Date: 19980918
Docket: A-613-96
| CORAM: DESJARDINS J.A. |
| DÉCARY J.A. |
| NOËL J.A. |
BETWEEN:
BOUTIQUE LIMITÉ INC.
Appellant
- and -
THE REGISTRAR OF TRADE-MARKS
Respondent
- and -
LIMCO INVESTMENTS, INC.
Respondent
AND:
A-622-96
LIMCO INVESTMENTS, INC.
Appellant
- and -
HELLER CLARKE BLOND on behalf of BOUTIQUE LIMITÉ INC.
Respondent
- and -
THE REGISTRAR OF TRADE MARKS
Respondent
Heard at Montreal, Quebec, on Monday, September 14, 1998.
Delivered from the Bench at Montreal, Quebec, on Friday, September 18, 1998.
REASONS FOR JUDGMENT
OF THE COURT: DESJARDINS J.A.
Date: 19980918
Docket: A-613-96
| CORAM: DESJARDINS J.A. |
| DÉCARY J.A. |
| NOËL J.A. |
BETWEEN:
BOUTIQUE LIMITÉ INC.
Appellant
- and -
THE REGISTRAR OF TRADE MARKS
Respondent
- and -
LIMCO INVESTMENTS, INC.
Respondent
AND: A-622-96
LIMCO INVESTMENTS, INC.
Appellant
- and -
HELLER CLARKE BLOND on behalf of BOUTIQUE LIMITÉ INC.
Respondent
- and -
THE REGISTRAR OF TRADE MARKS
Respondent
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the Bench on Friday, September 18, 1998)
DESJARDINS J.A.
These two appeals are from a judgment of the Trial Division which confirmed the decision of the Registrar of Trade-marks ("the Registrar"). The Registrar held that the trade-mark "THE LIMITED" ("the mark"), registered in the name of Limco Investment Inc. ("Limo"), was in use in Canada during the statutory period prescribed under section 45 of the Trade-marks Act ("the Act")1 with respect to Limco"s registered services, but not with respect to its registered wares.
In court file A-613-96, the appellant Boutique Limité Inc. appeals the decision with regard to the trial judge's finding that the mark had been in use in Canada with regard to services. In court file A-622-96, the appellant Limco Investment Inc. appeals the decision with regard to the deletion of the registered wares.
These two cases were consolidated and heard together. One judgment will therefore be rendered and will be filed in both cases.
The mark "THE LIMITED" covered the following wares:
| women"s and misses" clothing, namely, dresses, coats, skirts, slacks, blouses, shirts, scarves, belts, hats, underwear, hosiery and shoes |
and the following services:
| retail women"s clothing store services |
The wares (court file A-622-96)
The Registrar was not satisfied with the evidence before him since the affiants had simply stated that the mark was used in relation to the wares without demonstrating it. In particular, they had failed, in his view, to specify which particular goods had been shipped to Canada. The evidence, moreover, did not cover all of the wares listed in the registration.
Before the trial judge, Limco filed ten further affidavits for the purpose of establishing the sale in Canada of the wares in question. The trial judge, however, did not deal with this new evidence as he was of the impression that "Limco [had] concentrated on fighting Boutique"s attack on the services issue". It is, therefore, incumbent upon us to examine this new evidence.
We are all of the view that this evidence, considered alone or together with that which was before the Registrar, does not establish the sale of any of the enumerated wares in the normal course of trade2 during the relevant period.3 The Registrar made no reviewable error with regard to the affidavits before him. With regard to the new affidavits, we note a consistent lack of precision with regard to the dates each ware would have been sold. Moreover, customers, such as Ms. Orna Hilberger and Sabina Sternthal, make it clear the goods they bought were purchased in the United States. Statements from employees such as Ms. Dana Calvert, Leslie D. Beeman, Michelle Carlson, Jerelyn Kjellsen and Christine B. Alflen contain vague affirmations about itemized wares sold by phone without providing the Court with supportive documents establishing the specific wares sold or shipped to Canada and the date of sale or shipment. This is particularly evident with regard to Ms. Calvert. The fact that she worked for Limco since 1984, i.e. before the cutting date of January 21, 1991, does not, in itself, dispense her from establishing the sale of specific wares during the relevant period. In other instances related by the affiants, it is far from being clear that the sale occurred in Canada at all. What they say is that Canadian shoppers have gone to the United States to buy the goods in question and that delivery was arranged. In her affidavit, Ms. Kjellsen attests that sales were made to Canadians who called from their homes in Canada. But these statements do not indicate the date of purchase and since Ms. Kjellsen has been an employee of the Limited Store since 1992, those sales could not have occurred prior to notice being given. The same applies with regard Ms. Christine B. Alflen who became an employee in August 1993.
