Date: 20040405
Docket: T-1364-03
Citation: 2004 FC 522
Ottawa, Ontario, this 5th day of April, 2004
PRESENT: THE HONOURABLE W. ANDREW MacKAY, DEPUTY JUDGE
BETWEEN:
PURAFIL, INC.
Applicant
and
PURAFIL CANADA LTD. - PURAFIL CANADA LTÉE
Respondent
REASONS FOR ORDER AND ORDER
[1] This is an application, pursuant to Rule 300 of the Federal Court Rules, 1998, SOR/98-106, as amended, by appeal under s. 56 of the Trade-Marks Act, R.S.C. 1985, c. T-13, as amended (the "Act"), from a decision dated June 5, 2003, by a hearing officer on behalf of the Registrar of Trade-marks whereby after an application by the appellant pursuant to s. 45 of the Act, the respondent's trade-mark for the word Purafil, depicted in a special design form, was maintained. At the time, the registration of the trade-mark was in relation to wares designated as "filters and permanganate pellets for use as an air deodorant".
[2] That decision was rendered after the Registrar, at the appellant's request, issued a notice on October 3, 2002, under s. 45 of the Act requiring the respondent, as registered owner of the trade-mark in issue, No. 225,434, to file evidence that the mark had been used in Canada within the 3 years prior to the notice. After considering evidence of the respondent, and the written and oral submissions of both parties, the decision on behalf of the Registrar was issued .
[3] The evidence filed by the respondent was in the form of two affidavits with exhibits, the second one admitted to correct clerical errors in the first, both by Mr. Harry Topikian, Vice-President of Operations of the respondent. Section 45 of the Act provides, in part, 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.
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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.
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[4] In this case, both parties had made some reference, in submissions to the hearing officer, to evidence submitted in s. 45 proceedings between the same parties in regard to the same trade-mark in or about 1990. The hearing officer did not consider the evidence filed in relation to the earlier hearing because it was considered not relevant to this proceeding. While the applicant urges that this earlier evidence was a part of the record concerning the registered mark, the hearing officer properly excluded it from her consideration. It was not part of the evidence included in the respondent's affidavit and exhibits filed in response to the October 2003 notice from the Registrar.
[5] The parties agree that the standard of review of a decision under s. 45 on behalf of the Registrar is that set out by Mr. Justice Rothstein, for the majority in the Court of Appeal, in relation to an appeal under s. 56 of the Act, in Molson Breweries, a Partnership v. John Labatt Ltd., (2000), 5 C.P.R. (4th) 180 at 196:
[29]...Even though there is an express appeal provision in the Trade-marks Act to the Federal Court, expertise 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.
[6] While the parties are agreed on the appropriate standard of review, they differ on its application in this case. The applicant submits the hearing officer's decision was unreasonable for the conclusions she reached in relation to the evidence were not reasonable in relation to both the wares subject to registration for use with the trade-mark in question, or alternatively for one of those wares.
[7] The key evidence of use considered in this case is set out in paragraphs 3, 4, 5, 6 and 7 of the affidavit of Mr. Topikian as follows:
3. Purafil Canada has used the trade-mark PURAFIL Design in association with the wares "filters and permanganate impregnated pallets for use as an air deodorant. As well as the services "design and planning of air handling and filtration systems" since at least as early as 1973. I set out below My Company's sales of said filters and pellets in Canada in association with the trade-mark PURAFIL Design for the periods indicated:
PERIOD SALES (in Canadian dollars)
February 1, 1997 to April, 1998 $ 111,200.00
February 1, 1998 to January 31, 2001 $ 78,360.00
February 1, 1999 to January 31, 2001 $ 82,550.00
February 1, 2000 to January 31, 2001 $ 102,680.00
4. My Company has sold said filters and pellets under the trade-mark PURAFIL Design in large quantities and continues to do so to the present date. These sales have been effected in the normal course of trade to numerous industrial and commercial business.
5. Attached to this my affidavit and marked as Exhibit "B" are representative photographs featuring the front side of typical containers for My company's pellets and filters as packaged, distributed and sold in Canada under the trade-mark PURAFIL Design for the past several years.
6. Attached to this my affidavit and marked as Exhibit "C" are representative invoices evidencing the sale of the filters and pellets aforementiond by My Company in association with the trade-mark PURAFIL Design in Canada. I confirm that the references to Media MMX" following by a number in these invoices is a reference to said filters and pellets covered by the trade-mark registration. I also confirm that the reference to the company Purafil Canada Inc. Resulted from an error by My Company in ordering its draft invoices. At all material times the sales referred to were effected by Purafil Canada Ltd.-Purafil Canada Ltée.
