Date: 20041203
Docket: T-2248-03
Citation: 2004 FC 1703
Ottawa, Ontario, December 3, 2004
Present: The Honourable Madam Justice Danièle Tremblay-Lamer
BETWEEN:
RIDOUT & MAYBEE LLP
Applicant
and
OMEGA SA (OMEGA AG) (OMEGA LTD.)
and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER AND ORDER
[1] This is an appeal brought pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act"), requesting this Court to grant an Order setting aside the decision rendered by a hearing officer on behalf of the Registrar of Trade-marks (the "Registrar"), dated September 30, 2003.
[2] On August 2, 2001, at the request of Ridout & Maybee LLP ("Ridout" or the "appellant"), the Registrar forwarded a notice pursuant to the provisions of section 45 of the Act to Omega SA (Omega AG)(Omega Ltd.) ("Omega SA" or the "respondent"), the listed registered owner of the trade-mark OMEGA & Design, registration no. TMDA 05009 which reads:
1) Montres et boîtes pour montres;
2) Pendulettes, appareils ou instruments à mesurer et à marquer le temps, chaînes de montres, outils et accessoires ainsi que toutes fournitures et parties détachées employées dans l'horlogerie et la bijouterie y soient inclus;
3) Étuis et emballages, nommément contenants sous forme de housses en tissus et boîtes; compteurs et chronographes qui servent au chronométrage sportif; et appareils techniques et scientifiques pour l'électricité, l'optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie, nommément : la cellules photo-éléctriques, portails à contact, appareils coupe-fils, chronomètres à signal acoustique, compteurs enregistreurs sur films, compteurs enregistreurs sur bande de papier, appareils de déclenchement à plusieurs compteurs ou chronographes, appareils de transmission d'impulsion sans fil, pistolets de start à contacts électriques, appareils filmant des passages ou arrivées et les temps y soient inclus.
[3] The Notice required that the registered owner provide, within three months of the date of the Notice, an affidavit or a statutory declaration showing with respect to each of the wares within the registration that have been on the Register for at least three years, whether the trade-mark has been used in Canada at any time within the three years preceding the Notice, i.e. between August 2, 1998 and August 2, 2001.
[4] By letter dated March 4, 2002, the agents for Omega SA submitted as evidence in response to the Notice, a certified copy of Registration TMDA 05009, an affidavit of Peter Stierli dated February 25, 2002, and an affidavit of Philip Lefebvre dated March 4, 2002. A further affidavit of Mr. Lefebvre was filed March 7, 2002.
[5] On September 30, 2003, the hearing officer decided that the following elements on the register should be deleted from paragraphs (2) and (3):
2) Pendulettes, appareils ou instruments à mesurer et à marquer le temps;
3) Appareils couple-fils; chronomètres à signal acoustique; compteurs enregistreurs sur films; appareils de déclenchement à plusieurs compteurs ou chronographs; appareils de transmission d'impulsion sans fil; appareils filmant les passages ou arrivées et les temps y soient inclus.
[6] In the absence of any additional evidence adduced on appeal to this Court, it is well established that decisions rendered by the Registrar under section 45 of the Act attract curial deference. Specifically, the standard of review for decisions reached pursuant to that provision is reasonableness simpliciter (see Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180 (F.C.A.); Carter-Wallace Inc. v. Wampole Canada Inc. (2000), 8 C.P.R. (4th) 30 (F.C.T.D.).
[7] The Supreme Court of Canada described what constitutes an "unreasonable" decision, that is, a decision that does not survive the reasonableness simpliciter standard of review, as follows in Law Society of New Brunswick v. Ryan, [2003] 1 S.C.R. 247:
55 A decision will be unreasonable only if there is no line of analysis within the given reasons that could reasonably lead the tribunal from the evidence before it to the conclusion at which it arrived. If any of the reasons that are sufficient to support the conclusion are tenable in the sense that they can stand up to a somewhat probing examination, then the decision will not be unreasonable and a reviewing court must not interfere (see Southam, at para. 56). This means that a decision may satisfy the reasonableness standard if it is supported by a tenable explanation even if this explanation is not one that the reviewing court finds compelling (see Southam, at para. 79).
[8] Ridout submits that the decision reached by the hearing officer ran afoul of this standard in one of two ways.
Use of the Trade-Mark as Registered
[9] Ridout first argues that while there is affidavit evidence showing use of a mark in association with wares in a sale transaction, it is not the trade-mark of OMEGA & Design as registered. Rather, the mark appearing on the wares in question differs from the registered mark such that the relevant consumer, as a matter of first impression, would perceive OMEGA ELECTRONICS as the trade-mark instead of OMEGA & Design. Thus any use of the disputed wares by the licensee (Omega Electronics SA) does not enure to the trademark owner (Omega SA), and does not constitute use of the trade-mark "per se". I disagree with Ridout on this point.
