Wells' Dairy, Inc. v. U L Canada Inc., docket T-2007-96

        

Date: 20000614

Docket: T-2007-96

     IN THE MATTER OF The Trade Marks Act

     R.S.C. 1985, Chapter T-13

     - and -

     IN THE MATTER OF Section 45 Proceedings

     regarding the Trade Marks: BOMB POP,

     Reg. No. TMA 211,371; BOMB POP, JR.,

     Reg. No. TMA 214,372; BOMBE POP, Reg.

     No. TMA 214,552; and BOMBE POP, JR.,

     Reg. No. 214,285

BETWEEN:

     WELLS" DAIRY, INC.

     Appellant

     - and -

     U L CANADA INC.

     Respondent

     REASONS FOR JUDGMENT AND JUDGMENT

HENEGHAN J.

[1]      This is an appeal from a decision of the Registrar of Trade-marks ("Registrar") relative to a proceeding commenced under section 45 of the Trade-marks Act , R.S.C. 1985, c. T-13 as amended.

[2]      The decision in question was made by D. Savard, Senior Hearing Officer, on July 8, 1996. The decision stems from a matter which was commenced by way of notice under section 45 of the Act. Section 45 of the Act reads:

45. (1) The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trade-mark 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.

45. (1) Le registraire peut, et doit sur demande écrite présentée après trois années à compter de la date de l'enregistrement d'une marque de commerce, par une personne qui verse les droits prescrits, à moins qu'il ne voie une raison valable à l'effet contraire, donner au propriétaire inscrit un avis lui enjoignant de fournir, dans les trois mois, un affidavit ou une déclaration solennelle indiquant, à l'égard de chacune des marchandises ou de chacun des services que spécifie l'enregistrement, si la marque de commerce a été employée au Canada à un moment quelconque au cours des trois ans précédant la date de l'avis et, dans la négative, la date où elle a été ainsi employée en dernier lieu et la raison de son défaut d'emploi depuis cette date.

[3]      Pursuant to this provision, on December 15, 1993, a notice was issued by the Registrar requiring U L Canada Inc. to show use of the following trade-marks:

Bomb Pop (Reg. No. TMA 211, 371)

Bomb Pop, Jr. (Reg. No. TMA 214, 372)

Bomb Pop (Reg. No. TMA 214, 552)

Bombe Pop, Jr. (Reg. No. TMA 214,285)

[4]      Following the issue of the notice, to avoid expungement of the four trade-marks, U L Canada Inc. had to show use of the trade-marks. U L Canada Inc. had to demonstrate that use of the trade-marks occurred between December 15, 1990 and December 15, 1993 (the "relevant period"). The use of the trade-marks had to be use of the marks as they were registered. Moreover, use had to be shown with respect to each of the wares specified in the registration. The trade-marks in question were registered for the following wares:

"(1) Frozen confections on a stick. (2) Concentrates and flavourings for making frozen confections on a stick, handle sticks and bags for frozen confections".

The Decision of the Senior Hearing Officer

[5]      On March 21, 1996, the matter was heard before a Senior Hearing Officer ("Hearing Officer"). The decision was rendered on July 8, 1996.

[6]      The Hearing Officer found that U L Canada Inc. sold various elements to its licensees and that the licensees created the finished product. The Hearing Officer held that the evidence showed sales by the Registrant of constituent elements (concentrates, cartons, etc...) and sales by the licensees of the final product with the trade-marks, during the relevant period.

[7]      Wells" Dairy argued that it was the predecessor-in-title"s name that appeared on the invoices, cartons and bags. Despite this, the Hearing Officer accepted the argument that these were old stock as U L Canada Inc. had only acquired the trade-mark on February 1, 1993 and the invoices were all dated 1993. The Hearing Officer also found that it was reasonable for the Registrant to want to dispose of the packaging. Consequently, it was accepted that the trade-marks were in use during the relevant period of December 15, 1990 to December 15, 1993.

[8]      In terms of the use shown by the licensees, the dairies, the Hearing Officer concluded that this was use in compliance with Section 50 of the Act. The Hearing Officer referred to the licensing notice which was found to satisfy section 50(2).

[9]      The Hearing Officer then looked at the question of whether use shown with the wares was use of the trade-marks as registered. For the trade-marks BOMB POP, JR, and BOMBE POP, JR., the Hearing Officer was satisfied that on both the packaging and the invoices, these marks were being used in association with concentrates and flavourings for making frozen confections on a stick. However, the Hearing Officer was not satisfied that the marks were used in association with the wares "handle sticks" pursuant to 4(1) of the Act. Thus, the reference in the registration to the wares, handle sticks, was deleted.