7. Attached to this my Affidavit and marked as Exhibit "D" is a representative "Material Safety Data Sheet" which accompanies each shipment of My Company's filters and pellets under the trade-mark PURAFIL Design. Attached to this my Affidavit and marked as Exhibit "E" is a copy of a report issued by Underwriters' Laboratories of Canada on My Company's filters and pellets aforementioned in association with the trade-mark PURAFIL Design. As will be noted, the report granted ULC and UL approval for said products.
[8] In her decision, the hearing officer makes reference in detail to the arguments of the appellant as requesting party about the conclusions that should be drawn in regard to the evidence adduced, arguments again addressed on this appeal. Those related primarily to the Exhibits filed with affidavits of Mr. Topikian, and the affidavits themselves. I accept the respondent's characterization of the hearing officer's decision as one that carefully addressed the evidence and the arguments of the appellant as the requesting party.
[9] In addition to dealing in detail with the evidence and argument, the hearing officer summarized her conclusions on the evidence as follows:
Having considered the evidence, I find that while it is true that it presents several shortcomings, in my respectful opinion, it is not patently ambiguous. The jurisprudence interpreting Section 45 of the Act has consistently established that proceedings under Section 45 are to be simple, expeditious and summary in nature and are designed solely to permit a registered owner to demonstrate that his trade-mark is in use. Contested issues of fact are to be dealt with in expungement proceedings under Section 57 of the Act and not by way of a summary Section 45 procedure. (Meredith & Finlayson v. Registrar of Trade Marks et Al., 40 C.P.R. (3d) 409.)
Here a consideration of the evidence as a whole and a fair reading of paragraphs 3, 4, 5 and 6 of the affidavit together with the exhibit material submitted as Exhibits B and C permit me to conclude that sales of the registered wares associated with the trade-mark were made during the relevant period in the manner required by Section 4(1) and Section 45 of the Trade-marks Act.
...
Concerning the sales figures provided, Mr. Topikian has indicated that they represent sales of filters and pellets in Canada in association with the trade-mark. It is true that in paragraph 10 of his affidavit he mentions that charges for analysis services are included in the sale price of filters and pellets, and that of the hundreds of customers who purchased the wares during the relevant period in excess of 40 have employed the analysis services. Consequently, although I agree with the requesting party that a portion of the sales figures would relate to "services" I find it clear that a portion would also relate to the wares. Consequently, based on the invoices and sales figures, and the statements made in the affidavit, I conclude that transfers of the registered wares occurred during the relevant period and that the use was by the registrant.
[10] I reiterate the only evidence before the hearing officer in accord with the statute, was that filed by the respondent, i.e. the affidavits of Mr. Topikian and accompanying exhibits. My task is not to reassess the evidence or to second guess the hearing officer in determining the weight to be given to the evidence. Rather, it is to consider whether the officer's conclusion based on the evidence before her was unreasonable. I am not persuaded that is so.
[11] The alternative relief sought by the appellant, that the decision be found unreasonable in relation to one of the wares for which the trade-marks was registered, i.e. in relation to "permanganate impregnated pellets for use as an air deodorant", is based on the appellant's view that none of the evidence relates specifically to those pellets as wares, at least separate and apart from "filters". Yet the evidence of Mr. Topikian by affidavit relates to the wares collectively. I am not persuaded that their separate use is the subject of the trade-mark registration. Use of the wares together is supported by the affidavit evidence, and the conclusion of the hearing officer. There is no basis to conclude one of the wares registered has not been used in the relevant period.
[12] For these reasons the following order issues.
ORDER
IT IS ORDERED that:
1. This application, an appeal from the decision of a hearing officer on behalf of the Registrar of Trade-marks in relation to proceedings under s. 45 of the Trade-Marks Act, is dismissed.
2. Costs are awarded to the respondent.
"W. Andrew MacKay"
Deputy Judge
FEDERAL COURT
Names of Counsel and Solicitors of Record
DOCKET: T-1364-03
STYLE OF CAUSE: PURAFIL, INC. v. PURAFIL CANADA LTD.
PLACE OF HEARING: TORONTO
DATE OF HEARING: Monday, March 29, 2004
REASONS FOR ORDER BY: MacKay, Deputy Judge
DATED: April 5, 2004
APPEARANCES BY:
Mr. Mark Robbins FOR PLAINTIFF / APPLICANT
Mr. Allen Israel FOR DEFENDANT /
RESPONDENT
SOLICITORS OF RECORD:
Mr. Mark Robbins
BERESKIN & PARR
Toronto, Ontario FOR PLAINTIFF / APPLICANT
Mr. Allen Israel
LAPOINTE ROSENSTEIN
Montreal, Quebec FOR DEFENDANT /
RESPONDENT
FEDERAL COURT
Docket: T-1364-03
BETWEEN:
PURAFIL, INC.
Applicant
- and -
PURAFIL CANADA LTD.-PURAFIL
CANADA LTÉE
Respondent
REASONS FOR ORDER AND ORDER