thurlow C.J. (FCA).
[5] A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services (Subsection 4(2) of the Act).
[6] The Applicant says that the Trade-Mark has been used with respect to retail store services as evidenced by the photograph in Exhibit A of Stinson Affidavit 1, Exhibit 1A of the Stinson Affidavit 2, and the sales record for the years 1999 and 2000 referred to in Stinson Affidavit 2.
[7] In Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 56 (F.C.T.D.), a first affidavit was found to be inadequate to support use during the relevant period in light of Plough, supra. A second affidavit was filed in the appeal. Mahoney J. stated at p. 57:
The respondent [Registrar of Trade Marks] fairly summarized the material evidence contained in the appellant's second affidavit as follows:
In the second affidavit, dated September 9, 1980, Mr. Hallam states that the trade mark UNION LIGHTING CENTRE/ CENTRE D'ECLAIRAGE UNION, was employed by the registrant in Canada in association with all of the wares specified in the registration except electric blankets, at the date of the s. 44 [now s.45] notice. Mr. Hallam explains that the said trade mark was displayed in and about the various premises of the registrant where the registrant's wares were offered for sale and sold to the public. The affiant also states that price tags bearing the trade mark were affixed to the registrant's wares at the time of sale in such a manner that the attention of the purchaser would be drawn to the said trade mark. Exhibit A of the affidavit to (sic) shows the manner in which the trade mark was applied to the wares. It is a sample price tag bearing the trade mark UNION LIGHTING CENTRE/CENTRE D'ECLAIRAGE UNION. In conclusion, the aunt states that with the exception of electrical blankets all of the wares listed in the statement of wares were available and were sold in association with the said trade mark at all material times.
Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 56 at 57-58 (F.C.T.D.).
[8] The Applicant says the law is clear that there is no justification in putting a trade mark owner to the expense and trouble of showing use of a trade mark by evidentiary overkill when use can be readily proved in a simple, straightforward, fashion. Use must be shown but not examples of all uses (Union Electric Supply Co. Ltd., supra).
[9] Wetston J., in Gesco Industries Inc. v. Sim & McBurney (1997), 76 C.P.R. (3d) 289 (F.C.T.D.); aff'd 9 C.P.R. (4th) 480 (FCA), summarizes the principles of evidence relevant to a s. 45 proceeding:
The respondent has argued that the onus on the registrant to demonstrate use in Canada during the relevant time is high. I cannot agree: Value Village, supra, at 509. The Registrar need only consider whether the appellant has provided some evidence of use of its trade-mark during the relevant time: Mantha & Associes/Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3d) 354 (F.C.A.); Plough, supra. As such, evidence filed with the Registrar must establish facts "from which a conclusion of 'use' or 'use in the normal course of trade' would follow as a logical inference from the facts established": Keepsake, supra, at 497.
Gesco Industries Inc. v. Sim & McBurney (1997), 76 C.P.R. (3d) 289 at 294 (F.C.T.D.); aff'd 9 C.P.R. (4th) 480 (FCA).
[10] The Applicant's position is that there is a limited onus on the owner of a Trade-Mark to prove use to a sufficient degree to avoid expungement in a Section 45 proceeding (Gesco Industries Inc., supra, at 294; Union Electric Supply Co. Ltd., supra, at 57; Value-Village Markets (1990) Ltd., at 509; Austin Nichols & Co. v. Cinnabon, Inc. (1998), 82 C.P.R. (3d) 513 at 525 (F.C.A.); Wells' Dairy Inc. v. UL Canada Inc. (2000), 7 C.P.R. (4th) 77 at 86, Swabey Ogilvy Renault v. Golden Brand Clothing (Canada) Ltd. (2002), 19 C.P.R. (4th) 516 at 521 (F.C.T.D.)).