[10] Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 (T.M.O.B.), establishes the two principles or situations in which use of a trade-mark by a licensee does (or does not) constitute use of the trade-mark "per se":
Use of a mark in combination with additional material constitutes use of the mark per se as a trade mark if the public, as a matter of first impression, would perceive the mark per se as being used as a trade mark. This is a question of fact dependent upon such factors as whether the mark stands out from the additional material, for example by the use of different lettering or sizing (see e.g., Standard Coil Products (Canada) Ltd. v. Standard Radio Corp. et al. (1971), 1 C.P.R. (2d) 155 at p. 163, [1971] F.C. 106), or whether the additional material would be perceived as purely descriptive matter or as a separate trade mark or trade name: see e.g., Carling O'Keefe Ltd. v. Molson Cos. Ltd. (1982), 70 C.P.R. (2d) 279 at pp. 280-1, applying Bulova Accutron Trade Mark, [1969] R.P.C. 102 at pp. 109-10.
[...]
A particular trade mark will be considered as being used if the trade mark actually used is not substantially different and the deviations are not such as to deceive or injure the public in any way: Honey Dew, Ltd. v. Rudd et al., [1929] 1 D.L.R. 449, [1929] Ex. C.R. 83 at p. 89.
[11] Here, the OMEGA & Design mark has been modified from the trade-mark as registered. Appearing on wares or the packaging thereof emanating from Omega Electronics SA, there is a line of oblong marks and the word "ELECTRONICS" located beneath the trade-mark as registered, i.e. the word "OMEGA" below the Greek letter "Ω". The font size of the word ELECTRONICS is smaller than the font size of the word OMEGA and the Greek letter "Ω".
[12] Given the difference in font size and the separation of the mark from the word ELECTRONICS by oblong marks, the hearing officer concluded that the composite image nevertheless constituted use of the OMEGA & Design mark "per se".
[13] Ridout argues that the hearing officer erred in fact and law by failing to compare the mark as used with the mark as registered, contrary to Registrar of Trade Marks v. Compagnie Internationale Pour L'Informatique CII Honeywell Bull, Societe Anonyme (1985), 4 C.P.R. (3d) 523 (F.C.A.). Ridout submits that the mark, comprised of four elements (the Greek letter "Ω", the word "OMEGA", the oblong marks, and the word "ELECTRONICS"), must be viewed as a whole. And that the presence of the oblong marks and the descriptor ELECTRONICS alter the character of the mark significantly beyond the kind of modernization of a mark envisioned by Promafil Canada Ltée. v. Munsingware Inc. (1992), 4 C.P.R. (3d) 59 (F.C.A.).
[14] Further, the appellant suggests that the case at bar is on all fours with Brouillette Kosie Prince c. Andés Wines Ltd., 2004 CF 812, where I recently held that the registered trade-mark, the words "IN VINO VERITAS", was not shown to be in use when viewing the mark in question as a whole.
[15] In my opinion, the mark under scrutiny here is entirely distinguishable from the one in Brouillette, supra. Whereas the registered mark is easily perceived in the instant case, indeed the Greek letter "Ω" and the word "OMEGA" are the most prominent elements, the wording "IN VINO VERITAS" - i.e., registered mark - was entirely embedded within a coat of arms and was barely legible to the naked eye in Brouillette, supra. The oblong marks serve as a dividing line between the registered mark and the word ELECTRONICS, which is merely descriptive in nature, does not detract from the key elements of the OMEGA & Design mark, i.e. the Greek letter "Ω" and the word "OMEGA".
[16] I cannot conclude that the hearing officer's decision was unreasonable, particularly in view of the Registrar's expertise in discerning how marks are likely to be perceived from the point of view of the relevant consumer and any confusion or misperception likely to arise therefrom. It is clear from the hearing officer's decision that she considered all of the elements of the mark in dispute, including the presence of the oblong marks. The word ELECTRONICS seems descriptive in nature and the mark still stands out, thus meeting the first situation described in Nightingale, supra. As discussed in Ryan, supra the hearing officer's decision is supported by a tenable explanation even if this explanation is not one that the reviewing Court finds compelling.
Evidence Showing Use
[17] Alternatively, the appellant submits that the following wares should be deleted (referred to below as the "disputed wares") from paragraph (3) for want of evidence showing use of the same during the relevant period:
· et appareils techniques et scientifiques pour l'électricité, l'optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie, nommément
· cellules photo-électriques;
· portails à contact;
· compteurs enregistreurs sur bande de papier;
· pistolets de start à contacts électriques.
[18] In his affidavit, Mr. Lefebvre clearly describes a contract of sale for a "computer enregistreur sur bande papier" (photo time item), "une cellule photo-électrique" (transtime, Omega photocell), "pistolet de start à contact électrique" (start gun system item), and "un portail à contact" (starting gate item).
