Date: 20000530
Docket: T-811-99
BETWEEN:
CELLIERS DU MONDE INC.
Applicant
- and -
GODET FRÈRES, S.A.
Respondent
REASONS FOR ORDER
TREMBLAY-LAMER J.:
[1] This is an appeal under section 56 of the Trade-marks Act1 (the "Act") of the decision of the Registrar of Trade-marks, dated March 12, 1999, to expunge the registration trade-mark of GOBET, registration no. 408,889, pursuant to proceedings under section 45 of the Act.
[2] The Applicant, Celliers du Monde, is a company duly incorporated, specialized in the manufacturing, the import, as well as the distribution of wine. The Applicant has its head office in Longueuil, Québec.
[3] The Applicant is the owner of the registered trade-mark GOBET, no. 408, 889, registered February 26, 1993.
[4] On July 5, 1996, at the request of the respondent, the Registrar of Trade-marks issued a notice pursuant to section 45 of the Act requesting the Applicant to furnish evidence of use of the GOBET trade-mark2.
[5] The Applicant did not file the evidence required pursuant to subsection 45(4) fo the Act.
[6] By notice dated March 12, 1999, the Applicant was advised that the GOBET trade-mark was to be expunged from the registrar by reason of its failure to file evidence.3
[7] It must be recalled at the outset that, in a trade-mark appeal under section 564 of the Act, subsection 56(5)5 of the Act provides that new evidence, not before the Registrar, may be adduced before this Court. This was also confirmed in Molson Breweries, A Partnership v. Labatt Brewing Co.6 where Heald J. characterized an appeal as a trial de novo.
[8] In the present case, the Applicant failed to file evidence before the Registrar but has filed evidence in these proceedings, namely, an affidavit7 with several exhibits attached thereto.
[9] In Austin Nichols & Co. v. Cinnabon Inc.,8 where the right to file evidence on appeal was challenged in circumstances where a registered owner failed to file evidence in a section 45 proceedings before the Registrar, the Federal Court of Appeal held that "on appeal to the Trial Division, a registered owner is given a second chance to save his mark from expungement or amendment".9
[10] In the case at bar, I am of the view that the evidence filed by the Applicant is sufficient to establish or infer the use of the Applicant"s trade-mark in Canada within the meaning of the legislation. Copies of invoices involving the sale of several wines10, including GOBET wine, to the Société des Alcools du Québec, is evidence of a genuine commercial transaction and consequently, evidence of the use of the Applicant"s trade-mark GOBET.
[11] Therefore, I conclude that the registration trade-mark of GOBET, registration no. 408,889 be maintained.
Danièle Tremblay-Lamer
JUDGE
MONTREAL, QUEBEC
May 30, 2000.
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-811-99
STYLE OF CAUSE: CELLIERS DU MONDE
Applicant
AND
GODET FRÈRES, S.A.
Respondent
PLACE OF HEARING: MONTREAL
DATE OF HEARING: MAY 30, 2000
REASONS FOR ORDER OF THE HONOURABLE JUSTICE TREMBLAY-LAMER
DATED: MAY 30, 2000
APPEARANCES:
Mr. Ian MacPhee, Lapointe Rosenstein FOR APPLICANT
SOLICITORS OF RECORD:
Lapointe, Rosenstein FOR APPLICANT
Montreal, Quebec
Shapiro, Cohen FOR RESPONDENT
Ottawa, Ontario
__________________2 Applicant "s Record, Volume 1, TAB 3.
3 Applicant "s Record, Volume 1, TAB 4.
4 Section 56(1) of the Act provides as follows:
An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
5 Subsection 56(5) reads as follows:
On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
6 (1996) 115 F.T.R. 33 (F.C.T.D.).
7 Applicant "s Record, Volume 1, TAB 6.