[11] In Keepsake, Inc. v. Prestons Ltd. (1983), 69 C.P.R. (2d) 50 (F.C.T.D.), Cattanach J. explained that an affidavit in a Section 45 proceeding does not require explicit detail. Some detail can be inferred from the evidence provided in the affidavit:
While the affidavit before the registrar and the additional affidavit before the court could have been more explicit nevertheless on balance there is evidence from which it can be inferred that the rings were sold in the normal course of trade and that the transactions in question were arm's length commercial transactions.
In Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (court File T-4929-81 [63 C.P.R. (2d) 56, [1982] 2 F.C. 263]), decided by Mahoney J. on April 15, 1982, he said [at p. 57 C.P.R.]:
There is absolutely no justification in putting a trade mark owner to the expense and trouble of showing his use of the trade mark by evidentiary overkill when it can be readily proved in a simple, straightforward fashion.
Keepsake, Inc. v. Prestons Ltd. (1983), 69 C.P.R. (2d) 50 at 61 (F.C.T.D.).
[12] The Applicant argues that the explicit detail suggested by the Registrar in the Decision is not necessary. It is clear from Stinson Affidavit 1 that the sales figures pertain to stores that display the Trade-Mark on the store front as shown in Exhibit A to Stinson Affidavit 1 and Exhibit 1 A to Stinson Affidavit 2.
[13] In Mantha & Associés /Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3d) 354 (F.C.A.), the appeal was from a decision of the Registrar to expunge a trade mark registration on the basis that photographs of the use of its trade marks were insufficient to provide evidence of use during the relevant period of time. The Registrar had found statements in an affidavit to be a bare allegation of use. The trial judge affirmed the Registrar's decision stating that statements in an affidavit supplied by the appellant were "bald assertions". Hugessen J.A. for the Federal Court of Appeal summarized the facts of the case as follows:
In dismissing the appellant's appeal from the Registrar's decision expunging the trade mark in issue the judge summarized the affidavit evidence before her as follows:
The affidavit states that the appellant, during the period of January 8, 1990, through January 8, 1992, conducted its transportation business in Canada utilizing trucks and trailers bearing the trade mark CT CENTRAL TRANSPORT & Design as shown in the photographs attached as ex. B to the first affidavit. These photographs were taken by the deponent personally on or about July 3, 1992, at the appellant's location in Windsor, Canada ...
She went on to characterize this evidence as a "bald assertion" and to find that it did not show a nexus between the trade mark shown on the trucks and trailers appearing in the photographs and the performance of the services in question.
Mantha & Associes /Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3d) 354 at 355, per Hugessen J.A. (FCA).
[14] The Federal Court of Appeal concluded in Mantha, supra, that it was an error to call the statements in the affidavit a "bald assertion." Furthermore, the Federal Court of Appeal clarified that such assertions of facts showing use is all that is required as evidence in a Section 45 proceeding:
We are all of the view that the judge erred. In a sense all statements in affidavits are "bald assertions"; what this court has found to be inadequate in s. 45 proceedings are assertions of use (a matter of law) as opposed to assertions of facts showing use: see Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62, [1981] 1 F.C. 679, 34 N.R. 39. On the judge's own summary of the evidence, it clearly showed facts establishing use, i.e., that the appellant "conducted its transportation business in Canada utilizing trucks and trailers bearing the trade mark". That is all that was required.
Mantha & Associes /Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3 d) 354 at 355, per Hugessen J.A. (FCA).
[15] In the present appeal, the Applicant has filed a second affidavit, Stinson Affidavit 2, which clarifies assertions of fact showing use of the Trade-Mark during the relevant period.
[16] The Applicant's position is that Stinson Affidavit 2 clearly provides that the Trade-Mark was affixed to the front of a store in the City of Toronto, in the Province of Ontario during the relevant period. This use is supported by the photograph attached as Exhibit lA to Stinson Affidavit 2 and the sales figures showing the use of the Trade-Mark.
[17] Stinson Affidavit 2 further provides that the Trade-Mark has been affixed to the front of the store as shown in Exhibit 1A of Stinson Affidavit 2 since 1999 and has remained on the store front continually until after June 19, 2000.