[19] Ridout concedes that according to the jurisprudence evidence of a single transaction can be sufficient to show use for the purpose of s. 45 of the Act (see for e.g., Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 13 C.P.R. (3d) 289 (F.C.T.D.)). It also does not take issue with the fact that the items in the above sale transaction are all wares for use in the sporting industry - as identified in paragraph (3) of the registration (see full registration at the outset of these reasons). However, none of these items are for "l'électricité, l'optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie", all fields ostensibly unrelated to the sports timing industry and yet described in paragraph (3). There is thus no evidence showing use of the mark in association with such wares. Therefore, in Ridout's view, the registration should be amended to limit the wares listed in paragraph (3) to "étuis et emballages, nommément contenants sous forme de houses en tissues et boîtes, et compteurs et chronographes qui servent au chronométrage sportif".
[20] Omega SA contends that this supposed distinction between wares in the sports timing industry and wares of scientific or technical application lacks merit. This argument is in effect designed to attack the validity of the registration's wording, which the Court has repeatedly held is not the proper subject of a s. 45 proceeding (Cater-Wallace, supra; Renaud Cointreau & Co v. Cordon Bleu International Ltd. (2000)
11 C.P.R. (4th) 95 (F.C.T.D.), aff'd (2002), 18 C.P.R. (4th) 415 (F.C.A.)). If Ridout wishes to pursue these issues of vagueness or overbreadth in the wording of the registration, it can have recourse to this Court pursuant to section 57 of the Act.
[21] This second issue presents a much greater difficulty. I am in agreement with the appellant, however, for the following reasons.
[22] The appropriate starting point concerns the purpose of s. 45. Time and again, this Court and the Court of Appeal has maintained that s. 45 is intended to establish 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": Carter-Wallace, supra at para. 17, quoting Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 13 C.P.R. (3d) 289 at 293 (F.C.T.D.). "Deadwood" is to be cleared but the resolution of contentious issues between competing commercial interests are not the object of a s. 45 inquiry: Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 17 C.P.R. (3d) 237 (F.C.A.).
[23] The Registrar's jurisdiction is limited to determining whether the registered owner of the mark has shown use of the mark within the relevant period. Hearing officers have no power to redefine the statement of wares provided such use is shown (Carter-Wallace, supra at para. 30; Scott Paper Co. (Re), [1997] T.M.O.B. No. 139 (QL); Swabey Ogilvy Renault v. Targa Electronics Systems, Inc. (2001), 11 C.P.R. (4th) 413 (T.M.O.B.)). And the burden on the registered owner is not a heavy one: Austin Nichols & Co., Inc. v. Cinnabon Inc., [1998] 4 F.C. 569 (F.C.A.).
[24] The problem is that what is required to "show use" tends to vary case-by-case, registration-by-registration. In some instances it seems that it was not necessary to show use of the trade-mark in association with every ware under a particular category (Saks and Co. v. Canada (Registrar of Trade Marks) (1989), 24 C.P.R. (3d) 49 (F.C.T.D.)), whereas in other circumstances the Court will require that use is shown with respect to each and every ware specified in the registration (Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 (F.C.A.); John Labatt Ltd. v. Rainier Brewing Co. (1984), 80 C.P.R. (2d) 228 (F.C.A.)).
[25] The proper test, in my view, combines both lines of authority. Requiring a demonstration of use for every ware obviously comports with the purpose of s. 45 - the exercise of clearing "deadwood" necessarily implies that all wares identified in the registration must be in active use to avoid deletion. Specific wares can nevertheless sometimes be legitimate representatives of a broader grouping or category of wares claimed in the registration. That is why a single transaction may suffice to show use even though every conceivable ware falling under a particular category may not actually change hands in the transaction.
[26] Thus the test should be formulated more precisely as follows: For the purpose of s. 45, evidence is required to show use of every ware specified in the registration unless demonstrated use of a particular ware or wares can serve as evidence of use of an entire category of wares on a plain reading of the registration. In that scenario, showing use of every single ware identified is not strictly required. And whether a ware or wares can legitimately serve as a category representative is likely to be case-specific.
[27] This is better explained by example. In Swabey Ogilvy Renault v. Enterprises Krasnow Ltée/Krasnow Enterprises Ltd. (1997), 83 C.P.R. (3d) 259 (T.M.O.B.), the issue was whether evidence of a sale of boots bearing the trade-mark "BOOTLEGGER" was sufficient to show use of "men's, women's and children's shoes of all kinds". Even though the burden is not onerous, the hearing officer concluded that boots could not support use of "shoes of all kinds" and accordingly expunged the mark. In other words, boots were not a sufficient representative of the broader category that was claimed so use was not demonstrated. I find this conclusion reasonable particularly considering that shoes of all kinds for all sexes were claimed, and the only unequivocal evidence in the case showed use in association with boots for men.
