Date: 20000629
Docket: T-272-99
Ottawa, Ontario, this 29th day of June, 2000
| PRESENT: THE HONOURABLE MR. JUSTICE JOHN A. O"KEEFE |
BETWEEN:
CARTER-WALLACE INC.
Applicant
- and -
WAMPOLE CANADA INC.
Respondent
REASONS FOR ORDER AND ORDER
O"KEEFE J.
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, R.S.C. 1985, c. T-13 ("Act") of the decision of the Registrar of Trade-marks dated December 22, 1998 wherein the Registrar found that the respondent had shown use of its trade-mark WAMPOLE and thereby refused to expunge the registration from the Register of Trade-marks.
BACKGROUND
[2] On September 23, 1996, at the request of the applicant, Carter-Wallace Inc. ("Carter-Wallace" or "applicant"), the Registrar of Trade-marks forwarded to the respondent, Wampole Canada Inc. ("Wampole" or "respondent"), a notice under section 45 of the Trade-marks Act , requiring the respondent to show evidence of use of its trade-mark, WAMPOLE (Registration No. 148,616) in respect of the wares, "pharmaceutical formulations" within the previous three years.
[3] In response to the section 45 notice, the respondent forwarded its evidence of use of the mark to the Registrar in the form of an affidavit sworn by Mr. Aubrey Dan, president of Wampole since June, 1995. In his affidavit, Mr. Dan states that the registered trade-mark had been used consistently during the previous three years. Appended to the affidavit were photocopies of outer boxes of the various products sold by Wampole. On these boxes the trade-mark WAMPOLE was clearly marked. Also attached to the affidavit were invoices of sales of Wampole products. The vast majority of these products are vitamins, herbal remedies and other similar products. In addition, however, boxes marked with the trade-mark for ASA and acetaminophen tablets were provided.
[4] In response to the Dan affidavit, the applicant filed written submissions with the Registrar. In its submissions, the applicant took issue with:
| 1. The suitability of having Mr. Dan provide the evidence of use of the mark, given that he had only been president of Wampole for a portion of the relevant three year period. |
| 2. The wording of the Dan affidavit in that it does not specifically state that the trade-mark has been used in association with pharmaceutical formulations - the wares in respect of which the trade-mark is registered. |
| 3. The fact that there was no evidence of use of the trade-mark in association with a full line of pharmaceutical formulations. |
| 4. The fact that the trade-mark, at the time of issuance of the section 45 notice, was registered in the name of the corporation Rhone-Poulenc Rorer Consumer Inc., but it was Wampole Canada Inc. that provided evidence of use, with such use having been made by Wampole. |
| [5] On December 22, 1998, the Registrar of Trade-marks decided that the respondent |
had submitted sufficient evidence showing use of the trade-mark WAMPOLE in association with pharmaceutical formulations during the three years preceding the issuance of the section 45 notice. The Registrar was satisfied that the respondent"s affiant, Mr. Dan, was in a position to know the facts of which he deposed. In addition, the Registrar was not concerned that the respondent was not the registered owner of the trade-mark until subsequent to the section 45 notice. The respondent had indicated that the discrepancy was merely due to a failure to register a change of corporate name.
| [6] The Registrar also considered the definition of the word "pharmaceutical". The |
Registrar was satisfied that the range of goods shown in evidence included classic drugs such as acetaminophen tablets and ASA tablets. As well, the Registrar was prepared to accept that the other products"the vitamins, herbal remedies and cough syrups"were included in the category of "health improving or distress relieving medicines and remedies" and therefore, that most, if not all of the respondent"s products properly fell under the category of pharmaceutical preparations. The Registrar did not decide whether the term "pharmaceutical preparations" was too broad to be a proper category of wares for which a trade-mark can be registered, as the Registrar felt that such a consideration was not a proper question for consideration during a section 45 proceeding.
| [7] On February 22, 1999, Carter-Wallace filed this appeal of the Registrar"s |
decision.
ARGUMENT
| [8] The applicant argues that the Registrar of Trade-marks erred in finding use of the |
trade-mark WAMPOLE in association with pharmaceutical formulations on several bases. These bases for the most part, mirror the arguments the applicant raised in front of the Registrar of Trade-marks, namely:
| 1. That the respondent"s affiant did not have sufficient knowledge to furnish proper evidence of use; |
| 2. That there was no evidence that the trade-mark was used in association with pharmaceutical formulations; |
| 3. That any use of the trade-mark was not made by the registered owner (given that the registered owner of the trade-mark was not Wampole); |
| 4. Vitamins and herbal remedies are not properly pharmaceutical formulations, there was no evidence to show that the trade-mark was, in fact, used in association with pharmaceutical formulations. |
| [9] The respondent submits that the Registrar made no error in law and was entitled |
to make the findings of fact he did. In light of the fact that the issues before the Registrar were squarely within his expertise dealing with trade-marks, the decisions are entitled to a considerable degree of deference. The Registrar was entitled to find as he did that the vitamins and herbal remedies and other products of the respondent were properly characterized as pharmaceutical formulations and this decision ought not to be interfered with.
