TRADE MARKS |
Expungement |
Ridout & Maybee LLP v. Omega SA (Omega AG)
T-2248-03
2004 FC 1703, Tremblay-Lamer J.
3/12/04
15 pp.
Registrar of Trade-marks, at request of appellant, forwarded Trade-marks Act, s. 45 notice to respondent requiring it to provide evidence of use of trade-mark with respect to each of wares within registration--In September 30, 2003 decision, hearing officer, on behalf of Registrar, deleted certain wares from registration--This was appeal from that decision-- Appellant argued use of mark shown by respondent, i.e. "Omega Electronics" differed from registered trade-mark "Omega & design", did not constitute use of trade-mark per se--Principles, situations in which use of trade-mark by licensee constituting use of trade-mark per se established in Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 (TMOB)--Hearing officer's conclusion that given difference in font size, separation of mark from word "Electronics" by oblong marks, composite image constituting use of "Omega & Design" mark per se, not unreasonable, registered mark easily perceived--Alternatively, appellant argued additional wares should be deleted on basis unrelated to sports timing industry--Act, s. 45 intended to establish simple, summary, expeditious procedure for clearing register of trade-marks not bona fide claimed by owners as active marks--Registrar's jurisdiction limited to determining whether use of mark shown, has no power to redefine statement of wares--In some cases, Court has not required use be shown in association with every ware, while in other cases, it has--Proper test combining both lines of authority: For purpose of s. 45, evidence required to show use of every ware specified in registration unless demonstrated use of particular ware(s) serving as evidence of use of entire category of wares on plain reading of registration--Swabey Ogilvy Renault v. Entreprises Krasnow Ltée/Krasnow Enterprises Ltd. (1997), 83 C.P.R. (3d) 259 (TMOB) example of case where boots not sufficient representative of broader category of shoes--This exercise conceptually different from assessing overbreadth, vagueness in wording of registration--In present instance, registration enumerating wares of scientific, technical application not for purposes of sports timing--Respondent thus failing to show use of trade-mark in association with wares described in registration because wares in question not representing all of these categories of technical, scientific applications--Hearing officer's contrary interpretation unreasonable--Appeal allowed--Trade-marks Act, R.S.C., 1985, c. T-13, s. 45 (as am. by S.C. 1993, c. 44, s. 232; 1994, c. 47, s. 200).