TRADE MARKS |
Expungement |
Riches, McKenzie & Herbert v. Pepper King Ltd.
T-1431-99
Lemieux J.
28/9/00
10 pp.
Appeal from Trade-marks Opposition Board's decision refusing to expunge trade mark "Volcano" in association with hot pepper sauce from Register--Board framed issue as whether trade mark as used by registrant so different from trade mark as registered that could not qualify as use of trade-mark as registered, applied test set out in Registrar of Trade Marks v. Compagnie Internationale pour l'Informatique CII Honeywell Bull, Société Anonyme et al. (1985), 4 C.P.R. (3d) 523 (F.C.A.) and found use of trade mark in compliance with Trade-marks Act, s. 4(1)--Sole issue whether Board erred when found invoices issued by respondent, registered owner, within relevant period amounting to "use" of trade mark "Volcano" in association with hot pepper sauce--Appeal allowed--Question herein whether, at time of transfer of hot pepper sauce from manufacturer to restaurants or distributors, invoices containing trade mark "Volcano" constituted notice of association between mark and wares--Question of fact to be decided on evidence adduced--Respondent's affidavit, only evidence tendered, silent on circumstances of delivery of invoices, wares--Board made two errors in finding unless clear evidence invoices not accompanying wares, reasonable to assume would be normal business practice for invoices to accompany wares when wares sold to customer: shifted evidentiary onus to requestor when entire burden clearly remaining with registered owner in Act, s. 45 proceeding; Board not entitled to assume invoices accompanied goods at time of transfer--Registrant Pepper King Ltd. did not file further affidavit in this Court on appeal and did not meet onus compelled by Act, s. 45 to establish, in clear and unambiguous way, invoices bearing mark "Volcano" met statutory requirements of Act, s. 4(1), i.e. establishing that, at time of transfer, purchaser had notice of association between mark and wares--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4(1), 45 (as am. by S.C. 1993, c. 44, s. 232; 1994, c. 47, s. 200).