LAW AND ANALYSIS
Section 45 Proceedings
| [10] The Trade-marks Act gives the Registrar of Trade-marks responsibility for a |
broad range of administrative matters with respect to trade-marks. The Registrar maintains the Register of Trade-marks; receives applications for registration of trade-marks; approves the trade-marks for registration when they appear to fulfil the requirements of the Trade-marks Act and conducts opposition proceedings in the case where the registration of a trade-mark is opposed by another party.
| [11] The Registrar is also empowered to maintain and amend the Register of Trade- |
marks. Section 45 of the Trade-marks Act is a procedure for up-dating the Register. Section 45 of the Act states 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.
(2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may hear representations made by or on behalf of the registered owner of the trade-mark or by or on behalf of the person at whose request the notice was given.
(3) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trade-mark, either with respect to all of the wares or services specified in the registration or with respect to any of those wares or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trade-mark is liable to be expunged or amended accordingly.
(4) When the Registrar reaches a decision whether or not the registration of a trade-mark ought to be expunged or amended, he shall give notice of his decision with the reasons therefor to the registered owner of the trade-mark and to the person at whose request the notice referred to in subsection (1) was given.
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| 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.
(2) Le registraire ne peut recevoir aucune preuve autre que cet affidavit ou cette déclaration solennelle, mais il peut entendre des représentations faites par le propriétaire inscrit de la marque de commerce ou pour celui-ci ou par la personne à la demande de qui l'avis a été donné ou pour celle-ci.
(3) Lorsqu'il apparaît au registraire, en raison de la preuve qui lui est fournie ou du défaut de fournir une telle preuve, que la marque de commerce, soit à l'égard de la totalité des marchandises ou services spécifiés dans l'enregistrement, soit à l'égard de l'une de ces marchandises ou de l'un de ces services, n'a été employée au Canada à aucun moment au cours des trois ans précédant la date de l'avis et que le défaut d'emploi n'a pas été attribuable à des circonstances spéciales qui le justifient, l'enregistrement de cette marque de commerce est susceptible de radiation ou de modification en conséquence.
(4) Lorsque le registraire décide ou non de radier ou de modifier l'enregistrement de la marque de commerce, il notifie sa décision, avec les motifs pertinents, au propriétaire inscrit de la marque de commerce et à la personne à la demande de qui l'avis visé au paragraphe (1) a été donné.
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| [12] In support of its application to set aside the Registrar"s decision, the applicant |
| relies almost exclusively on the following case: Plough (Canada) Limited v. Aerosol Fillers Inc., [1981] 1 F.C. 679 (C.A.). The issue in that case also concerned a section 45 notice and the sufficiency of the evidence adduced to show use of the trade-mark. |
| [13] In Plough (Canada), supra, the registrant was forwarded a section 45 notice on |
| September 7, 1978. The registered owner chose to reply to this notice by stating merely the following: |
| 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. |
| In response to this evidence, the Registrar decided as follows: |
| By reason of the evidence adduced it appears that the above registered trade-mark is in use in Canada in association with the wares and services specified in the registration. Accordingly, I have decided that the registration ought not to be amended or expunged. |
| [14] The Court of Appeal overturned this finding. The Court stated that the purpose of |
| the section 45 notice is for the registrant to inform the Registrar in detail of the situation prevailing with respect to the use of the trade-mark so that an opinion could be reached and the discretion outlined in section 45 might be exercised intelligently. Their Lordships noted that the registered owner had not answered the question set out in the section 45 notice: the owner did not provide any evidence that the trade-mark was in use in the three years preceding the issuance of the section 45 notice. The only evidence was a bald assertion that the trade-mark was "currently in use". The Court decided that section 45 requires not a statement of use, but a showing of use and this was not complied with by the registrant. |
| [15] One other case relied upon by the applicant is Swabey Ogilvy Renault v. |
| Enterprises Krasnow Ltee (1987), 83 C.P.R. (3d) 260 (Reg. T.M.). This case was proffered as standing for the proposition that the registered owner of a trade-mark must show use in association with all of the goods for which the registration exists. In Swabey, the registration was for use of the trade-mark in association with "men"s, women"s and children"s shoes of all kinds". However, on the section 45 notice, the registered owner only provided evidence of the trade-mark"s use in association with boots. Therefore, the Registrar decided that there was not sufficient evidence to maintain the registration in respect of the wares for which it was listed namely, "men"s, women"s and children"s shoes" of all kinds. The Registrar exercised his discretion and expunged the registration. |
| [16] The respondent in this application relies on various cases which seek to rebut the |
| arguments advanced by the applicant. |
| [17] A case cited by the respondent dealing with the purpose of a section 45 notice is |
| Philip Morris Inc. v. Imperial Tobacco Limited et al (1987), 13 C.P.R. (3d) 289 (F.C.T.D.). His Lordship Justice McNair stated as follows: |
