2.
Ottawa I Hull. Canada
K1A OC9
Consumer and
Corporate Affairs Canada
NOV
6 1985
vou» retetence Your file
McCarthy &
McCarthy
P.O. Box 48
Toronto-Dominion
Centre
Toronto. Ontario
M5K lE6
Gentlemen:
Re: Section 44 Proceedings
Registration No.: 230,125
TRADE MARK: DRUT & Design
27332-0861313
Norre reference Our tue
413,437
At the request of David A. Stein, acting on behalf of Eldon Industries of
Canada, Inc., the Registrar of Trade Marks issued a Section
44 notice, dated
September 10, 1984, to Faberge, Incorporated, the registered owner of
the trade mark BRUT & Design , registration No. 230,125.
The
subject
trade mark
was registered September l,
1978, for use in association
with jogging
suits.
In response to the Section 44 notice the registrant submitted the affidavit of
its President, Stanley
Frederick, dated January 29,
1985.
A written
submission
dated May 2, 1985, was
filed by the requesting party.
The
registrant
responded thereto by written
submission dated July 17.
1985.
Mr. Frederick
describes the registrant as an
international consumer
products company principally engaged in the development, manufacture and
distribution of fragrance, toiletry and
cosmetic products. The affiant
identifies BRUT as a
principal trade mark of
the registrant and asserts that the
BRUT mark has been used
in Canada
continuously since as
early as January,
13, 1965, up to the
date
of his affidavit.
Mr. Frederick
explains that the BRUT trade mark is primarily used
in connection
with a line of men's
toiletry products,
but that the registrant through its
subsidiary, Faberge of
Canada Limited,
repeatedly offers specially
priced
clothing items,
such as jogging
suits, through promotional
inserts which are
found inside BRUT products.
Mr. Frederick further explains
that
the
promotional insert
consist of order
forms which the
customer must return to a
specified address
together with a cheque
or money order and
proof of purchase
of a BRUT product.
The affiant asserts that each
jogging suit sold
in the
above-described manner clearly displays
the BRUT trade mark.
Mr. Frederick
notes that the most recent jogging suit promotion
in Canada commenced
in March,
1984 and expired December 31, 1984,
resulting in the sale
of approximately 1000
jogging suits.
Accompanying the affidavit are Exhibits A through F:
- Exhibits A1
and A2 are identified
as copies of the 1977
and 1981 Brut
jogging suit
coupons.
- Exhibit B is a promotional brochure entitled "Faberge Looks Great on
You".
The inside cover' of the brochure describes
the "Brut Track
Set"
offer and contains the illustration of a fragrance product bearing the BRUT
& Design trade mark.
- Exhibits
C1 and C2 are
identified as product
sleeves. The sleeves bear
the
BRUT & Design trade mark
and the: "Brut
Tuck Set" offer.
Canada
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3.
Consommation
et Corporations Canada
Ottawa I Hull. Canada
K1 A OC9
Consumer and
Corporate Affairs Canada
- 2 -
Votre reference Your file
Notre reference Our file
- Exhibit D is identified as a report from Marco Sales and Incentives Ltd, to Faberge Canada Limited relating to sales of BRUT jogging suits pursuant to the “Brut Looks Great on You” offer. The report covers the period extending from March 27, 1984 to October 31, 1984. Marco Sales and Incentive Ltd. is identified as the entity which handles the registrant’s jogging suit promotion.
- Exhibit
E is a photograph of a jogging suit which
bears the word BRUT on the
shirt pocket.
- Exhibit F consists of several pages of the Apri1/May 1964 issue of a
Magazine
entitled "Images”. One of the
pages contains an advertisement
promoting the “BRUT Track
Set” as well as an illustration
of a fragrance
product which
bears the Brut and Design trade mark.
The submission of the requesting party may be summarized as follows:
1.
That the use of
the word BRUT on jogging
suits is for the purpose of
promoting the
sale of the registrant’s line of
toiletry products and
an such does not constitute
use as a trade mark.
2.
That use of the BRUT
& Design trade mark on promotional
inserts and
order
forms printed on the
product sleeves of the
registrant's men's
toiletry
items does not
constitute use of the trade mark
with jogging suits. In
support of
its position the requesting party cites
Syntex Inc. v.
Apotex
Inc. (1985)
1 C.P.R. (3d) 145.
3.
That any use being
made of the BRUT & Design trade mark with
jogging suits
is being made by the third party manufacturer/distributer of the wares
and not by the registrant or
its registered user. The requesting party
speculates
that no labels were appended
to the registrant's affidavit
because in all probability
the labels contain the name
of the manufacturer
and not that of the registrant.
Furthermore, the requesting party notes
that the order
forms and/or
coupons
are not sent to the registrant but to
some third party
who then delivers the
jogging
suits to purchasers
by
return mail.
