Ridout & Maybee v. Sealy Canada Ltd., docket T-1412-98

Date: 19990705

Docket: T-1412-98

OTTAWA, ONTARIO, JULY 5, 1999

PRESENT:      THE HONOURABLE MR. JUSTICE LEMIEUX

BETWEEN:

     RIDOUT & MAYBEE

     Applicant

     - and -

     SEALY CANADA LTD./LTÉE.

     Respondent

     ORDER

     For the reasons given, the appeal is dismissed with costs.

    

J U D G E

Date: 19990705

Docket: T-1412-98

BETWEEN:

     RIDOUT & MAYBEE

     Applicant

     - and -

     SEALY CANADA LTD./LTÉE.

     Respondent

     REASONS FOR ORDER

LEMIEUX J.:

A.      INTRODUCTION

[1]      The matter before the Court concerns an appeal, pursuant to section 56 of the Trade-mark Act, R.S. 1985, c. T-13, (the "Act") from a decision of the Registrar of Trade-marks (the "Registrar") dated May 12, 1998, involving the "use it or lose it" provision found in section 45 of that Act.

[2]      Subsection 45(1) of the Act provides as follows:

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]      Subsection 45(3) provides that a trade-mark is "liable to be expunged" from the Registry of Trade-marks if it "appears" to the Registrar that the trade-mark was not used in Canada at any time during the three year period immediately preceding the date of the notice and the absence has not been due to "special circumstances that excuse the absence of use".

[4]      The central issue in this case is whether the absence of use by the registered owner of a registered trade-mark is excused due to special circumstances.

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B.      BACKGROUND

[5]      Sealy Canada Ltd. ("Sealy") manufactures household furniture in Canada. Since 1982, Sealy has been the owner of the trade-mark FANTASY registered for use in association with mattresses and box springs, convertible sofas, stationary sofas and chairs and adjustable beds.

[6]      On October 10, 1996, at the request of the law firm and trade-mark agents, Ridout and Maybee, the Registrar issued a subsection 45(1) notice to Sealy requiring Sealy to show use of its trade-mark FANTASY or special circumstances excusing non-use and this during the period October 10, 1993 to October 10, 1996.

[7]      Sealy, in response to the Registrar's notice, filed the affidavit of Craig Dunlop, its Senior Vice-President and Chief Operating Officer since 1984. Mr. Dunlop, in his affidavit, said Sealy had, since November 26, 1982, used its trade-mark FANTASY by having it marked on labels permanently affixed to each unit of the FANTASY line of mattresses and box springs which it manufactured and sold.

[8]      Mr. Dunlop said in his affidavit that at the beginning of 1985, Sealy sold its FANTASY line of mattresses and box springs exclusively to the T. Eaton Company ("Eaton's") for retail sales through Eaton's Department Stores and that such sales, worth $5,000,000, occurred "on a regular and substantial basis during the period from January, 1985 through November, 1993".

[9]      Mr. Dunlop went on to say this in paragraphs 7, 8 and 9 of his affidavit:

7.          Following termination of sales of the FANTASY product line to Eaton's in November, 1993, Sealy attempted to locate another retail partner to which it could exclusively supply the FANTASY product line. Such efforts were on-going during the period January 1994 to August, 1996.

8.          Sealy's efforts to locate another retail partner included ongoing new product development activities, and, additionally continuous talks with Eaton's with a view to re-establishing the previous retail partnership.

9.          Sealy's attempts to locate an ongoing exclusive retailer for its mattresses and box springs under the trade-mark FANTASY were hampered by the general downturn in the economic conditions experienced during the early 1990's. Given the economic uncertainties of this time, there was a drop in consumer demand for items having relatively high ticket prices, including larger items of housewares such as mattresses and box springs, including those manufactured by Sealy. Accordingly, Sealy was not able, until recently, to interest a retailer in carrying a line of Wares under the trade-mark FANTASY.