[10]      With respect to the marks BOMB POP and BOMBE POP, the Hearing Officer found evidence of use of the marks more ambiguous. The Hearing Officer noted that all the packaging displayed the trade-marks with the letters JR and accordingly, concluded that U L Canada Inc., the Registrant, had not shown use in association with the wares sold to its licensees, the dairies. Despite this, the Hearing Officer noted that the packaging from the licensee "Natrel Inc." showed the words BOMB POP and BOMBE POP more prominently but remarked that the "JR" was still present.

[11]      As the words BOMB POP and BOMBE POP stood out from the other words, the Hearing Officer analysed whether it could be said that use had been shown in association with frozen confections on a stick. As a result of the predominance of the words BOMB POP and BOMBE POP, the public perception test was applied to determine whether use of the trade-marks on the Natrel Inc. could be considered use of the BOMB POP and BOMBE POP trade-marks. Since the words BOMB POP and BOMBE POP stood out from the "JR.", it was determined that the public perception would be that the BOMP POP and BOMBE POP trade-mark had been used.

[12]      Natrel Inc. purchased packaging from U L Canada Inc. and as a result, the Hearing Officer was prepared to conclude that Natrel Inc. would have used such packaging for the frozen confections during the relevant period.

[13]      In sum, the Hearing Officer concluded that the marks BOMB POP, JR and BOMBE POP, JR. were in use during the relevant period in association with all of the wares except "handle sticks". As for BOMB POP and BOMBE POP, the Hearing Officer concluded that these marks were used in association with the wares "frozen confections on a stick" but not with the remaining wares.

The Appellant"s Arguments

[14]      The Appellant has appealed the aforementioned decision of the Hearing Officer and submits a number of grounds for this appeal. According to the Notice of Appeal, the Applicant has framed the grounds in the following manner:             

1.      The Hearing Officer erred in finding that the amendments to Section 45 which came into force January 1, 1996 should be applied to these proceedings which were commenced on behalf of the Appellant in 1993.

2.      The Hearing Officer erred in concluding that the transfer of the trade marks occurred in February 1993 based on the date when the documents were executed or based on the date when the transfers were recorded.

3.      The Hearing Officer erred in concluding that the Registrant sells concentrates and flavourings, as well as handle sticks, cartons, and bags for frozen confections to its licensees since the licence has been shown to exist.

4.      The Hearing Officer erred in finding that the evidence shows "sales having been made by the licensees of frozen confections on a stick" since there is no proof of the existence of any licence or licensees.

5.      The Hearing Officer erred in finding that "although I agree that Mr. Dotson ought to have commented on the matter, I am prepared to accept the registrant"s argument that the invoices are old stock" since there is no evidence of that fact, and the fact is not communicated to the public.

6.      The Hearing Officer erred in finding that sales by the registrant"s predecessor in title was "proper use" since it is not proved that such sales were made by the predecessor in title.

7.      The Hearing Officer erred in concluding that use by licensees complies with Section 50 because there is no proof that the alleged licensees are in fact licensees, nor that any such notice occurred during the period when Section 50(2) of the Act was enforced (sic) in June.

8.      The Hearing Officer erred in concluding that the trade marks "BOMB POP, JR." and BOMBE POP, JR." were being used in association with concentrates and flavouring and frozen confections, but were not used in association with "handle sticks".

9.      The Hearing Officer erred in concluding that use of the trade marks "BOMB POP, JR." and "BOMBE POP, JR." constitute use of the trade marks "BOMB POP" and "BOMBE POP".

10.      The Hearing Officer erred in concluding that Natrel Inc. would have used such packaging for frozen confections during the relevant period since it is required that the registrant "show"such use.

11.      The Hearing Officer erred in finding that the trade marks "BOMB POP" and "BOMBE POP" were used in association with frozen confections but not used in association with other wares.

12.      The Hearing Officer erred in accepting evidence of use by licensees without requiring that the registrant:

(a) show that a licence agreement exists;

(b) that the parties identified in the exhibits are parties to the said agreements;

(c) that U L Canada Inc. is the licensor and exercises control over the use of the subject trade.

ANALYSIS

Standard of Review

[15]      Before embarking on an analysis of the decision rendered pursuant to section 45 of the Act, it is necessary to determine the standard of review applicable to the present appeal.