[18] Finally, Stinson Affidavit 2 asserts as a fact that the Trade-Mark was used in Canada in association with retail store services and that the sales in Canada for these services for 1999 and 2000 were in excess of $1,000,000.00 in each year.
[19] The Applicant says that the assertions of fact in Stinson Affidavit 2 show use of the Trade-Mark during the three years preceding June 19, 2000, the date of the Section 45 Notice. Hence, the Trade-Mark has been in use during the relevant period and, as such, should be maintained.
Respondent
[20] The Respondent points out that the word "use" is defined under s. 2 of the Act as follows:
| "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;
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« 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.
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[21] Section 4 of the Act stipulates when a Trade-Mark is deemed to be used:
| 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) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
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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 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.
(2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l'exécution ou l'annonce de ces services.
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[22] A trade-mark is defined under s. 2 of the Act as follows:
| (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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[23] Section 45 of the Act requires the registered owner of a trade mark, to whom a Notice has been sent by the Registrar, to furnish evidence showing, with respect to each of the wares or services specified in the registration, whether the trade mark in question 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.
[24] As to the meaning of the words "use in Canada" in s. 45 of the Act, Dubé J. held as follows in the case of Lindy v. Registrar of Trade Marks (1981), 57 C.P.R. (2d) 127 at 131 (F.C.T.D.):
Reading the Act as a whole, the conclusion is inescapable, in my view, that "use in Canada" means use by the registered owner or a registered user.
[25] This reasoning has been approved by the Federal Court of Appeal in the case of Star-Kist Foods Inc. v. Canada (Registrar of Trade-Marks) (1988), 20 C.P.R. (3d) 46 at 52 (F.C.A.) and followed by Cullen J. in the case of Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1992), 43 C.P.R. (3d) 473 at 482 (F.C.T.D.).
[26] The Federal Court of Appeal in the case of Plough, supra, at 66 set out what evidence is required in a s. 45 proceeding as follows:
What s-s. 44(1) requires is an affidavit or statutory declaration not merely stating but "showing", that is to say, describing the use being made of the trade mark within the meaning of the definition of trade mark in s. 2 and of use in s. 4 of the Act. The subsection makes this plain by requiring the declaration to show with respect to each of the wares and services specified in the registration whether the trade mark is in use in Canada and if not the date when it was last used and the reason for the absence of such use since that date. The purpose is not merely to tell the Registrar that the registered owner does not want to give up the registration but to inform the Registrar in detail of the situation prevailing with respect to the use of the trade mark so that he, and the Court on appeal, can form an opinion and apply the substantive rule set out in s-s. 44(3). There is no room for a dog in the manger attitude on the part of registered owners who may wish to hold on to a registration notwithstanding that the trade mark is no longer in use at all or not in use with respect to some of the wares in respect of which the mark is registered.
[27] As to the standard of review applicable to an appeal of a decision made under s. 45 of
the Act, the Respondent points out that the Federal Court of Appeal held as follows in the case of Molson Breweries, a Partnership, supra, at 196:
...Even though there is an express appeal provision in the Trade-Marks Act to the Federal Court, expertise on the part of the Registrar has been recognized as requiring some deference. Having regard to the Registrar's expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar's findings of fact or the exercise of his discretion, the Trial Division judge must come to his or her own conclusion as to the correctness of the Registrar's decision.
[28] The evidence filed by the Applicant in response to the Section 45 Notice consisted of Stinson Affidavit 1. In that affidavit, Mr. Stinson is identified as having been the Director of Finance of Venator Group Canada Inc. since December 14, 1998.
[29] In paragraph 5 of Stinson Affidavit 1, there is an allegation that the Trade-Mark has been used in Canada for many years, was in use at the date of the Section 45 Notice, and continues to be used at the time of the execution of the affidavit in association with retail store services. Filed as exhibit A to the affidavit was a photograph of a store above whose entrance are displayed several signs bearing trade marks and only one of which bears the Trade-Mark.