[10]      In paragraph 10 of his affidavit, Mr. Dunlop indicates that in August 1996, Sealy entered into negotiations with The Brick Warehouse Limited ("The Brick") for the manufacture and supply to The Brick of its FANTASY mattresses and box springs. Mr. Dunlop says in September 1996, The Brick made an oral commitment "to purchase FANTASY mattresses and box springs from Sealy as a regularly featured bedding line at The Brick stores". Mr. Dunlop said that actual orders were placed for the period October 1996 through December 1996. Mr. Dunlop appended as an exhibit to his affidavit The Brick purchase orders. The first purchase order is dated October 10, 1996 calling for delivery on October 28, 1996, to The Brick in Edmonton, of a quantity of the Sealy FANTASY line mattresses and box springs.

[11]      Mr. Dunlop dealt with the special circumstances relating to the absence of use of its FANTASY trade-mark during the relevant period in the following terms:

12.          That, Sealy does not now, and never has, at any relevant time intended to abandon the trade-mark FANTASY.

13.          That the period of non-use of the trade-mark FANTASY between November 1993 and August 1996 was beyond the control of Sealy, and resulted from the temporary inability to find a retailer for the Wares manufactured and sold with the trade-mark FANTASY. That such inability to locate a retailer occurred despite Sealy's earnest continuing attempts to locate such a retailer, such attempts being hampered by the economic conditions in existence in Canada during the period of non-use of the trade-mark.

14.          That Sealy has recommenced its use of its trade-mark FANTASY by means of the sales of mattresses and box springs bearing the trade-mark FANTASY to The Brick for retail sale.

[12]      Under section 45 of the Act, Mr. Dunlop's affidavit is the only affidavit which the Registrar can receive and cross-examination is not permissible.

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C.      THE REGISTRAR'S DECISION

[13]      The Registrar defined the relevant period to be between October 10, 1993 and October 10, 1996 in this case.

[14]      The Registrar's decision effectively concerns only Sealy's FANTASY mattresses and box springs. The Registrar observed that Mr. Dunlop's affidavit did not speak to the other wares for which FANTASY was also registered, namely, convertible sofas, stationary sofas and chairs, and adjustable beds holding:

... I am unable to find any evidence showing use of the trade-mark in association with such wares at any time and the evidence does not show that the absence of use with such wares has been due to special circumstances that excuse the absence of use.

[15]      The Registrar, with respect to FANTASY mattresses and box springs went on to find absence of use during the relevant period in the following terms:

On reviewing the evidence as a whole, I find the evidence insufficient in establishing use of the registered trade-mark at any time during the requisite period. Although Mr. Dunlop has alleged use for the period 1985 to November 1993, and has submitted that during such period sales amounted to approximately $5,000,000, it is unclear whether sales were actually made in October and November 1993, which are the only months of that period that fall within the relevant period. Mr. Dunlop chose to be vague by not providing a breakdown of sales per year, or the sales figures for the months of October and November 1993, or a clear statement that sales had been made during those two months. Further he has not attached any invoices bearing dates during those two months which would have permitted me to conclude that sales of such wares had been made during those particular months.

[16]      The Registrar referred to the decision of Cattanach J. in Aerosol Fillers Inc. v. Plough (Canada) Ltd., 45 C.P.R. (2d) 194 (F.C.T.D.) at pages 198-9; affirmed (1980), 53 C.P.R. (2d) 62 (F.C.A.), on the duty of the Registrar in deciding section 45 matters to ensure that reliable evidence is received and that ambiguous statements in an affidavit are given no weight. He found the Dunlop affidavit to be ambiguous, unclear and unsubstantiated as to whether sales of mattresses and box springs associated with the trade-mark FANTASY were made during the relevant period and he interpreted the ambiguity against Sealy.

[17]      Having found absence of use in the relevant period, the Registrar turned to the issue of whether Sealy had shown that such absence of use had been due to special circumstances. He applied the test of "special circumstances excusing non-use", set out by the Federal Court of Appeal in Registrar of Trade-marks v. Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d) 488, and formulated that test in the following terms:

Three very important criteria must be considered. First, the length of time during which the trade-mark has not been used; secondly, it must be determined whether the registered owner's reasons for not using its mark were due to circumstances beyond his control; thirdly, one must find whether there exists a serious intention to shortly resume use.