[16]      This appeal is an appeal of a decision made under section 45 of the Act and has been brought before the Federal Court of Canada pursuant to sections 55 and 56 of the Act. The relevant portions of section 55 and 56 read as follows:

55. The Federal Court has jurisdiction to entertain any action or proceeding for the enforcement of any of the provisions of this Act or of any right or remedy conferred or defined thereby.

55. La Cour fédérale peut connaître de toute action ou procédure en vue de l'application de la présente loi ou d'un droit ou recours conféré ou défini par celle-ci.

56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.

56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois.

[17]      Until recently, the standard of review applicable to an appeal arising from a decision of a Registrar was summarized by Justice Strayer in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. et al.¹:

...in my view the court should be reluctant to reverse the finding of the registrar or chairman unless it is clearly satisfied that he came to the wrong conclusion on the facts or unless there is significant new evidence placed before the court that was not before the registrar. 2

Similarly, Justice Denault wrote in Mitac Inc. v. Mita Industrial Co. Ltd.³:

... in cases such as these, the onus on the appellant is two-fold. First, the appellant must establish that the hearing officer erred in his appreciation of the facts or in his interpretation of the law. It is well-established that such a decision carries considerable weight and is not to be lightly set aside.4

[18]      However, in two recent cases, the standard of review of the decision of a Registrar was reformulated in order to encompass the pragmatic and functional analysis which has surfaced in administrative law. In Garbo Group Inc. v. Harriet Brown & Co.⁵, Justice Evans applied the pragmatic and functional test to determine the standard of review applicable to a Registrar"s decision with regard to confusion. Justice Evans wrote:

To conclude, it is my opinion after weighing these factors that, despite the inclusion in the Trade-marks Act of an untrammelled right of appeal and the right to adduce additional evidence, a considerable degree of deference is called for on the part of the appellate Court when reviewing the Registrar's finding of confusion, provided at least that no significant new evidence has been adduced on a factual issue and it is not alleged that an error of law has been committed.

Given, in particular, the expertise of the Registrar on the question of confusion, the reasons for vesting decision-making in the Registrar, and the nature of the rights at stake, "unreasonableness simpliciter", which was said in Southam, supra, to be synonymous with "clearly wrong", is in my opinion the most appropriate of the three standards of review currently available.

I am fortified in reaching this conclusion by the similar views expressed by Lutfy J. in Young Drivers, supra, even though on the facts of that case he did not find it necessary to reach a definitive conclusion on the issue.__He said:

If the issue of confusion can properly be characterised as a matter of mixed law and fact, the standard of review may be further down the spectrum from correctness.__The special knowledge and expertise of the Registrar may require greater deference, where no new evidence is adduced on appeal.__The determination on appeal may be closer to whether the Registrar's decision is "clearly wrong" or "unreasonable".6

[19]      Moreover, in Molson Breweries v. John Labatt Ltd., [2000] F.C.J. No. 159, A-428-98 (February 3, 2000), Justice Rothstein found:

I think the approach in Benson & Hedges v. St. Regis and in McDonald v. Silcorp are consistent with the modern approach to standard of review. 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.7

[20]      Having regard to the aforementioned decisions as well as the fact that no new evidence was adduced in the present appeal, I am of the opinion that reasonableness simpliciter is the standard of review applicable to the present appeal.

Section 45 & Establishing Use

[21]      Having established the appropriate standard of review, it is important to reiterate what the Registrant, in this case U L Canada Inc., is required to prove in order to avoid expungement under section 45 of the Act.

[22]      In order to avoid the expungement of the trade-marks, U L Canada Inc. had to demonstrate use of the marks, as registered, in the period between December 15, 1990 and December 15, 1993 with respect to each of the wares specified in the registration. Without this proof, the trade-mark registration was liable to be expunged or amended accordingly.

[23]      In order to demonstrate use, a party must show assertions of fact showing use as opposed to mere assertions of use.⁸ In Plough (Canada) Ltd. v. Aerosol Fillers Inc⁹, Chief Justice Thurlow indicated:

What subsection 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 section 2 and of "use" in section 4 of the Act.10

[24]      As section 2 of the Act states that "use" means use as described in section 4 of the Act, I am mindful of the definition of use found in section 4 which states:

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.

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.

