T-474-96
BETWEEN:
SHARP KABASHIKI KAISHA doing
business as Sharp Corporation,
Appellant,
and
88766 CANADA INC.,
Respondent.
REASONS FOR JUDGEMENT
NOËL, J.:
This is an appeal from the decision of the Registrar of Trade Marks dated December 28, 1995 ordering that the Appellant's trademark registration be amended pursuant to Section 45(5) of the Trade Marks Act (herein the "Act").
The Appellant is the registered owner of trademark Registration No. 211,365 for SHARP for use in association with various wares.1 At the request of the Respondent, a Notice issued on January 20, 1993 pursuant to Section 45 of the Act in respect of the said Registration requiring evidence of use of the SHARP trademark for the wares "watches and clocks".
In response to the Notice, a sworn statement was filed on behalf of the Appellant in support of its position that the SHARP registered trademark for the two wares in issue had been used as contemplated by Section 45. In it, the Respondent asserted that the Appellant had sold a full range of electronic products which have the display of time either as a primary or secondary function. The products listed were clock radios, wallet size telephone directories with schedule alarm and anniversary alarm systems, travel clock calculators, talking clock calculator combinations, talking clocks, telephone directory schedules and clocks with QWERTY style keyboard, horizontal wallet size telephone directories with schedule alarm, anniversary alarm systems, electronic organizers, scientific memo masters, electronic cash registers, personal palmtop computers, facsimile machines, portable CD stereo systems, video cassettes recorders, camcorders and microwave ovens. Evidence of sales of some of these products including $9,000,000 of talking clocks, electronic calculators with clock function, and electronic organizers with clock function was also produced for the period from April 1, 1992 to March 31, 1993.
This evidence was placed before the Registrar of Trade Marks who, after hearing the submissions of the parties during the course of an oral hearing, ruled that the trademark in question ought to be amended to delete the words "watches and clocks" on the ground that the Appellant had failed to demonstrate its use in relation to these wares. This conclusion is based on four findings, namely:
| a) That while both clocks and watches are timepieces or horological instruments, they each are separate and distinct items; |
| b) That the Appellant had failed to show any possible use in association with "watches"; |
| c) That insofar as "clocks" are concerned, use in association with products which possess a clock function cannot be regarded as use in association with "clocks"; |
| d) That while "talking clocks" are "clocks", they cannot be regarded as "clocks" for purposes of registration TMS 211,365 because they are specifically designated as "talking clocks" in the list of wares. |
The Appellant challenges these findings. In so doing it relies primarily on a prior decision given in the course of a Section 45 proceeding, in which a similar issue had to be decided. In it, Hearing Officer Herzig, acting on behalf of the Registrar ruled as follows:
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The requesting party argues that wares such as VCRs and microwave ovens, even if they possess clock functions, are not sold as clocks. I readily agree with those submissions. However, I must disagree that clock radios do not fall within the dictionary definition of a clock, namely "a device for indicating the passage of time". A clock radio is purchased as an alternative to the conventional alarm clock and as such its primary purpose is to function as a clock not as a radio. The requesting party also indicates that "watches" are different from "clocks", and that there is no evidence of use of the subject mark in association with "watches". In its written submission, the registrant refers to the McGraw-Hill Dictionary of Scientific and Technical Terms for the definition of watch as "a small timepiece of a size convenient to be carried on the person". The registrant's evidence clearly shows use of the subject mark in association with "a pocket-sized digital clock", suitable for athletes to carry in a pocket, which, inter alia, announces elapsed time. |
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I have no difficulty in finding that the evidence filed is sufficient to meet the requirements of Section 45. Therefore I conclude that the subject mark is in use in Canada in association with clocks and watches and that consequently its registration ought to be maintained as it appears on the register.2 |
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The Registrar in the present proceedings dealt with this decision as follows:
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The registrant points out that this matter has already been decided by the Registrar in a decision of Section 45 proceedings involving the instant trade-mark dated August 30, 1990. He states that in that decision it was found that use in respect of "watches and clocks" was sufficient to meet the requirements of Section 45 and Section 45 was satisfied there (as here) in respect of sales of "clock radios, travel clock calculators, electronic organizers with built-in clock and calendar, talking clocks and pocket size digital clocks. |