[18]      With respect to the first criteria, the time within which the trade-mark has not been used, the Registrar found this:

Regarding the first criterion, the evidence is not very clear as to when the mark was last used (prior to the date of the notice). The registrant has stated at paragraph 6 of his affidavit that during the time period (January 1985 - November 1993) sales of mattresses and box springs associated with the trade-mark amounted to $5,000,000.00. In the circumstances, I am prepared to accept that the trade-mark may have been used up to sometime in 1993.

[19]      The Registrar's ruling on the issue whether Sealy's absence of use was due to circumstances beyond Sealy's control is expressed in these words:

Regarding the second and third criteria, the termination of the registrant's relationship with the Eaton's company (the exclusive retailer) in November 1993 is the reason for the stoppage of use. It is clear that such termination would have a disruptive effect on the use of the trade-mark and would constitute circumstances beyond the control of the registrant that would excuse a certain period of non-use. Mr. Dunlop has explained that steps were taken by the registrant to resume use and that efforts in an attempt to locate another exclusive retail partner were ongoing during the period January 1994 to August 1996 and that such attempts were hampered by market conditions during the 1990's. Nevertheless it did enter into negotiations with a retailer (The Brick) in August of 1996 and arrived at a verbal agreement in September 1996, all prior to the notice date. Given the termination of sales in 1993 with Eaton's and the time it may take a registrant to locate and then enter into negotiations with a new retailer, I find that it can be concluded that the registrant seems to have acted promptly to correct the situation.

[20]      The Registrar found that the criteria of serious intention to shortly resume use was met by Sealy having successfully negotiated an agreement with The Brick prior to the end of the relevant period. The Registrar concluded, in view of Mr. Dunlop's evidence, that the absence of use of the trade-mark in association with FANTASY mattresses and box springs has been shown to have been due to special circumstances that excuse the absence of use. As a result, the wares, mattresses and box springs, were maintained on the trade-mark register. Other FANTASY wares were expunged.

D.      ANALYSIS

     (a) Standard of Review

[21]      Subsection 56(1) of the Act provides for an appeal to this Court:

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.

[22]      Subsection 56(5) of the Act reads:

56. (5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.

56. (5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi.

[23]      In this case, Sealy did not provide any further affidavit.

[24]      While an appeal under section 56 of the Act has been characterized as a trial de novo because the registered owner is entitled to adduce new evidence, this Court has signalled that an element of restraint was appropriate because the Registrar exercises a judicial or quasi judicial role and applies his or her experience to trade-mark decision-making.

[25]      Strayer J. in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. et al. (1987), 14 C.P.R. (3d) 133 (F.C.T.D.) at page 135, expressed this restraint in the following way:

... 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.

[26]      Teitelbaum J. in 88766 Canada Inc. v. George Weston Ltd. (1987), 15 C.P.R. (3d) 260 (F.C.T.D.) at 267, summarized the scope of an appeal from the Registrar under section 56 of the Act in these words:

It is not the function of the court, in hearing an appeal from a registrar to set aside the registrar's decision because the court may have come to a different conclusion than the registrar.

Only if the appellant can show and the appellant has the burden to do so, that the registrar has failed to properly interpret the facts before him or has failed to consider the facts before him, should the court interfere in the registrar's decision.

The court may interfere in the registrar's decision if new evidence, of a substantial nature and by way of affidavit or statutory declaration, is placed before the court to show that the evidence is such that the registrar came to a wrong conclusion.

     (b)      The appellant's argument

[27]      The anchor to the appellant's argument is the Federal Court of Appeal's decision in Plough (Canada) Ltd. v. Aerosol Fillers Inc., (supra). In that case, the registered owner's responding affidavit simply said this:

2. THAT Plough (Canada) Limited is currently using and was on September 7, 1978 using the registered trade mark PHARMACO in the normal course of trade in Canada in association with pharmaceutical preparations.