[25]      The decision of the Court in Union Electric Supply Co. v. Registrar of Trade Marks¹¹ states that "evidentiary overkill" is not required by the registered owner. The threshold for use is not a stringent one. For example, in Osler, Hoskin, & Harcourt v. United States Tobacco Co. et al.¹², Justice Richard, as he then was, succinctly stated:

Evidence of a single sale, whether wholesale or retail, in the normal course of trade, can suffice so long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived to protect the registration of the mark.13

The Evidence

[26]      The affidavit of Mr. D. Dotson was filed in response to both the notice given under section 45 of the Act as well as for the present appeal. Mr. Dotson is the Director of Business Development for the Popsicle Industries, a division of U L Canada Inc. Prior to November 1988, he had been the Director of Marketing for Popsicles Industries Ltd., the predecessor company of U L Canada Inc.

[27]      Mr. Dotson filed an affidavit in respect of each of the trade-marks referenced in the Registrar"s Notice of December 15, 1993. The affidavits provide information about the use of the four trade-marks by U L Canada Inc. which carries on business in Canada under the trade names "Popsicle Industries" and "Les Industries Popsicle".

[28]      According to Mr. Dotson, the trade-marks in issue were used by U L Canada Inc. since at least as early as 1975. Mr. Dotson states that use of the trade-marks is evidenced by the cartons, the bags for frozen confections and a series of invoices which show sales of concentrates, wraps and cartons by U L Canada Inc. He also provides data showing gross sales of the concentrates and flavourings for making frozen confections on a stick, handle sticks and bags for frozen confections in association with the four trade-marks.¹⁴

[29]      Mr. Dotson deposes to the existence of a licensing programme between U L Canada Inc. and its predecessors-in-title and various licensees throughout Canada. He explains that through the licensing programme, the dairies manufacture under licence frozen confections in association with the trade-marks. U L Canada Inc. supplies the component parts and the technical expertise, and the dairies manufacture the finished product. Mr. Dotson specifies that the final product is produced subject to the control and specifications of U L Canada Inc. for product size, shape, taste, ingredients, production, packaging, handling and promotion.¹⁵

[30]      Mr. Dotson also states that frozen confections on a stick bearing the trade-marks have been sold since at least 1975 and continue to be sold throughout Canada to grocery and convenience stores. He refers to a bundle of sample invoices provided to Popsicle Industries by some named licensed dairies. These invoices record the sale of frozen confections to retail outlets.¹⁶

[31]      Finally, he provides information about the gross sales in retail dollars and units of confectionary products for the years 1991 to 1993, inclusive. He indicates that these gross sales refer to sales in association with the trade-marks.¹⁷

Application to the Facts

[32]      Following a careful review of the evidence submitted as well as the grounds for appeal on which the present appeal is founded, I am of the opinion that the Hearing Officer did not err in finding that the trade-marks BOMB POP, JR and BOMBE POP, JR were in use during the period between December 15, 1990 and December 15, 1993 in association with all the wares with the exception of handle sticks.

[33]      In relation to the trade-marks BOMB POP and BOMBE POP, I have also concluded that the Hearing Officer did not err in concluding that the trade-marks were in use in association with the wares frozen confections on a stick but not with any other wares.

[34]      In order to demonstrate use of the trade-marks during the relevant period in relation to the wares frozen confections on a stick, the Registrant, U L Canada Inc. relies on the existence of a licensing arrangement between itself and the dairies.

Licensing Agreement

[35]      Section 50 of the Act stipulates when use of a trade-mark by a licensee accrues to a registered owner:

50. (1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the wares or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner. (2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.

50. (1) Pour l'application de la présente loi, si une licence d'emploi d'une marque de commerce est octroyée, pour un pays, à une entité par le propriétaire de la marque, ou avec son autorisation, et que celui-ci, aux termes de la licence, contrôle, directement ou indirectement, les caractéristiques ou la qualité des marchandises et services, l'emploi, la publicité ou l'exposition de la marque, dans ce pays, par cette entité comme marque de commerce, nom commercial " ou partie de ceux-ci " ou autrement ont le même effet et sont réputés avoir toujours eu le même effet que s'il s'agissait de ceux du propriétaire. (2) Pour l'application de la présente loi, dans la mesure où un avis public a été donné quant à l'identité du propriétaire et au fait que l'emploi d'une marque de commerce fait l'objet d'une licence, cet emploi est réputé, sauf preuve contraire, avoir fait l'objet d'une licence du propriétaire, et le contrôle des caractéristiques ou de la qualité des marchandises et services est réputé, sauf preuve contraire, être celui du propriétaire.