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Concerning the registrant's first submission that if use is shown either with "clocks" or "watches", such use would be sufficient to maintain the registration for both "watches and clocks". I would point out that Section 45 clearly requires use to be shown in association with each of the wares. The leading jurisprudence in this case is the Federal Court of Appeal's decision in John Labatt Ltd. v. Rainier Brewing Col., (1984), 80 C.P.R.(2d) 288. Consequently, for the registration to be maintained for "clocks" or for "watches", the registrant is required to show use with clocks and with watches as separate items. While I agree that clocks and watches may be generally categorized as timepieces or horological instruments, a clock is defined in Webster's New Collegiate Dictionary as a "device other than a watch for indicating or measuring time..." (my emphasis). Consequently, while both may fall within the same broad category i.e. timepieces or horological instruments, they each are separate items. With respect to this definition of the word "clock", counsel for the registrant stated that times have changed and it does not apply anymore. However, the registrant has not provided any evidence to that effect. |
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Concerning use in association with "clocks", I agree with the requesting party that any use shown in association with "electronic calculators with clock function, electronic organizers with clock function, personal palmtop computers, facsimile machines, CD stereo systems, camcorders, video cassette recorders, and microwave ovens", even if they possess clock function, is not use in association with "clocks". In the Section 45 decision rendered on August 30, 1990, Hearing Officer Herzig's opinion concerning wares such as VCR's and microwave ovens was that, even if they possess clock functions, they are not sold as clocks. I totally agree. |
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Concerning sales of "talking clocks", I am satisfied that model CT-670 as it appears in the 1991 catalogue (photocopies of which are attached as Exhibit 2) is a "clock" not a "watch" particularly in view of the definition of the word clock found in Webster's New Collegiate Dictionary that a clock is a "device other than a watch". Consequently, in view of this definition, I arrive at a conclusion different from that arrived at by Hearing Officer Herzig in the August 30, 1990 decision.3 |
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The decision goes on to hold that because "talking clocks" are separately designated in the registrant's list of wares, they cannot be regarded as the same category of wares as "watches and clocks". It was pointed out that to hold otherwise would render the "talking clocks" designation superfluous, a result which could be avoided by ascribing to the category of "clocks and watches" a meaning which excludes therefrom wares more properly described as "talking clocks". As, according to the Registrar, no use had been demonstrated with regard to "clocks" other than "talking clocks", the deletion was ordered.
I do not believe that any significant issue arises from this decision otherwise than with respect to "talking clocks".
By virtue of Section 45, the Appellant was required to demonstrate use of its trademark in the normal course of trade at any time during the two years preceding the date of the Notice (i.e. January 20, 1991 to January 20, 1993). In the event that such use could not be demonstrated, Section 45 required the Appellant to establish the date of last usage and the reason for the absence of use since that date.
In its statutory declaration, the Appellant did allege that it has "for many years" sold a range of products which have, as a primary or secondary function the display of time, including clock radios. However, as was pointed out by the Registrar in his decision, the only items4 for which evidence of use for the period contemplated by Section 45 was produced were electronic calculators with clock function, electronic organizers with clock function, personal palmtop computers, facsimile machines, CD stereo systems, camcorders, video cassette recorders and microwave ovens, all with clock and/or time keeping function.
There is no doubt in my view that the Registrar correctly held that these items could not be labelled as "clocks or watches" on the basis of their time keeping function as it is clearly incidental to the distinct prime use which they each have.
With respect to "talking clocks", the Registrar held that they were "clocks" and not "watches":
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... particularly in view of the definition of the word clock found in Webster's New Collegiate Dictionary that a "clock is a device other than a watch". Consequently, in view of this definition, I arrive at a conclusion different from that arrived at by Hearing Officer Herzig....5 |
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In the earlier decision, Hearing Officer Herzig had relied on the McGraw-Hill Dictionary of Scientific and Technical Terms and the definition of the word "watch" which it contained6 to hold that a "pocket size digital clock" with a configuration similar to the "talking clock" now in issue, was a "watch".
The question as to whether these devices are "watches" or "clocks" is not easily answered. However I do not believe that this question needs to be answered here because irrespective of whether "talking clocks" are "watches" or "clocks" they were in this instance made the subject of a specified registered use by reference to its commercial description which excludes insofar as talking clocks are concerned the more general use covered by the words "clocks and watches".