[30] The Hearing Officer correctly concluded that the evidence was unclear as to whether, during the relevant period of time, the Trade-Mark was displayed at the entrance of the store in the manner shown in the photograph, and hence that the registration in question should be expunged.
[31] The Respondent takes the position, however, that the Hearing Officer erred in concluding that retail store services were provided by the registrant during the relevant period. This is because there is no mention made in paragraph 5 of Stinson Affidavit 1 as to which entity had made use of the Trade-Mark in Canada for many years, which entity was using the Trade-Mark at the date of the Section 45 Notice, and which entity continues to use the Trade-Mark in association with retail store services.
[32] Moreover, Stinson Affidavit 1 is silent as to which entity was operating the retail outlet illustrated in the photograph in Exhibit A.
[33] Paragraph 6 of Stinson Affidavit 1 is likewise silent as to which entity made the sales referred to in that paragraph.
[34] On January 16, 2003, in support of this appeal, the Applicant filed Stinson Affidavit 2. Apart from the corporate information set out in paragraph 2 regarding Venator Group Canada Retail Ltd. and its relationship with Venator Group Canada Inc., the Respondent says this second affidavit is a repetition of the allegations contained in Stinson Affidavit 1, except for the information contained in paragraphs 4 and 5.
[35] In paragraph 4 of Stinson Affidavit 2, the affiant asserts that the Trade-Mark had been affixed to the front of the store illustrated in the photograph in Exhibit 1A, and that such store was located in the City of Toronto, in the province of Ontario. No information is provided as to when the photograph was taken and by whom.
[36] The precise location of the store is not given; nor is there any allegation that the store was owned or operated by the registrant, Venator Group Canada Inc., or its licensee.
[37] While paragraph 5 of Stinson Affidavit 2 asserts that the sign bearing the Trade-Mark that appears over the entrance of the retail store illustrated in the photograph has been in place since 1999 and has remained on the store front continually until after June 19, 2002, there is no mention, once again, as to who owned or operated the store during the stated time period. In addition, it is unclear as to when precisely in 1999 such sign was affixed to the store front.
[38] The Respondent says that, as was the case with paragraph 6 of Stinson Affidavit 1, there is no mention made in paragraph 6 of Stinson Affidavit 2 as to which entity made the sales for the years 1999 and 2000.
[39] The Respondent also points out that the name of the Applicant, or its predecessor in title, does not appear anywhere in paragraphs 5 and 6 of Stinson Affidavit 1, nor in paragraphs 4, 5 and 6 of Stinson Affidavit 2.
[40] Hence, the Respondent asserts that neither Stinson Affidavit 1 or Stinson Affidavit 2 establishes any nexus between the sign appearing above the entrance of the retail store illustrated in the photograph and the Applicant.
[41] Accordingly, neither affidavits demonstrates use of the Trade-Mark by the registered owner on June 19, 2000, the date of the Section 45 Notice, or at any time during the three years preceding such Notice. The expungement of the Trade-Mark should therefore be maintained.
[42] While additional evidence has been filed in this appeal, the Respondent says that such evidence would not have materially affected the Registrar's findings of fact or the exercise of her discretion because such additional evidence does not establish the use of the Trade-Mark by the registered owner during the relevant period of time.
ANALYSIS
[43] In my opinion, the dispute between the parties in this Application comes down to a single issue of whether use of the Trade-Mark during the relevant period can be attributed to the registered owner.
[44] Stinson Affidavit 2, which was produced by the Applicant in response to the concerns raised in the Registrar's Decision, addressed those concerns. Use of the Trade-Mark is shown during the relevant period. However, Stinson Affidavit 2 does not show who the user of the Trade-Mark was. No connection is made between the owner of the Trade-Mark and the store where it is used in Toronto, and there is no explicit connection between the sales figures provided in paragraph 6 and the owner of the Trade-Mark.