[28]      The Federal Court of Appeal sustained the Trial Judge and the Registrar holding that the registered owner's response affidavit in the case was a mere bald statement which did not satisfy the statutory requirement of section 45 of "showing... 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". [emphasis mine]

[29]      Thurlow C.J., on behalf of the Court, said that what section 45 required was not merely stating use but describing the use being made of the trade-mark within the meaning of "use" in section 4 of the Act; the registered owner was required to inform the Registrar in detail of the situation prevailing with respect to the use of the mark so that the Registrar and the Court on appeal can form an opinion and apply the substantive rule in section 45(3). He added this at page 66 of the reported case:

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.

[30]      Thurlow C.J. found the Plough Canada affidavit defective; the statute, he said, required facts to be shown not an expression of the registered owner's opinion. Moreover, it was important to examine the affidavit from the point of view of what it did not say.

[31]      Appellant's counsel before me made a line by line analysis of Mr. Dunlop's affidavit and pointed to ambiguities, lack of detail and lack of supporting documentation. Indeed, appellant's counsel argued, in this case, the Registrar himself had held Mr. Dunlop's affidavit in respect of use during the October/November 1993 period to be so ambiguous and unclear that he could not find use.

     (c)      The purpose of section 45 of the Act

[32]      In Plough Canada, (supra), Thurlow C.J. adopted the reasons of Jackett P. (as he then was) in Broderick & Bascom Rope Co. v. Registrar of Trade Marks, 53 C.P.R. (2d) at pages 276-77:

What s. 44 [now section 45] contemplates is a simple procedure for clearing out of the Register entries of trade marks which are not bona fide claimed by their owners as active trade marks. Clearly, all the Registrar can do is decide whether the evidence supplied by the registered owner or his failure to supply evidence makes it appear that the trade mark is used or that there are excusing circumstances. That is the question that s. 44 opens up. The Registrar's decision is not a decision that finally determines anything except whether the entry is liable to be expunged under s. 44 or not.

[33]      In Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 13 C.P.R. (3d) 289, McNair J. of this Court described the purpose and the scope of section 45 in the following way:

It is well established that the purpose and scope of s. 44 [now section 45] is to provide a simple, summary and expeditious procedure for clearing the register of trade marks which are not bona fide claimed by their owners as active trade marks. The procedure has been aptly described as one for removing "deadwood" from the register. The section does not contemplate a determination on the issue of abandonment but rather simply places on the registered owner of the trade-mark the onus of furnishing evidence of use in Canada or special circumstances excusing non-user.

     (d)      The special circumstances test

[34]      In the appeal by Ridout & Maybee to this Court, Sealy did not file a further affidavit to show use of FANTASY mattresses and box springs during the period October/November 1993. The Registrar, as mentioned above, had found Mr. Dunlop's affidavit unclear in this respect such that he could not find use during the October/November 1993 period. The inference I draw from the lack of a further Sealy affidavit is that there was no use of the trade-mark FANTASY in respect of mattresses and box springs during the October/November 1993 period and there was no use during the relevant period (October 1993 to October 1996). Moreover, Sealy did not challenge the Registrar's finding of non-use excusing special circumstances in respect of other FANTASY wares which the Registrar had expunged.

[35]      The question before me then is whether special circumstances have been made out excusing non-use. As previously stated, the Registrar applied the special circumstances test as expressed by the Federal Court of Appeal in Registrar of Trade-marks v. Harris Knitting Mills Ltd., (supra), which Rouleau J. in Lander Co. Canada Ltd. v. Alex E. Macrae & Co. (1993), 46 C.P.R. (3d) 417 at 420 formulated:

The applicable test, when dealing with special circumstances justifying non-use of a trade mark, can be found in Registrar of Trade Marks v. Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d) 488 (F.C.A.). Three very important criteria must be considered. First, the length of time during which the trade mark has not been in use; secondly, it must be determined whether the registered owner's reasons for not using its trade mark were due to circumstances beyond his control; thirdly, one must find whether there exists a serious intention to shortly resume use.

