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Société nationale des chemins de fer français SNCF v. Venice Simplon-Orient-Express Inc.
T-1076-95
McKeown J.
22/11/00
9 pp.
Appeal from Registrar of Trade-marks' decision in respect of Trade-marks Act, s. 45 proof-of-use proceedings--Respondent registered two trade-marks in November 1985 based on use in Canada in association with "Travel services, namely railway and passenger services"--In 1991 Registrar issuing s. 45 notice requiring respondent to provide proof of use--Respondent providing invoices having trade-marks in question thereon issued prior to issuance of s. 45 notice and directed to Canadian travel agents who acted as intermediaries between respondent, Canadian clients who wished to use rail services--Registrar decided booking service constituted "travel services, namely railway passenger services" as phrase "broad enough to encompass incidental or ancillary services such as train ticketing and train reservations or other such incidental or ancillary services"--Noted Act not distinguishing between primary, incidental, ancillary services suggesting broad interpretation of phrase, and case law seeming to indicate that as long as some members of public, consumers or purchasers receive benefit from activity, it is a service--Also decided Canadian travel agencies act as agents for respondent, so that in effect respondent provided reservation and ticketing services in Canada through these travel agencies; and that provision of such services made in relevant period because trade-marks appeared on respondent's invoices and were being used when such services being performed--Appeal dismissed--Standard of review reasonableness simpliciter--Basic requirement of trade-mark with respect to services that it distinguish services performed by person from those performed by others: Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457 (F.C.T.D.)--"Services" interpreted broadly in Saks & Co. v. Registrar of Trade Marks (1989), 24 C.P.R. (3d) 49 (F.C.T.D.)--Reasonable to find performance in Canada by travel agency of booking, reservation, ticketing services constituting performance in Canada of such services by registrant--Appellant saying no evidence of sale to ultimate consumer in respect of whether Registrar erred in finding trade-marks "Orient-Express", "Venice Simplon-Orient-Express" used in Canada by registrant in association with performance in Canada of railway passenger service at relevant period, and whether erred in finding booking, reservation, ticketing services performed in Canada in relation to railway passenger service performed in Europe constituting use in Canada by registrant of trade-marks "Orient-Express", "Venice Simplon-Orient-Express" in association with performance of "railway passenger service" in Canada--Registrar only had evidence before him regarding sales by registrant to travel agents who in turn sold to customers--Not necessary to show sale to ultimate consumer or to produce evidence trade-marks located on actual tickets--Any use of trade-mark along chain of distribution sufficient to demonstrate use--As to whether registered owner of trade-marks clearly identified as person providing services, name of registrant not required to appear in same place as document showing trade-mark in use--Evidence of single sale may well suffice so long as follows pattern of genuine commercial transaction and not seen as being deliberately manufactured or contrived to protect registration of trade-mark--No evidence respondent deliberately contriving to protect registration of trade-mark by use of invoices--No error in fact or law by Registrar; decision reasonable--Trade-marks Act, R.S.C., 1985, c. T-13, s. 45.