On
its behalf the registrant submits that the trade
mark BRUT appears
directly
on the wares
at the time of transfer of the
property in or
possession of the
wares in the normal course
of trade. Further,
the registrant
argues that the
BRUT trade
mark is not
used merely to decorate the
registrant's jogging suits
but so
as to distinguish
the registrant's wares
from the wares of other
traders. In
conclusion,
the registrant submits that
the appearance
of the word
BRUT on jogging suits and
on order forms for
jogging suits
constitutes use of
the trade mark by the registrant
and/or its registered user
within the meaning
of
Sect ion 4.
With regard to the requesting party's first submission I do not agree that use
of
the word BRUT on jogging suits
does not constitute use
as a trade mark. A
mark is used as a trade mark
if the owner thereof
uses it for the purpose
of
distinguishing his
wares or services
from those of others, or alternatively, if
whatever the purpose
for which the owner
uses the mark,
it does in
fact
distinguish
his wares or services
from those of
others. If the use of a
trade
mark actually distinguishes
the wares or services of the trade
mark owner from
those of other traders, it is
not relevant that the owner uses
the mark for
some other or ancilliary purpose.l
In my opinion, the appearance
of the word
1 In this
regard see Fox, Canadian
Law of Trade Marks and Unfair Competition,
2nd Edition, at page
34.
Canada
4.
Consommation
et Corporations Canada
Ottawa / Hull, Canada
K1A OC9
Consumer and
Corporate Affairs Canada
- 3 -
VD/re reference Your file
No/re reference Our file
BRUT on jogging suits constitutes use of that word as a trade mark, whatever
the intentions
of the registrant,
because such use does in fact distinguish the
registrant's jogging suits
from those of other
traders.
It should
be noted that use of
the word BRUI by itself, does
not constitute use
of the trade mark as registered, namely BRUT
& Design. Although the trade mark
as used by the registrant on its
jogging suits
retains the word BRUT
it omits
totally all of the
design features
of the registered mark. Admittedly
the word
BRUT is
an essential and predominant element of the subject trade
mark;
however, the design features are,
in my opinion, highly
distinctive components
of t
he trade mark. Furthermore,
it is the entire
figure which is the
subject
of the registration
and not just the word
BRUT.
Secondly, I find that I must also disagree with the requesting party’s
Submission
that use of the BRUT
& Design trade
mark on promotional inserts and
order forms
printed on the
product sleeves of the registrant's
men's toiletry
items does not constitute use of that trade
mark in association
with jogging
suits. In addition,
I do not believe
that the remarks of Mr. Justice
Stone in
Syntex
Inc. v. Apotex Inc., as cited by the requesting party, in any
way
support the
position enunciated by the requesting party. The question
at issue
In the Syntex case was whether the presence of the respondent’s trade mark in
the
appellant’s comparative chart
constituted use of the
respondent's trade
mark in association with tbe
appellant's wares.
No issue arose
as to whether
the presence of the appellant's
trade mark
in the comparative chart amounted to
use of that mark
with the appellant's
wares.
Section 4 of the Trade Marks Act recognizes that a trade mark is used in
association with wares if at the time of
the transfer of the
property in or
possession of such
wares anyone of the following conditions
is met:
the trade mark is marked on the wares themselves.
the trade mark is marked on the packages in which the wares are distributed.
the trade
mark is in any other manner so
associated with the wares that
notice of the association
in then given to the person to
whom the property
or possession
is transferred.
In my view,
at the time a customer
fills out the order form to
purchase a
jogging suit,
there is, by virtue of the appearance of the
BRUT & Design
trade
mark on the order
form, notice of the
association of that trade mark with the
jogging suits. The customer
is aware that he or she is
purchasing a BRUT
design jogging suit.
Finally, I do not agree with the requesting party that the use being made of
the BRUT y Design trade mark is by some third party other than the registrant
or its register
user. The only entity referred to on the
promotional materials
and order forms is Faberge. The
requesting party observes that the
order forms
are sent to a third party which then
delivers the jogging suits
to customers by
return mail. In fact,
the order forms are not mailed
to any identified third
party but are directed to “Brut
Looks Good
On You Offer"
at a specified
address.
Having reviewed
the evidence and
the written submissions of
both parties I have
concluded that the trade mark BRUT & Decision
was in use in Canada in the
normal
course of trade
prior to and as of the date
of the Section 44
notice in
association with jogging suits.
Therefore, the subject
registration ought to
be maintained.
Canada
5.
Consommation
et Corporations Canada
Ottawa I Hull, Canada
K1A OCg
Consumer and
Corporate Affairs Canada
- 4 -
Votre reference Your file
Notre reference Our file
The decision in the preceding
paragraph shall be acted upon by the Registrar if
no appeal is taken therefrom within two months as provided under the
provisions
of Section
56 of the Trade Marks
Act. If an appeal is taken, the Registrar
shall act in accordance with
the
final decision pronounced in such appeal.
J.P. D'Aoust
Senior Hearing Officer
for REGISTRAR of TRADE MARKS
/lac
c.e. David A. Stein,
5015 Yonge
Street,
Suite 902,
Willowdale, Ontario.
M2H 6C6.
Canada
Eldon 162
..