[36]      It is useful to recall the salient elements of Pratte J.A.'s reasons for judgment in Harris Knitting Mills, (supra). As I see it, Pratte J.A. made these points:

(a)      it is impossible to define precisely the circumstances in subsection 44(3) [now 45(3)] which may excuse non-use;

(b)      the circumstances of non-use must be special; that is circumstances which do no exist in the majority of cases involving non-use;

(c)      the reason for non-use cannot be a voluntary one on the part of the registered owner; non-use must be beyond the control of the owner; the registered owner must show at least serious inconvenience for not continuing the use of the mark;

(d)      the length of use and probability of continued non-use is a factor;

(e)      special circumstances are an exception to the general rule that trade-mark which is not used should be expunged.

E.      APPLICATION TO THIS CASE

[37]      How were the Harris Knitting Mills factors applied in this case?

[38]      In terms of the first factor, length of non-use, Mr. Dunlop, in paragraph 5 of his affidavit, said that sales of Sealy's FANTASY product line to Eaton's occurred on a regular and substantial basis during the period from January, 1985 through November, 1993. Mr. Dunlop did not attach as an appendix to his affidavit labels or invoices to establish use in this period. The Registrar found that Mr. Dunlop had stated that during the time period (January 1985 - November 1993) sales of mattresses and box springs associated with the trade-mark amounted to $5,000,000 and concluded as follows:

In the circumstances, I am prepared to accept that the trade-mark may have been used up to sometime in 1993.

[39]      I agree with counsel for the appellant that Mr. Dunlop's affidavit was lacking in the necessary details to establish precisely when non-use by Sealy occurred in respect of its FANTASY mattresses and box springs and that the Registrar was in error in assuming or speculating that the FANTASY mark may have been used "up to sometime in 1993". Subsection 45(1) is clear. The registered owner must show "the date when it was last so in use". Mr. Dunlop's affidavit did not do so. The Registrar had no idea when precisely use ceased. His finding on this point was mere conjecture. He erred.

[40]      The second required test is that non-use must be beyond the control of the registered owner. Here, I also agree with counsel for the appellant that Mr. Dunlop's affidavit does not establish that non-use was beyond Sealy's control. Mr. Dunlop's affidavit speaks to the termination of the exclusive retail partnership with Eaton's in November 1993 and Sealy's efforts to find another retail partner for continuous talks with Eaton's with a view to re-establishing the previous retail partnership, efforts hampered by economic downturn.

[41]      In my view, Mr. Dunlop's affidavit does not meet the test in Plough Canada, (supra). It lacks details and specificity; what it does not say is also important. Mr. Dunlop's affidavit does not say, for example, who terminated (Sealy or Eaton's) the exclusive arrangement and the reasons for the termination. Mr. Dunlop's affidavit does not say why Sealy could not continue to market FANTASY mattresses and box springs to other retail outlets during the period of non-use. Three years or more of non-manufacturing and sale is a very long period for a manufacturer. Mr. Dunlop's affidavit does not give details of on-going new product development activities nor does it detail the nature of the continuous talks with Eaton's or another new retail partner. Sealy does not say if it continued to manufacture and sell mattresses and box springs under a product line other than FANTASY.

[42]      In Harris Knitting Mills, (supra), Pratte J.A. said this at page 493:

It is essential, as well, to know to what extent the absence of use is due solely to a deliberate decision on the part of the owner of the mark rather than to obstacles beyond his control. It is difficult to see why an absence of use due solely to a deliberate decision by the owner of the mark would be excused.

[43]      The onus was on Sealy to so demonstrate. In my view, Sealy did not establish that its decision not to use the FANTASY mark was not a voluntary one. In this respect, this case is similar to the decision of Richard J. (as he then was) in Edwin Co. Ltd. v. 176718 Canada Inc. (1995), 60 C.P.R. (3d) 464 (F.C.T.D.).

[44]      In my view, in terms of the second factor, the Registrar erred in finding that Sealy's non-use was beyond its control. He did not have before him sufficient evidence to enable him to make that determination.