[36]      In the present appeal, the principal argument raised by the Appellant was that the Hearing Officer erred in concluding that a licence existed between U L Canada Inc. and the dairies. Absent a licence, use of the trade-marks by the dairies in association with frozen confections on a stick would not accrue to U L Canada Inc.

[37]      The Appellant, Wells" Dairy, disputes the existence of a licensing programme between U L Canada Inc. and the licensees based on the fact that no details, names or exhibits have been submitted to substantiate the existence of a licensing arrangement.

[38]      There is no evidence of a written licence agreement between U L Canada Inc. and its licensees. No authorities have been cited in support of any argument that a written licence agreement is required nor does the Act appear to require a written agreement. Evidence of control by an owner of a registered trade-mark over a user of that trade-mark can support the existence of a licence agreement.

[39]      The point was considered by the Federal Court of Appeal in TGI Friday"s of Minnesota Inc. v. Registrar of Trademarks¹⁸ where Justice Stone addressed the application of section 50 of the Act and said:

...the existence of an oral licence and control by Mr. Lindy, the appellant argues, may be reasonably inferred from the evidence. Mr. Lindy remained in the office of president and the major shareholder of the company up to the date of the s. 44 notice during which period the company carried on the bar and restaurant operation s in association with which the mark was used. In our view, an inference may be drawn from these facts that the company used the mark under an oral licence from Mr. Lindy or under an arrangement that was tantamount to an oral licence and that the mark remained under his direct or indirect control. The effect was to permit the company to use the trademark in the manner that it was used in the company"s operations.19

[40]      The same reasoning applies here. There was sufficient evidence before the Hearing Officer to support the conclusion drawn concerning a licence agreement between U L Canada Inc. and the licensed dairies who made and sold the wares in association with the trade-marks as registered.

[41]      The affidavit of Mr. Dotson states in paragraph 13:

My Company and its predecessors-in-title have, for many years, licensed some major dairies in each of the Canadian provinces to produce frozen confections in association with the BOMB POP trade-mark. My Company continues to license these dairies and has always exercised straight quality control over the products being the BOMB POP trade-mark., All such products are produced in accordance with my Company"s specifications for product size, shape, taste, ingredients, production, packaging, handling and promotion. My Company supplies its licensees with concentrates and flavourings, the basic flavour ingredients, the wraps, the bags and the handle sticks and in most cases, the technical know-how in the manufacture of the licensed products. The finished product is manufactured by the licensee.

[42]      Therefore, having regard to all the evidence submitted, particularly the affidavit of Mr. Dotson, I am satisfied that the dairies are licensees of U L Canada Inc. and that these dairies produce frozen confections in association with the trade-marks. I am also satisfied that U L Canada Inc. exercises direct or indirect control of the character or quality of the wares such that use of the trade-marks by the licensees has the same effect as use of the trade-marks by U L Canada Inc.

[43]      In reaching this conclusion, I am also mindful of the existence of subsection 50(2) of the Act which reads:

50(2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the wares or services is under the control of the owner.

50(2) Pour l'application de la présente loi, dans la mesure où un avis public a été donné quant à l'identité du propriétaire et au fait que l'emploi d'une marque de commerce fait l'objet d'une licence, cet emploi est réputé, sauf preuve contraire, avoir fait l'objet d'une licence du propriétaire, et le contrôle des caractéristiques ou de la qualité des marchandises et services est réputé, sauf preuve contraire, être celui du propriétaire.

This section came into force on June 9, 1993 and supports the conclusion that use by the dairies of the trade-marks was in fact licensed used.

[44]      Exhibit "C" to the affidavit of Mr. Dotson shows "paks" displaying the trade-marks. On these paks, there is writing which indicates that the frozen confections on a stick were "Manufactured in Canada under licence from Popsicle Industries". Moreover, there is also an invoice dated August 16, 1993 showing a sale of one of these "paks" to Brookfield Ice Cream, one of the licensed dairies. In light of the above, this evidence can be used to show use of the trade"marks during the relevant period.

[45]      It should be noted that the invoice dated August 16, 1993 shows the name of the Registrant"s predecessor in title as does some of the packaging. In light of the fact that U L Canada Inc. only acquired the trade-mark on February 1, 1993, I am satisfied that these invoices and packaging are old stock, as it seems reasonable that the Registrant, U L Canada Inc., would want to dispose of the old stock.

[46]      Furthermore, Exhibits "A" and "B" show that the names "Popsicle Industries" and "Les Industries Popsicles" are business or identification names registered to the corporation U L Canada Inc.

