T-1540-79
Aerosol Fillers Inc. (Appellant)
v.
Plough (Canada) Limited (Respondent)
Trial Division, Cattanach J.—Ottawa, September
4 and 11, 1979.
Trade marks — Expungement — Appeal from decision of
Registrar of Trade Marks allowing mark "PHARMACO" to
remain on register — Evidence constituting "use" — Unsub
stantiated statement of use is not acceptable — Allegation of
use subsequent to date of notice is not permissible evidence —
Registrar directed to expunge registration — Trade Marks
Act, R.S.C. 1970, c. T-10, s. 44.
This is an appeal from a decision of the Registrar of Trade
Marks, following a notice given by him pursuant to section
44(1) of the Trade Marks Act at the instance of the appellant
and consideration by him of an affidavit of the respondent, to
allow the respondent's registration of the mark "PHARMACO"
to remain on the register. Counsel for the appellant submitted
that paragraph 2 of the affidavit of the respondent's president
is not evidence of use at all but that the categorical statement
that the trade mark is used is a conclusion of law that is not the
function of the affiant to make. Secondly, the language of
paragraph 2 of the affidavit is only susceptible of being an
allegation of use after the date of notice under section 44 and
accordingly there was no evidence of use prior to that date
which is the material time during which user must be
established.
Held, the appeal is allowed. The bare allegations in para
graph 2 of the affidavit that the respondent "is ... using" and
"was ... using the registered trade mark PHARMACO" are
conclusions of law which the affiant was not entitled to make
and swear to as fact. To do this is to usurp the functions of the
Registrar or of this Court in appeal from the Registrar. The
allegation in paragraph 2 of the affidavit that the respondent
"is currently using" its registered trade mark can only mean
that it is subsequent to the date of notice and, as such, is not
permissible evidence. The allegation that the registered owner
"was on September 7, 1978 using the registered trade
mark ..." was that the mark was being used on the date of the
notice but is not an unequivocal allegation of use prior to the
date of notice which is the material time. The allegations in an
affidavit should be more precise and should not be susceptible
of more than one interpretation. A bare unsubstantiated state
ment of use is not acceptable and an allegation which is
ambiguitas patens in an affidavit renders that affidavit equally
unacceptable.
APPEAL.
COUNSEL:
S. Godinsky, Q.C. for appellant.
C. Kent for respondent.
SOLICITORS:
Greenblatt, Godinsky & Uditsky, Montreal,
for appellant.
Burke-Robertson, Chadwick & Ritchie,
Ottawa, for respondent.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an appeal under section
56 of the Trade Marks Act, R.S.C. 1970, c. T-10,
from a decision of the Registrar of Trade Marks
dated January 29, 1979 whereby, following a
notice dated September 7, 1978 given by him
pursuant to section 44(1) of the Act at the
instance of the appellant by a letter dated July 6,
1978 and consideration by him of an affidavit
sworn on November 6, 1978 and filed with the
Registrar on November 14, 1978, he, the Regis
trar, decided to allow the respondent's registration
on November 6, 1959 under number 115,881 of
the mark PHARMACO in association with "Phar-
maceutical preparations" to remain on the
register.
Section 44 of the Act provides as follows:
44. (1) The Registrar may at any time and, at the written
request made after three years from the date of the registration
by any person who pays the prescribed fee shall, unless he sees
good reason to the contrary, give notice to the registered owner
requiring him to furnish within three months an affidavit or
statutory declaration showing with respect to each of the wares
or services specified in the registration, whether the trade mark
is in use in Canada and, if not, the date when it was last so in
use and the reason for the absence of such use since such date.
(2) The Registrar shall not receive any evidence other than
such affidavit or statutory declaration, but may hear represen
tations made by or on behalf of the registered owner of the
trade mark or by or on behalf of the person at whose request
the notice was given.
(3) Where, by reason of the evidence furnished to him or the
failure to furnish such evidence, it appears to the Registrar that
the trade mark, either with respect to all of the wares or
services specified in the registration or with respect to any of
such wares or services, is not in use in Canada and that the
absence of use has not been due to special circumstances that
excuse such absence of use, the registration of such trade mark
is liable to be expunged or amended accordingly.
(4) When the Registrar reaches a decision as to whether or
not the registration of the trade mark ought to be expunged or
amended, he shall give notice of his decision with the reasons
therefor to the registered owner of the trade mark and to the
person at whose request the notice was given.