| It is well established that the purpose and scope of [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 "dead wood" from the Register. |
| [18] Further, Justice McNair considered the quality of the evidence that should be |
| adduced on a section 45 notice. His Lordship found that evidence of a single sale in the ordinary course of trade suffices as long as it follows a pattern of genuine commercial transaction and is not deliberately manufactured or contrived. His Lordship was of the view that evidence filed in response to a section 45 notice should be forthcoming in quality and not quantity. |
| [19] With respect to the standard of review, while the applicant argues that the |
| procedure before this Court will be effectively a trial de novo, the respondent relies on several cases holding that any decision of the Registrar is entitled to deference and should not be interfered with lightly. The case of Benson and Hedges Canada Ltd. v. St. Regis Tobacco Corp. [1969], S.C.R. 192, held that a decision of the Registrar should not be set aside lightly considering their expertise gained in being those who regularly make determinations under the Trade-marks Act. This case has been followed many times and is still considered good law. It was approved of in McDonald"s Corp. v. Silicorp. Ltd. (1989), 24 C.P.R. (3d) 207 (F.C.T.D.). |
| [20] The case was also applied in the very recent case of John Labatt Limited et al v. |
| Molson Breweries, A Partnership, unreported, dated February 3, 2000 (A-428-98). This case of the Federal Court of Appeal considered the proper standard of review for decisions of the Registrar in light of the recent decisions of the Supreme Court of Canada concerning standards of review of decisions of administrative tribunals. His Lordship Justice Rothstein at page 11, paragraph 27, cited a passage written by Justice Strayer from McDonald"s Corp. as follows: |
| . . . While different panels of the Federal Court of Appeal have variously expressed the duty of this Court on appeal to determine whether the Registrar has clearly erred or whether he has simply gone wrong it appears that it is the duty of a judge sitting on an appeal such as this to come to his own conclusion as to the correctness of the finding of the Registrar. In doing that he must, however, take into account the special experience and knowledge of the Registrar or the board, and more importantly have regard to whether new evidence has been put before him that was not before the board. |
| Justice Rothstein at page 12, paragraphs 28 and 29, speaking for the majority in John Labatt Limited, supra, stated as follows: |
| McDonald"s Corp. v. Silicorp. was a 1989 decision, well before the recent Supreme Court jurisprudence establishing the modern spectrum of standards of review namely correctness, reasonableness simpliciter and patent nreasonableness...Because Strayer J. was prepared to accord some deference to the Registrar, I do not consider his use of the term "correct" to reflect the non-differential and rigorous standard of review that is today associated with the terms "correct" or "correctness". |
| I think the approach in Benson and Hedges v. St. Regis and in McDonald v. Silicorp. are consistent with the modern approach to standard of review. Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, experience on the part of the Registrar has been recognized as requiring some deference having regard to the Registrar"s expertise, in the absence of additional evidence adduced in the Trial Division, I am of the opinion that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. However, where additional evidence is adduced in the Trial Division that would have materially affected the Registrar"s finding of fact or they exercise his discretion, the Trial Division Judge must come to his or her own conclusion as to the correctness of the Registrar"s decision. |
| [21] With respect to the standard of review, the circumstances of this case are such that |
| the standard of reasonableness simpliciter applies. This is not a trial de novo in either the classical sense of the word, nor with respect to the more permissive use that has been made of the term recently. Of course, a classic trial de novo is where the court begins anew with a blank slate, as though the decision and trial in the court or tribunal below did not occur. However, the term trial de novo has been recently used to describe the procedure where, on what can only fairly be called an appeal, significant additional evidence is adduced, such that the decision of the court or tribunal cannot, and ought not, be given the benefit of a normal deference which could be expected. |
| [22] In the case at bar, the only grounds of appeal are that the Registrar did not apply |
| the law correctly in disposing of the appellant"s complaints at the Section 45 hearing. No additional evidence was tendered. The record before me is essentially identical to that which was before the Registrar. |
| [23] I shall now consider and dispose of each of the four grounds of review advanced |
1. Dan Affidavit
The applicant complains that the registrant"s affiant, the president of the company, is an inappropriate representative and cannot give evidence in light of that fact that he was only named president in June 1995, while the period covered by the section 45 notice runs from September of 1993 to September of 1996. However, I note that section 45 of the Trade-marks Act does not require the registrant to adduce evidence of use throughout the entire three year period--only at some point within the previous three years. As it happens, the company president has stated that the trade-mark was in use throughout the entire three year period and he, of course, would have personal knowledge of that use for the last two years of the relevant three year period. In addition, the documentary evidence appended as exhibits to the Aubrey affidavit all relate to use of the trade-mark subsequent to his assuming the presidency of Wampole Canada Inc.
