SECTION 45 PROCEEDINGS
TRADE-MARK: THE SOURCE
REGISTRATION NO. 254,543
On June 18, 1990, at the request of
Riches, McKenzie &
Herbert, the
Registrar
forwarded a Section 45
notice to Source
Telecomputing Corporation, the registered
owner of the above-referenced trade-mark registration.
The trade-mark THE SOURCE was registered on January 2, 1981 for use in
association with computor telephone access information services.
In response to the
Registrar's notice, the registrant furnished the affidavit of
Kent D. Stuckey. Both parties filed written submissions; no oral hearing was
conducted.
In his affidavit, Mr. Stuckey states that his company sells computer telephone
access information services to both businesses and individuals; the trade-mark
THE SOURCE is used in association with
these services by displaying it on the on-
line screen which is viewed by subscribers. A copy of the on-line screen which
Canadian subscribers currently see when they log on to THE SOURCE information
service was submitted as Exhibit B. Mr. Stuckey further states that the trade-
mark THE SOURCE has been used in Canada since before the Section 45 notice date
and such use continues to date. As of June 1, 1990, affiant states that there
were 255 Canadian subscribers utilizing THE SOURCE services.
In my opinion, the evidence filed
clearly shows use of subject trade-mark in
association with computer telephone access services as the trade-mark THE
SOURCE
is displayed in the performance of subject services as illustrated on the copy
of the on-line screen submitted as Exhibit B. The mark is shown in the
introduction to the services and also
appears in three of the menu choices
numbered 3, 4 and 10.
As to use at the material date, affiant states the materials attched as Exhibit
B are representative of one way in which
the trade-mark has been used in Canada
since before June 18, 1990. The requesting party argues that the copy of the on-
line screen is
dated August 16, 1990, which is subsequent to the notice date and
therefore is irrelevant as evidence. The
requesting party further submits that
there is no evidence showing use of the trade~mark since before June 18, 1990 as
claimed by registrant. I respectfully disagree with the requesting party.
Although the on-line screen copy is
dated August 16, 1990, some of the content
relates to use of
THE SOURCE at
dates prior to the issuance of the Section 45
notice. Specifically, the WELCOME mode reproduced in this copy refers to
members
having access to THE SOURCE computer services until August 1, 1989 at which
time
another information service would be combined therewith. Under the heading
Choice 9:, August 1, 1989 is quoted as
the effective date for new rates and terms
for all members of THE SOURCE. Furthermore, the fact that as of June 1, 1990
there were 255 Canadian subscribers confirms that the services were being
rendered in Canada at or immediately prior to the material date. In my opinion,
the foregoing is sufficient to conclude that subject mark was in use at the
material date pursuant to S. 4(2) of the Trade-marks Act.
The requesting party also argues that
the affidavit was not filed by the
registrant, but by the alleged present owner of the trade-mark, no recordal of
a change having been made in the Trade-marks Office. In the case of a change of
ownership .the new owner must establish
the date of said change by filing
sufficient documents to allow the Registrar to conclude that the evidence in
Section 45 proceedings is furnished by the registered owner, or a registered
user, or persons entitled to recordal as such. (see Marcus carrying on business
as Marcus &
Associates v. Ouaker Oats Co. of
Canada (1988) 20 C.P.R. (3d) 45).
In the present instance, Source Telecomputing Corporation merged with
CompuServe
Corp. to form CompuServe Incorporated; this merger is dated December 18, 1989.
The certificate of merger was filed in the Trade-marks Office and recorded on
January 25, 1991; this evidence establishes that the owner of this trade-mark
as
of June 18, 1990 was in fact CompuServe Incorporated. Accordingly, the
affidavit
of Kent D. Stuckey as General Counsel of CompuServe Incorporated is considered
to have been furnished by the registrant and any use shown therein is
considered
to be by the registrant.
While the requsting party may have preferred additional
evidence from the
registrant, I consider the evidence supplied to be sufficient to show use of
the
trade-mark in association with the registered services. (see Aerosol Fillers
Inc. v. Plough (Canada) Ltd., 53 C.P.R. (2d) 62 and Union Electric
Supply Co.
Ltd. v. Registrar of Trade-marks, 63 C.P.R. (2d) 56).
In view of the evidence filed in these proceedings, I have concluded that the
trade-mark was in use at the material date in Canada in relation to the
registered services and therefore, registration No. 254,543 ought to be
maintained.
Registration No. 254,543 will be maintained in compliance with the provisions of
S. 45(5) of the Trade-marks Act.