[47]      As a result of the fact that the packages indicate that the frozen confections were manufactured under licence, subsection 50(2) is applicable. Pursuant to section 50(2), where public notice is given of the fact that use of the mark is a licensed use and the owner of the mark is identified, such use is a valid licensed use. In order to rebut this presumption, it must be proved that the use is not a licensed use.

[48]      Given that the relevant period in which the registered owner of the trade-marks, U L Canada Inc., had to show use was December 13, 1990 to December 13, 1993 (under the current version of section 45) or at or immediately prior to the date of notice, December 13, 1993 (under the pre-1993 version of section 45), I do not think the Hearing Officer erred in applying Section 50(2) nor do I think the Registrar erred in determining that the dairies were licensees of U L Canada Inc.

[49]      Accordingly, I am of the opinion that the Hearing Officer did not err in relying on use of the trade-marks by the dairies, as licensees, in determining that the trade-marks had been used during the relevant period in association with frozen confections on a stick.

[50]      The Appellant also argues that the Hearing Officer erred in concluding that use of BOMB POP, JR and BOMBE POP, JR trade-marks by one of the dairies, Natrel Inc., amounted to use of the BOMB POP and BOMBE POP trade-marks.

[51]      However, having reviewed the exhibits, I am satisfied that use of the BOMB POP, JR trade-mark on the Natrel Inc. packaging amounts to use of the BOMB POP trade-mark. My conclusion also applies for use of the BOMBE POP, JR trade-mark for use of the BOMBE POP trade-mark.

[52]      At first blush, the Hearing Officer"s conclusion did seem tenuous. However, upon closer examination, I have found that the conclusion of the Hearing Officer must stand. The "JR" is shown in much smaller script than the words BOMB POP on the English packaging and BOMBE POP on the French packaging. Accordingly, I agree that the public would perceive use of the trade-marks as being use of the BOMB POP and BOMBE POP trade-marks.     

[53]      I refer to the decision of the Federal Court of Appeal in United Artists Corp. v. Pink Panther Beauty Corp.²⁰ where Linden, J.A., writing for the majority said at p. 257-258:

What is important is that the trade-mark be associated in the minds of the public with the goods produced by the trade-mark owner. It is the association of a trade-mark with a particular source which is the key to understanding the rights protected by the Act.21

[54]      In addition, I have cross-referenced the exhibits and based on the evidence, I am satisfied that Natrel Inc. would have used such packaging during the relevant period.

[55]      Thus, based on the evidence, I cannot conclude that the Hearing Officer erred in concluding that Natrel Inc., one of the dairies, used the BOMB POP and BOMBE POP trade-marks during the relevant period.

[56]      Consequently, for the foregoing reasons, I am of the opinion that the Hearing Officer did not err in finding that U L Canada Inc. used the trade-marks BOMB POP, JR and BOMBE POP, JR during the relevant period in association for all the wares for which the trade-marks were registered, with the exception of handle sticks. I am also of the opinion that the Hearing Officer did not err in determining that the trade-marks BOMB POP and BOMBE POP were in use during the relevant period in association with the wares frozen confections on a stick. Accordingly, the appeal is dismissed with costs.

     "E. Heneghan"

     J.F.C.C.

__________________

¹(1987), 14 C.P.R. (3d) 133 (F.C.T.D.).

²Ibid. at 135.

³(1992), 40 C.P.R. (3d) 387 (F.C.T.D.).

⁴Ibid. at 391-392.

⁵(1999) 3 C.P.R. (4th) 224 (F.C.T.D.).

⁶Ibid. at 234-235.

⁷Ibid. at para. 51.

⁸Central Transport Inc. v. Mantha & Associates (1995), 64 C.P.R. (3d) 354 (F.C.A.).

⁹[1981] 1 F.C. 679 (F.C.A.).

¹⁰Ibid. at 684.

¹¹[1982] 2 F.C. 263 (F.C.T.D.).

¹²(1997), 77 C.P.R. (3d) 475 (F.C.T.D.).

¹³Ibid. at 484.

¹⁴Dotson Affidavit at paras. 7-11.

¹⁵Dotson Affidavit at paras. 12-13.

¹⁶Dotson Affidavit at paras. 14-15.

¹⁷Dotson Affidavit at para. 16.

¹⁸ (1999), 241 N.R. 362 (F.C.A.).

¹⁹Ibid. at 366.

²⁰(1998), 80 C.P.R. (3d) 247 (F.C.A.).

²¹Ibid. at 257-258.