[45] It is easy to see how this may have come about. In her Decision, the Hearing Officer specifically found that "It is true that from the sales figures, it appears that retail store services were provided by the registrant during the relevant period." The Hearing Officer is referring here to the sales figures contained in paragraph 6 of Stinson Affidavit 1, which reads as follows:
The current sales of the Trade-Mark WOOLWORTH in association with the retail store services are as follows:
1999 - in excess of $1,380,399 2000 - February 1 to Dec. 2 in excess of $1,200,000 (sic)
[46] There is no specific mention in the Decision that the sales figures can be attributed to the registrant in some way. The Hearing Officer merely assumes that this is the case. This is probably because Mr. Stinson, in paragraph 1 of Stinson Affidavit 1, says that he is aware of the facts in the affidavit as a result of his personal knowledge and his access to the records of Venator Group Canada Inc. where he was Director of Finance when he swore Stinson Affidavit 1 on December 15, 2000. Venator Group Canada Inc. was recorded on the register as the registered owner of the Trade-Mark at the time the Section 45 Notice was issued.
[47] The Respondent takes the position that the problems associated with attribution of use are not resolved by Stinson Affidavit 2. I agree in the sense that Stinson Affidavit 2 gives us no more specifics regarding the nexus between the Toronto store where the Trade-Mark appears, the sales figures and the registered owner, Venator Group Canada Inc.. Mr. Stinson, in Stinson Affidavit 2, merely says that he has knowledge of the facts he swears to "either from the records of Northern Group Retail Ltd. [a successor company to Venator Group Canada Inc.] or from my knowledge as Director of Finance of Venator Group Canada Inc. ... the then owner of Registration No. TMA 368,206 covering the trade-mark WOOLWORTH."
[48] The Applicant says that the issues raised by the Respondent concerning the attribution of use are "mere technicalities" and that paragraph 1 of both Stinson affidavits makes it clear that when the store and the sales figures are mentioned they are to be attributed to Venator Group Canada Inc.. Further, the Applicant says that if the Respondent had concerns about the attribution of use issue, he could have cross-examined Mr. Stinson on his affidavits and/or he could have taken s. 57 proceedings. The Applicant feels that, since Stinson Affidavit 2 was a response to the concerns in the Decision (which did not refer to any problem about connecting use of the Trade-Mark to the owner) the matter should not now be raised as part of this appeal.
[49] In my view then, the issue for the Court is whether there is a sufficient nexus in the Stinson affidavits between use of the Trade-Mark and the registered owner and, if there is not, whether that defect renders the Decision unreasonable and subject to being quashed.
[50] I see no substantial disagreement between the parties concerning the applicable law. Both parties refer the Court to the usual cases concerning s. 45 proceedings and the need to avoid "evidentiary overkill" so that "use must be shown, not examples of all use" (i.e. Union Electric Supply Co. Ltd., supra, at 57). The Respondent emphasises the proviso in Lindy, supra, at 131 and its progency to the effect that "'use in Canada' means use by the registered owner or registered use." I see no disagreement over relevant principles, but the difficulty is to decide how they should apply in the present situation where the connection between use and the registered owner is not really clear and where, although it didn't seem to bother the Hearing Officer, there appears to be nothing in the Stinson affidavits that deals with the matter directly.
[51] The case law establishes the limited onus that rests on the owner of a trade-mark of proving use to a sufficient degree to avoid expungement in a s. 45 proceedings. The cases also establish that the affidavit evidence does not have to be perfect. In Gesco Industries Inc., supra, Wetston J. said that "evidence filed with the Registrar must establish facts from which a conclusion of 'use' or 'use in the normal course of trade' would follow as a logical inference from the facts established." Similarly, in Keepsake Inc., supra, at 61, Cattanach J. had the following to say about the affidavit in that case:
While the affidavit before the registrar and the additional affidavit before the Court could have been more explicit nevertheless on balance there is evidence from which it can be inferred that the rings were sold in the normal course of trade and that the transactions in question were arm's length commercial transactions.
