Date: 20040426
Docket: T-599-03
Citation: 2004 FC 617
Montréal, Quebec, April 26, 2004
Present: The Honourable Madam Justice Danièle Tremblay-Lamer
BETWEEN:
ECLIPSE INTERNATIONAL
FASHIONS CANADA INC.
Applicant
and
SHAPIRO COHEN
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an appeal from a decision by the Registrar of Trade-marks (the Registrar) dated February 27, 2003, expunging the registration of the applicant's trade-mark.
[2] On July 24, 2000, at the respondent's request, the Registrar sent the applicant a written notice in accordance with subsection 45(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), requiring that it furnish evidence of use of the registered trade-mark ECLIPSE in association with ladies' sportswear, namely shirts, t-shirts, blouses, vests, pants, shorts, skirts, dresses and jackets between July 24, 1997, and July 24, 2000.
[3] The hearing took place on October 10, 2002. Subsequently, the Registrar ordered that the trade-mark ECLIPSE be expunged on the basis that there was not enough evidence establishing that the mark had been used in association with ladies' sportswear, even though the evidence adduced by the applicant did establish that the mark had been used in association with sportswear.
ANALYSIS
[4] According to the Federal Court of Appeal in Molson Breweries, a Partnership v. John Labatt Ltd. (2000), 5 C.P.R. (4th) 180, the standard of review applicable to a decision by the Registrar of trade-marks is that of reasonableness, unless there is new evidence filed before the Court that could materially affect the Registrar's decision; in which case the applicable standard of review is that of correctness.
[5] In this case, the applicant adduced new evidence in support of its appeal, namely the affidavit of Subhash Khanna, buyer for the applicant, to which it attached as exhibits invoices, drawings and photos, and the affidavit of Tannis Taylor, buyer for the SAAN Stores Ltd. chain during the relevant period.
[6] Would this new evidence have materially affected the Registrar's decision?
[7] In Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62, Thurlow J.A. of the Federal Court of Appeal decided that merely stating that a mark is used in Canada is not sufficient to prove its use. He wrote at page 66:
What s-s. 44(1) requires is an affidavit or statutory declaration not merely stating but "showing", that is to say, describing the use being made of the trade mark within the meaning of the definition of trade mark in s. 2 and of use in s. 4 of the Act. The subsection makes this plain by requiring the declaration to show with respect to each of the wares and services specified in the registration whether the trade mark is in use in Canada and if not the date when it was last used and the reason for the absence of such use since that date. The purpose is not merely to tell the Registrar that the registered owner does not want to give up the registration but to inform the Registrar in detail of the situation prevailing with respect to the use of the trade mark so that he, and the Court on appeal, can form an opinion and apply the substantive rule set out in s- s. 44(3).
[8] In my opinion, the affidavit of Mr. Khanna does not contain any evidence showing that the ECLIPSE trade-mark was in use in Canada in association with ladies' sportswear during the period in question.
[9] Mr. Khanna states that the mark has been in use in Canada in association with ladies' sportswear. He also states that the applicant sold such garments to two distributors, but the invoices filed in support of these statements do not indicate in any way that the styles sold were ladies' sportswear, nor that they bore the ECLIPSE trade-mark. The appearance of the name ECLIPSE on these invoices refers to the applicant's name and not to the trade-mark on the garments.
[10] The applicant submits that, according to Anissimoff & Associates v. Ewa Trading International Inc. (2001), 16 C.P.R. (4th) 404, it is not necessary for the invoices to refer to the trade-mark. In that matter, though, the trade-mark owner had also provided samples of packaging bearing the mark.
[11] In this matter, no other evidence has been filed by the applicant indicating or illustrating the use of the ECLIPSE mark in association with ladies' sportswear.
[12] The invoices refer to different styles of garments, drawings of which have been filed into the record, but none of these drawings indicate that the mark ECLIPSE should be found on the garments. Moreover, there is nothing to suggest that these drawings, used by the manufacturer to make the garments, were seen by anyone other than the registered owner.
