Austin Nichols & Co. v. Cinnabon, Inc., docket T-2748-96

     T-2748-96

BETWEEN:

     AUSTIN NICHOLS & CO., INCORPORATED

     doing business under the assumed name

     Orangina International Company

     Appellant

     - and -

     CINNABON, INC.

     Respondent

     REASONS FOR JUDGMENT

ROULEAU, J.

     This is an appeal pursuant to section 56 of the Trade-marks Act, R.S. 1985, c. T-13, from a decision of the Registrar of Trade-marks to expunge trade-mark registration no. TMA 321,610.

     The appellant registered the trade-mark SWIRL DESIGN in Canada on December 12, 1986. By letter dated May 22, 1996, the respondent requested that the Registrar issue a notice to the appellant pursuant to subsection 45(1) of the Act requiring it to furnish evidence of use of the trade-mark in Canada during the three year period preceding the date of the notice. The Registrar issued such notice on June 5, 1996. However, the appellant failed to adduce any evidence of use of the mark in Canada.

     On October 18, 1996, the Registrar advised the appellant that the trade-mark would be expunged from the register pursuant to subsection 45(4) of the Act. On October 22, 1996, the appellant requested a retroactive extension of time for filing its evidence showing use of the Trade-mark in Canada. That request was apparently refused and the decision of the Registrar to expunge the mark was maintained. The appellant now seeks to have that decision set aside on the grounds that it has evidence of use of the trade-mark in Canada.

     The respondent relies on subsection 56(5) of the Act in support of its position that since the appellant failed to adduce any evidence of use of the mark before the Registrar, it is now precluded from relying upon that evidence on appeal. Subsection 56(5) reads as follows:

     According to the respondent, the only evidence therefore which may be adduced on an appeal from a decision of the Registrar to expunge a registration is evidence in addition to that which was adduced before the Registrar. It maintains that the provision cannot be used to introduce evidence on appeal where no evidence has been placed before the Registrar.

     I am not persuaded by this argument and am allowing the appeal for the following reasons. Pursuant to subsection 45(1) of the Trade-marks Act, any person can require the Registrar to send a notice to the owner of a registered trade-mark requiring the owner to show proof of use of the mark within the three year period immediately preceding the date of the notice. The jurisprudence has clearly established that the purpose of section 45 is to provide a summary procedure for clearing from the Register those marks which cannot be seen as active trade marks because of lack of use by their owner. In Re Wolfville Holland Bakery Ltd. (1964), 42 C.P.R. 88 (Ex. Ct.) at 91, Thorson P. stated:

     Given the ultimate objective of the section, it would, in my view, be incorrect to accord it so strict an interpretation as to permit a trade mark, which is clearly in use in Canada, to be expunged from the Register simply because the owner of the mark failed to provide evidence of that use to the Register.

     Indeed, this was the interpretation adopted by this Court in Nissei Plastics Industrial Co. v. Pascal & Associates (1994), 58. C.P.R. (3d) 395, wherein Gibson, J. stated at p. 402 that:

     That reasoning is equally applicable to the case at bar. The affidavit of Danette Jordan clearly shows that the mark has been actively used in Canada during the relevant time period. It is in the interests of justice that the decision of whether a mark should be removed from the Register be made in light of all the relevant evidence. I am satisfied that had the affidavit of Ms. Jordan been before the Registrar the appellant's trade-mark would not have been expunged.

     For these reasons, the appeal is allowed. The decision of the Registrar of Trade-marks is set aside and the appellant's trade-mark restored to the Register.

JUDGE

OTTAWA, Ontario

September 5, 1997