Date: 20011121
Docket: T-709-01
Neutral citation: 2001 FCT 1279
IN THE MATTER OF ss 56 of the Trade-marks Act
BETWEEN:
ATLANTIC ENGRAVING LTD.
Applicant
AND
LAPOINTE ROSENSTEIN
Respondent
[1] The applicant appeals the decision of the Registrar of Trade-marks in which she determined that pursuant to section 45 of the Trade-marks Act that the mark AE & Design, registered as no. 228, 684, be expunged from the register.
[2] She was satisfied that the evidence before her met two of the criteria required under section 4 of the Act; transfer of the registered wares in the normal course of trade. She continued that there was no evidence describing the manner in which the mark was associated with the wares at the time of transfer. She wrote:
Mr. Neuwirth completely fails to address this point and the exhibits fail to show the mark either appearing on the wares, or on their packaging or being associated with the wares in a manner that would have provided the required notice of association at the time of the transfer.
[3] New affidavit of evidence had been filed with the Court by the applicant when the matter came before me at Montreal on November 21, 2001.
[4] The new affidavit evidence relied upon by the applicant in these proceedings was objected to on various grounds by the respondent. Among these many objections were: invoices filed fell outside the three-year period; they were not filed by way of affidavit; the affidavit of the president of the applicant company did not describe the manner in which trade-mark was associated with the wares when transferred.
[5] The purpose of a section 45 notice is primarily to rid the register of dead wood.
[6] As I reviewed the material it appeared that there may be sufficient evidence to satisfy the statutory criteria of use of the mark, and its association with the wares and did provide some notice of use to the transferee. Nevertheless, I had to conclude that the respondent's objections were valid. The affidavit of the applicant filed in support was poorly drafted and inept. Exhibits were not properly submitted.
[7] I was satisfied that had counsel for the applicant been more experienced in the field of trade-marks law, the deficiencies would not have arisen. To deprive the applicant of its trade-mark which may have been in use for twenty years, simply on a section 45 application because of ineptitude, as well, the respondent not acting for any particular commercial or competing enterprise, would be unfair.
[8] I ordered that the matter be adjourned and that:
The applicant shall have thirty (30) days to file a further affidavit that satisfies the requirements of section 4 of the Act;
The respondent be allowed a further thirty (30) days to reply;
Costs of this day to the respondent which I fixed at $ 1,500.
[9] I am satisfied that the Registrar's decision to strike with respect to the association of the trade-mark with medallions, charms, earings, cuff links, bracelets, necklaces and brooches be maintained. There was no evidence to associate the mark with any use of these aforementioned items.
[10] Counsel for the respondent objected to the adjournment and to my order allowing the applicant to perfect its affidavit evidence. Nevertheless, in the interest of justice this Court is entitled to have the best evidence available placed before it.
"Paul Rouleau"
Judge
MONTREAL (QUEBEC)
November 21, 2001
FEDERAL COURT OF CANADA
TRIAL DIVISION
Date: 20011121
Docket: T-709-01
IN THE MATTER OF ss 56 of the
Trade-marks Act
BETWEEN:
ATLANTIC ENGRAVING LTD.
Applicant
and
LAPOINTE ROSENSTEIN
Respondent
REASONS FOR ORDER AND ORDER
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-709-01
STYLE OF CAUSE:
IN THE MATTER OF ss 56 of the Trade-marks Act
BETWEEN: ATLANTIC ENGRAVING LTD.
Applicant
and
LAPOINTE ROSENSTEIN
Respondent
PLACE OF HEARING: Montreal (Quebec)
DATE OF HEARING: November 21, 2001
REASONS FOR ORDER
AND ORDER OF: THE HONOURABLE MR. JUSTICE ROULEAU
DATED: November 21, 2001
APPEARANCES:
|
Mr. Baruch Pollack, Q.C. |
FOR THE APPLICANT |
|
Mr. Allen D. Israel |
FOR THE RESPONDENT |
SOLICITORS OF RECORD:
|
POLLACK, MACHLOVITCH, KRAVITZ & TEITELBAUM Montreal, Quebec |
FOR THE APPLICANT |
|
LAPOINTE ROSENSTEIN Montreal, Quebec |
FOR THE RESPONDENT |