The Registrar had noted this at p. 4 of the Decision where it is said by reference to the Respondent's arguments ... as "talking clocks" are separately designated in the registrant's list of wares, they cannot be regarded in the same category of merchandise as "watches and clocks". However, the Registrar later pursued his analysis on the basis that the only category thereby eliminated was "clocks" and proceeded to determine that "talking clocks" are not "watches". It seems clear that whether "talking clocks" are "watches" or "clocks" is irrelevant as "talking clocks" were made the subject of a registered use framed specifically by reference to such device.
It is the Appellant who gave "talking clocks" its commercial description and who amended its trademark registration by adding thereto the use which this description spells out. If it did so, it must be because it considered the use of its trademark with respect to "talking clocks" to be different from such use with respect to "clocks and watches" as the case may be. Manufacturers have an interest in widening the scope of the trademark protection offered by the Act as their product lines expand, and the use to which their products can be put multiply. However, in so doing, they are specifying different uses which if established cannot save the registration of previously registered uses unless these prior uses can be shown to persist on their own account.7
It follows that in this instance, the Registrar correctly held that in order for the Appellant to maintain its registered use for the wares "clocks and watches" it had to show use of such wares otherwise than by reference to "talking clocks". That it has failed to do.
The appeal if accordingly dismissed.
Marc Noël
Judge
Ottawa, Ontario
February 6, 1997
__________________
1 WARES/MARCHANDISES: (1) Radio receivers, television receivers. (2) Tape recorders and stereo record players and receivers. (3) Electronic calculating machines. (4) Kerosene stoves. (5) Microwave ovens. (6) Watches and clocks. (7) Electronic cash registers. (8) Electronic copiers. (9) Electronic cash registers. (10) Clock radios, speaker systems, cassette tape recorders, and hi-fi stereo receivers. (11) Talking clocks. (12) Electronic programmable calculators. (13) Electronic typewriters. (14) Compact disc players, and LCD's. (15) IC's. (16) Compound semiconductor laser diodes, and copying machines. (17) Video cassette recorders. (18) Video color camers. (19) Facsimile machines and personal computers. (20) Video cameras/recorders. (21) Electronic whiteboards. (22) EL displays, namely electroluminescent displays. (23) Card radios (with speakers). (24) Radios with clock functions. (25) Office computers; electronic tuners; hybrid IC's; LCD monitors; EL display monitors, namely monitors using electroluminescent displays; PIF units, namely, electronic TV tuners incorporating a PIF circuit; up/down tuners; DBS tuners, namely tuners incorporated in radio frequency components for satellite receiving systems; FM demodulators; low noise block down converters; remote control units; photocouplers; infrared emitting diodes; photodiodes; blue sensitive photodiodes; rotary encoders; encoder disks; optical fiber data links; power transistor modules; LED's; color scanner printers; telephones.
2 Decision of the Registrar of Trade Marks dated August 30, 1990, Appeal Record, Vol. I. An appeal from this decision was launched, but remained pending at the time of the hearing.
3 Reasons for Decision, Appeal Record, Vol. 1.
4 Aside from talking clocks.
5 Reasons for Decision, Appeal Record,Vol. 1.
6 "A small timepiece of a size convenient to be carried on the person".
7 Compare John Labatt Ltd. v. Rainier Brewing Col. et al., 80 C.P.R.(2d) 228, at p. 236 per Stone J.A.: "It is apparent that "beer", "ale", "porter" and "stout" are related wares, belonging to a single family of brewery products. ... Specification of the wares other than beer suggests, in the absence of proof to the contrary, that each is indeed different in some degree from the others and from "beer" itself, as otherwise the words "ale, porter, stout, malt beverages, malt syrup and malt extracts" are superfluous. ... In this case, the respondent has not shown that the trademark RAINIER is in use in Canada with respect to all the wares specified. It has shown only that the mark is in use with respect to "beer". The fact that the other wares specified fall within a group of wares that are in some way related to beer is not sufficient, in my view, to preserve the registration intact. That could only be done if the respondent had also shown that the trademark is in use in Canada with respect to each of these other wares."
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