[28] It is nevertheless critical to understand that this exercise is conceptually different from assessing overbreadth and vagueness in the wording of the registration itself, which is ultra vires to a s. 45 proceeding. In Carter-Wallace, supra, for example, the Court found that use of the mark in association with vitamins, herbal remedies and other products did in fact show use in association with "pharmaceutical formulations". That is, those products sufficed to represent the larger category. However, any issue as to the scope of the phrase "pharmaceutical formulations" was not within the jurisdiction of the Registrar or the Court sitting on appeal. Likewise, whether "shoes of all kinds" could be properly claimed in a registered trade-mark's statement of wares would not have been a proper issue to consider in the BOOTLEGGER case above.
[29] Further, the evidence may be deficient regardless of whether a particular ware is representative of a broader category claimed in the registration if, for example, the affidavit evidence does not demonstrate control by the registered owner over its licensee(s) purporting to use the mark in association with registered wares or services, or when the evidence does not show that the wares in question were used in the normal course of trade (or sold) in Canada during the relevant time frame (see for e.g., Eclipse International Fashions Canada Inc. c. Shapiro Cohen, [2004] A.C.F. no 754 (F.C.)(QL), 2004 CF 617; Boutique Limité Inc. v. Limco Investments, Inc. (1998), 84 C.P.R. (3d) 164 (F.C.A.); Philip Morris, supra).
[30] Note also that this determination of whether a ware may represent a broader group specified in the registration must be capable of being made on a plain reading of the statement. If there is a real ambiguity as to how to interpret the statement, for instance, as to what constitutes use in association of with a service as opposed to use in association with a ware (see Cordon Bleu, supra), or whether the term "and" is meant in a joint or several sense (see ConAgra Foods, Inc. v. Fetherstonhaugh & Co. (2002), 23 C.O.R. (4th) 49 (F.C.T.D.)), then again s. 45 is not the proper forum and the ambiguity must be resolved elsewhere.
[31] Turning to the case at bar, the evidentiary issue is whether evidence of the sale of certain wares is sufficient to support the broader category of wares described in paragraph (3) of the registration.
[32] It is obvious that the items sold in the transaction between a distributor of Omega SA's licensee and a third party in Canada are wares for the use in the sports timing industry. However, the registration also clearly enumerates other kinds of wares of scientific or technical application, which are not for the purposes of sports timing, i.e., for the purposes of "l'électricité, l'optique, la télégraphie, le cinéma, la radio, la téléphonie, la télégraphie". Therefore, it does not follow that any of the wares sold in the transaction can serve as representatives of the broader class of scientific and technical applications specifically identified in the registration.
[33] Thus, similar to Swabey Ogilvy Renault, supra, (the BOOTLEGGER case) the respondent has failed to show use of the trade-mark in association with wares described in the registration because the wares in question cannot be said to represent all of these categories of technical and scientific applications. And in my view, the hearing officer's interpretation to the contrary was unreasonable. There is simply no evidence demonstrating use of any ware(s) remotely related to anything outside the sports timing field. This does not amount to a redefinition of the statement of wares. Rather, such wares are "deadwood" and should be deleted from the registration.
[34] This appeal is therefore allowed and the registration no. TMDA 05009 shall be amended accordingly with costs to the appellant.
ORDER
THIS COURT ORDERS that the appeal is allowed and registration no. TMDA 05009 shall be amended to read as follows, the whole with costs:
1) Montres et boîtes pour montres;
2) chaînes de montres, outils et accessoires ainsi que toutes fournitures et parties détachées employées dans l'horlogerie et la bijouterie y soient inclus;
3) Étuis et emballages, nommément contenants sous forme de housses en tissus et boîtes; compteurs et chronographes qui servent au chronométrage sportif.
"Danièle Tremblay-Lamer"
J.F.C.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-2248-03
STYLE OF CAUSE: Ridout & Maybee LLP
and
Omega SA (Omega AG) (Omega Ltd.) and
The Registrar of Trade-marks
PLACE OF HEARING: Ottawa, Ontario
DATE OF HEARING: November 24, 2004
REASONS FOR ORDER
AND ORDER OF THE HONOURABLE MADAM JUSTICE DANIÈLE TREMBLAY-LAMER
APPEARANCES:
Mr. Mitchell Charness FOR APPLICANT
Mr. Barry Gamache FOR RESPONDENT
SOLICITORS OF RECORD:
Ridout & Maybee LLP
150 Metcalfe Street
19th Floor
Ottawa, Ontario
K2P 1P1 FOR APPLICANT
Léger Robic Richard, S.E.N.C.
55 St-Jacques Street
Montréal, Québec
H2Y 3X2 FOR RESPONDENT