| [24] The case relied upon by Carter-Wallace, Plough (Canada), supra, concerned a |
very different factual situation (no evidence of use whatsoever) and is therefore easily distinguishable.
| [25] 2. No Evidence of Use in Association With Pharmaceutical Formulations |
With respect to the allegation that the registrant"s affidavit does not state use of the trade-mark WAMPOLE in association with pharmaceutical formulations, I disagree that such is a proper conclusion to arrive at upon review of the affidavit. Although the wording of the affidavit itself may appear somewhat equivocal upon a very close reading, the exhibits appended to the affidavit clearly indicate use in association with the vitamins, herbal remedies, acetaminophen tablets, ASA tablets, etc. In my mind, this uncontradicted evidence vitiates any claim that the trade-mark was not used in association with these particular products.
| [26] 3. Vitamins and Minerals as Pharmaceutical Formulations |
With respect to the interpretation to be given the term "pharmaceutical formulations", it is my view that with respect to this portion of the Registrar"s decision, the appropriate standard of review becomes an issue. The Registrar decided that these vitamins and herbal remedies were properly characterized as pharmaceutical preparations. It may well be that the Court, in review, would come to a different conclusion. However, I believe that the Registrar in making this determination was acting within his area of expertise. The decision should therefore be entitled to deference at the standard of reasonableness simpliciter, as stated by Justice Rothstein in the John Labatt Limited case. In addition, I suggest there is little room for argument that acetaminophen tablets and ASA tablets would properly be characterized as pharmaceutical preparations. The term may be somewhat broad or somewhat vague, however, these products can reasonably be characterized as pharmaceutical preparations.
With respect to the issue of the name change, the respondent cites Kightley v. Registrar of Trade-marks (1982), 65 C.P.R. (2d) 36, being a case dealing with the same subject matter. The Registrar there held that there was no significance to the discrepancy of names, provided that the person using the mark was properly found to be equivalent to the registered owner of the mark.
| [28] According to the Dan affidavit, Wampole is the same company as the previously |
registered owner of the trade-mark. A change of name was simply neglected to be registered. In Kightley an entirely new company was formed but the registration in the name of the old company was not amended. In the case at bar, the evidence is merely that there was a change of name of the corporate entity which was the owner of the registration.
| [29] In light of this reasoning, which I approve of, the fact of the change of name |
(which evidence has not been rebutted) does not impact on the admisibility of the evidence, and this ground of appeal fails.
| [30] I believe the underlying issue in the case at bar is that the term pharmaceutical |
preparations may be vague or overbroad. This issue was however considered by the Registrar, who determined that such an issue was not properly the subject of a section 45 hearing. The issue in a section 45 hearing is for the registered owner to provide evidence of use of its trade-mark, in this case WAMPOLE, in association with the wares for which the registration is given, in this case pharmaceutical preparations. I believe that the registered owner of the trade-mark has done so in the case at bar. This is not a case where the trade-mark represents "dead wood" on the Register or a case in which the trade-mark has been abandoned. Again, it may well be the case that the wares for which the trade-mark has been registered is too broad a category, however, again, such is not the issue before the Court in the application in the case at bar.
| [31] On the basis of the foregoing, the appeal is dismissed. |
| [32] The respondent shall have its costs to be taxed. |
ORDER
| [33] IT IS ORDERED that the appeal is dismissed. |
| [34] IT IS FURTHER ORDERED that the respondent shall have its costs to be |
taxed.
"John A. O"Keefe"
J.F.C.C.
Ottawa, Ontario
June 29, 2000