[45]      The third factor is intention to resume use shortly. In this case, there is more; there is actual resumption of use through sales to The Brick. These sales, however, occurred after the relevant period. Actual purchase orders were appended to Mr. Dunlop's affidavit. Orders were placed by The Brick to Sealy for FANTASY mattresses and box springs on October 18, 1996, eight days after October 10, 1996, with delivery scheduled for October 28, 1996. The Registrar so found based on Mr. Dunlop's affidavit.

[46]      In my view, Sealy succeeds on this point because of the recent decision of the Federal Court of Appeal, dated January 22, 1999, in Oyen, Wiggs, Green & Mutala v. Pauma Pacific Inc. et al., court file A-603-97. In that case, the Registrar found as a special circumstance, the fact that the registrant Pauma Pacific was taking active steps prior to the date of the notice to resume use of the trade-mark and that the evidence showed that sales in the normal course of trade were made one month after the date of the notice. In the Pauma case the Registrar found as follows:

In my view, these are important factors to take into consideration when considering special circumstances particularly when the absence of use is less than three years. Consequently, this satisfied me that at the date of the notice, the trade-mark was not "deadwood" for "biscuit mix". I have arrived at this conclusion keeping in mind the intent and purpose of section 45.

[47]      The Registrar's finding was sustained by Jerome A.C.J. at 76 C.P.R. (3d) 48. The Federal Court of Appeal, in its January 22, 1999 decision said this:

On the other hand, while it seems that the mere expression of an intention to reactivate could hardly be seen as sufficient to bring into play paragraph 45(3) of the Act, we are not prepared to dispute the position of the Registrar that the actual realisation of that intention by the taking of concrete steps prior to the notice could be sufficient.

[48]      Mr. Dunlop's affidavit said that in August 1996, prior to the Registrar's notice in this case, Sealy entered into negotiations with The Brick, that negotiations resulted in an oral agreement by The Brick in September 1996 to purchase FANTASY mattresses and box springs from Sealy as a regularly featured bedding line at The Brick stores. Mr. Dunlop's affidavit appended purchase orders from The Brick and, as exhibit C, appended representative samples of labels carrying the FANTASY trade-mark for mattresses and box springs.

[49]      Counsel for the appellant says length of non-use was not established, there was no documentation substantiating the Sealy/Brick Warehouse negotiations, and there were no actual invoices from Sealy to The Brick after October 10, 1996 and that is the best evidence. I am satisfied, as was the Registrar, that there was sufficient evidence The Brick did, in fact, order FANTASY mattresses and box springs and that Sealy has recommenced its use of its trade-mark FANTASY by means of the sale of mattresses and box springs bearing the trade-mark FANTASY through The Brick for retail sale in October of 1996.

[50]      In coming to this conclusion, I have in mind the purpose and intent of Parliament in section 45 of the Act. That purpose is to expunge from the trade-mark register trade-marks which have not been used and there is no reasonable prospect will be used. This is not a case, as I see it, of a registered owner after receiving a section 45 notice from the Registrar scurrying to find a buyer to establish an intention to use the mark. The evidence in this case satisfies me Sealy's relationship with The Brick is substantial and genuine in terms of FANTASY mattresses and box springs. In my view, Parliament did not intend a mark should be expunged in these circumstances.

[51]      Counsel for the appellant referred me to the case of Belvedere International Inc. v. Sim & McBurney et al. (1993), 53 C.P.R. (3d) 522 where Teitelbaum J. dealt with the situation of resumed use which he considered an important factor in favour of maintaining the mark but which, in the circumstances before him, he discounted. In my view, the Belvedere case is distinguishable from the case at bar. In that case, Belvedere attempted to maintain its registration for an entire line of hair products by resuming use of only three of them. Sealy, in this case, did not seek to maintain its FANTASY mark for other wares than FANTASY mattresses and box springs. The FANTASY mark was expunged in respect of those wares. As I see it, the Belvedere case involved a colourable resumption of use not found present in this case.

[52]      For these reasons, the appeal is dismissed with costs.

    

    

     J U D G E

OTTAWA, ONTARIO

JULY 5, 1999