We therefore conclude that Limco has not met its burden of demonstrating use of its mark in Canada with regard to its wares during the relevant period.
This appeal in court file A-622-96 will therefore be dismissed. Costs will be determined in court file A-613-96.
The services (court file A-613-96)
The trial judge confirmed the decision on the basis that it was justified having regard to the evidence which was before the Registrar.
The evidence before the Registrar consisted of affidavits of two officers of Limco, Messrs. Jones and Schultze.
These affidavits suggested that although Limco had no stores in Canada, Canadian customers regularly phoned different The Limited Stores in the United States and placed orders for goods which were subsequently delivered to them at their home addresses in Canada. The affidavits also indicated that Limco provided credit card services for a number of Canadian customers in association with the trade-mark THE LIMITED and that The Limited Stores Inc. performed warranty and refund services for Canadian customers.
The Registrar made reference to the decision of Addy J. in Saks & Co. v. Canada (Registrar of Trade Marks)4 and then he said:5
| Although I would have been inclined to amend the description of the registered owner"s services to restrict it to the actual services performed in Canada, Mr. Justice Addy in the Saks case did not impose such a restriction. The registration is therefore maintained for services. |
The Registrar erred in his understanding of the Saks decision.
Saks is a case where the use of wares in Canada was conclusively found to exist. What Saks establishes is that when an owner, who does not operate a store in Canada, wishes to prove the use of his mark with regard to "retail department store services" he must bring before the Registrar or the judge evidence of a sufficient character so as to allow the decider to determine whether "retail department store services" are offered. We need not rule on whether Saks was correctly decided. As will be explained below, there is simply not enough evidence in this case to attract any comparison with the factual situation in Saks.
Considering that a sale to a Canadian in the United States does not amount to use of a mark in the normal course of trade in Canada and that Limco had no stores in Canada, the only sales possible were through phone orders. Having deleted the wares from the registry as a result of the owner not having established the use of any of its registered wares in Canada during the relevant period, the Registrar was prevented from inferring that the use of a phone service had occurred in Canada or that credit had been extended on a LIMITED credit card with regard to these wares.
What remained was the delivery in Canada of a ware bought in the United States or a refund in relation to a sale which occurred in the United States. The evidence Limco brought with regard to delivery consisted of two pickup records, one dated August 16, 1990, and the other with an illegible date, bearing the name of United Postal Services and not the mark of Limco. Refund is insufficient to justify a registration for "retail women"s clothing store services" in Canada.
Finally, Limco brought before the trial judge evidence with regard to the publicity it carried through various well-known fashion magazines. This, in itself, is also insufficient to maintain the existence of the services claimed in the register. It has been established that advertising the trade-mark in publications which circulate in Canada does not constitute use of the trade-mark in Canada within the meaning of the Act.6
This appeal in court file A-613-96 will therefore be allowed, the decisions of the Trial Division and of the Registrar will be set aside and registration number 262,055 will be expunged in toto.
There shall be, in court files A-613-96 and A-622-96, one set of costs here and below.
"Alice Desjardins"
J.A.
__________________1R.S.C. 1985, c. T-13, section 45. Notice was given by the Registrar to Limco on January 21, 1991, at the request of Boutique Limité Inc.
3John Labatt Ltd. v. Rainier Brewing Co. (1984), 80 C.P.R. (2d) 228 (F.C.A.); Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 17 C.P.R. (3d) 237 (F.C.A.); Boutiques Progolf Inc. v. Marks & Clerk (1993), 54 C.P.R. (3d) 451 (F.C.A.).
4(1989), 24 C.P.R. (3d) 49 at 60-61 (F.C.T.D.).
6Parker-Knoll Ltd. v. Registrar of Trade Marks (1977), 32 C.P.R. (2d) 148 at 150 ( F.C.T.D.).