[13] Further, the garments worn by the woman in the photos filed in support of the affidavit do not bear the same style numbers as those appearing on the invoices. Therefore, there is no evidence that these styles were on the market during the relevant period.
[14] Also, Mr. Khanna's statement that the applicant sold sportswear in its store, Yaar, from 1997 to 2000 is too vague to prove use because it does not specifically state that what was being sold was ladies' sportswear. His statement that 75% of the store's clients were women is not relevant to the issue of use because many women buy clothing for men.
[15] Mr. Khanna's affidavit refers to a licensing agreement dated October 30, 1994, between the applicant and Trio Selection Inc. as evidence of the mark's use in Canada in association with ladies' sportswear. According to Mr. Khanna, Trio Selection Inc. sold the applicant's ladies' sportswear to Provigo Distribution Inc. under this licence.
[16] Section 50 of the Act provides that it is only if, according to the licensing agreement, the owner retains direct or indirect control of the character or quality of the wares, that the use, advertisement or display of the trade-mark in Canada by the licensee will be deemed to have the same effect as the use of the mark by the owner in Canada.
[17] There is no clause providing for control of the quality of the wares nor for the use of the mark by the applicant in its licensing agreement with Trio Selection Inc. Further, it did not file any evidence that it exercised direct or indirect control of the use of the mark by the licensee.
[18] Moreover, the presumption of control found in subsection 50(2) of the Act does not apply to the applicant because it did not adduce any evidence that a public notice had been given that it was the owner of the mark and that the use of the mark by Trio Selection Inc. was a licensed use.
[19] The sale of wares bearing the applicant's trade-mark by Trio Selection Inc. can therefore not be used as proof of use of the mark by the applicant in Canada.
[20] Similarly, the statement in the affidavit of the buyer, Ms. Taylor, only shows that she bought garments with the ECLIPSE mark directly from the applicant and that she sold these garments to women. It does not follow that this was ladieswear.
[21] In short, the evidence filed by the applicant before the Court and before the Registrar does nothing more than state - it does not show - that it used the ECLIPSE trade-mark in association with ladies' sportswear in Canada. According to Plough, supra, this is not sufficient to prove use of a mark.
[22] I find that the new evidence filed into the record could not have materially affected the Registrar's decision; the applicable standard of review is therefore that of reasonableness.
[23] I am persuaded that the Registrar's decision was reasonable. I disagree with the applicant's suggestion that the Registrar erred in fact. It submits that the Registrar should have known that sportswear for men and women is often the same and therefore unisex. The case law on this subject is clear: the Registrar cannot take notice of what constitutes the ordinary course of business. It is therefore necessary that the owner of the mark explain what the ordinary course of business is in its field (S.C. Johnson & Son Inc. v. Registrar of Trade-marks (1981), 55 C.P.R. (2d) 34 (F.C.)).
[24] I also consider that it was reasonable for the Registrar to consider the fact that there was no connection between the use of the mark and the items identified on the invoices as a relevant piece of evidence. I find that, based on the evidence before this Court and the Registrar, it is entirely possible that these invoices were for sales of menswear.
[25] For these reasons, the appeal is dismissed.
ORDER
THE COURT ORDERS that the appeal be dismissed.
"Danièle Tremblay-Lamer"
Judge
Certified true translation
Kelley A. Harvey, BA, BCL, LLB
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-599-03
STYLE OF CAUSE: ECLIPSE INTERNATIONAL
FASHIONS CANADA INC.
Applicant
and
SHAPIRO COHEN
Respondent
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: April 20, 2004
REASONS FOR ORDER AND ORDER: JUSTICE DANIÈLE TREMBLAY-LAMER
DATE OF REASONS: April 26, 2004
APPEARANCES:
Claudette Dagenais FOR THE APPLICANT
Chantal Bertosa
Teresa Martin FOR THE RESPONDENT
SOLICITORS OF RECORD:
Dagenais & Associés FOR THE APPLICANT
Montréal, Quebec
Shapiro Cohen FOR THE RESPONDENT
Ottawa, Ontario