[52] So it seems clear that, at least when looking at use issues, reasonable inferences can be drawn from less than perfect affidavits. Hence, I see no reason why they should not be drawn in a situation such as exists in the case at bar where use is established but the issue is whether it is use by the registered owner. I do, however, believe that considerable care must be taken when addressing such inferences because of the fact that it is axiomatic that use should be "by the registered owner" or use by some party, such as a licencee, that will qualify as such. Because of the ease with which they can be fudged in an affidavit, I am also of the view that this is not an issue where facts should be taken for granted.
[53] On the facts before me, the Registrar had clear evidence from the register that Venator Group Canada Inc. was the registered owner of the Trade-Mark at the material time. In Stinson Affidavit 1, the Registrar was told that the depondent was aware of the facts in the affidavit because he was a Director of Finance of the registered owner and so had personal knowledge and access to the records of the registered owner.
[54] However, the basis for asserting use during the relevant period is that the Trade-mark has "been affixed to the front of the store shown in Exhibit 1A hereto" during the relevant period and the Trade-mark has been used in association with retail store service during the relevant period that have generated specific sales amounts.
[55] Because the Applicant chose to demonstrate use during the relevant period by reference to a specific store at a specific location and by reference to sales figures, it was particularly crucial in this case to connect the registered owner of the Trade-Mark to those specific facts. In my opinion, the gap in the Stinson affidavits that we have to jump to connect such use with the registered owner is too great. It is such a fundamental issue that the omission to deal with it looks suspicious. It would have been so easy to place the issue beyond doubt in a context where the need to connect use with ownership is pretty elementary. I do not think this can be overlooked as a mere technicality. To do so would be to encourage fudging in the most basic of evidentiary requirements under s. 45. I agree with the Applicant that there is no particular kind of evidence that must be provided in response to a Section 45 Notice and that all the registrant must do is "establish a prima facie case of use" (See Borden & Elliott v. Cara Operations Ltd. (1997), 82 C.P.R. (3d) 115 at 120), but I do not believe that the evidence in this case establishes prima facie use "by the registrant."
[56] Consequently, although the additional evidence in the form of Stinson Affidavit 2 may well have materially affected the Registrar's Decision (because the Registrar saw no problem with the nexus between use and the Registered Owner), when viewed against a standard of reasonableness simpliciter, I believe the Decision was unreasonable because, on the basis of the evidence before the Registrar, no nexus was established between the claimed uses during the relevant period and the Trade-Mark owner.
ORDER
THIS COURT ORDERS that
1. The Appeal is dismissed. The Trade-Mark shall be expunged.
2. Costs of the Appeal are awarded to the Respondent.
FEDERAL COURT
NAMES OF SOLICITORS AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-2094-02
STYLE OF CAUSE: FOOTLOCKER GROUP CANADA INC.
formerly VENATOR GROUP CANADA INC.
v.
R. STEINBERG
and
THE REGISTRAR OF TRADE-MARKS
PLACE OF HEARING: OTTAWA, ONTARIO
DATE OF HEARING: MARCH 30, 2004
REASONS FOR ORDER & ORDER OF THE HONOURABLE MR.JUSTICE RUSSELL
DATED: May 18, 2004
APPEARANCES:
MS. ROSE-MARIE PERRY, Q.C. FOR THE APPLICANT
MR. RICHARD UDITSKYFOR THE RESPONDENT,
R. STEINBERG
SOLICITORS ON THE RECORD:
GOWLING LAFLEUR HENDERSON LLP FOR THE APPLICANT
OTTAWA, ONTARIO
MENDELSOHN FOR THE RESPONDENT,
MONTRÉAL, QUÉBECR. STEINBERG
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