(5) The Registrar shall act in accordance with his decision if
no appeal therefrom is taken within the time limited by this Act
or, if an appeal is taken, shall act in accordance with the final
judgment given in such appeal.
The legislative purpose and object of section 44
has been the subject of exposition by Thorson P. in
Re Wolfville Holland Bakery Ltd. ((1965) 42
C.P.R. 88) and by Jackett P. (as he then was) in
The Noxzema Chemical Co. of Canada Ltd. v.
Sheran Manufacturing Ltd. ([1968] 2 Ex.C.R.
446) and in Broderick & Bascom Rope Co. v.
Registrar of Trade Marks ((1970) 62 C.P.R.
268).
Basically this legislative scheme was introduced
in 1953 to provide a simple and expeditious proce
dure which had not theretofore existed for clearing
the register of entries of trade marks which are not
bona fide claimed by their owners as active trade
marks either at the initiative of the Registrar or at
the request of any person after three years from
the date of registration of a mark.
In the present instance, as the appellant herein
so requested, the Registrar despatched a notice
under section 44 to the respondent to which the
respondent replied by filing an affidavit alleging
user of its registered trade mark and upon the
basis of the allegations therein the Registrar
reached the decision that the trade mark ought not
to be expunged.
The material part of the affidavit, sworn on
November 6, 1978 (the 19th anniversary of the
registration of the trade mark) and filed with the
Registrar on November 14, 1978 is paragraph 2
thereof which reads:
2. THAT Plough (Canada) Limited is currently using and was
on September 7, 1978 using the registered trade mark PHAR-
MACO in the normal course of trade in Canada in association
with pharmaceutical preparations.
Immediately following the conclusion of para
graph 2 the legend, FURTHER AFFIANT SAYETH
NOT appears and that legend is accurate. Para
graph 2 of the affidavit as quoted above was the
only material before the Registrar upon which to
predicate his decision.
The affiant had identified himself as the presi
dent of the respondent in turn identified as the
registered owner of the trade mark in paragraph 1
and as such swore to paragraph 2 on the basis of
personal knowledge.
Clearly the sole and simple issue in this appeal is
whether the affidavit supplied by the registered
owner constituted evidence which would justify the
Registrar concluding as he did that the trade mark
was in use and accordingly should not be
expunged.
Counsel for the appellant advanced two conten
tions with respect thereto.
His first contention was that paragraph 2 of the
affidavit, as is quoted above, is not evidence of use
at all but that the categorical statement that the
trade mark is used is a conclusion of law that is
not the function of the affiant to make.
If the first broadside contention should not be
successful counsel for the appellant secondly con
tended that the material time with respect to
which evidence of use should be adduced is antece
dent to the date of the notice under section 44,
which in this instance was September 7, 1978, and
that the language of paragraph 2 of the affidavit is
only susceptible of being an allegation of use after
that date and accordingly there was no evidence of
use prior to that date which is the material time
during which user must be established.
I am in agreement with the contention on behalf
of the appellant that what constitutes "use", for the
purpose of section 44 of the Trade Marks Act is as
defined in section 2 and section 4(1) of that Act'
and that any conclusion as to whether any given
set of facts constitutes "use" as so defined is a
conclusion of law.
This has been so held by Gibson J. in The
Molson Companies Ltd. v. Halter ((1977) 28
C.P.R. (2d) 158) and Thurlow J. (as he then was)
in Porter v. Don the Beachcomber ((1967) 48
C.P.R. 280).
Gibson J. in The Molson Companies Ltd. v.
Halter (supra) after first stating that "use" under
the Trade Marks Act has been judicially defined
and citing authorities in which the word has been
so defined said at page 177:
In essence, in order to prove "use" in Canada of a trade
mark for the purpose of the statute, there must be a normal
commercial transaction in which the owner of the trade mark
completes a contract in which a customer orders from the
owner the trade mark wares bearing the trade mark which
wares are delivered by the owner of the trade mark pursuant to
such contract to such customer. In other words, as s. 4 of the
Act prescribes, the "use" must be "in the normal course of
trade" at the time of the transfer of the property in or
possession of such wares.
Since what constitutes use of a trade mark as
defined in the Trade Marks Act is a question of
law it follows the bare allegations in paragraph 2
of the affidavit that the respondent "is ... using"
and "was . .. using the registered trade mark
PHARMACO" are conclusions of law which the
affiant was not entitled to make and swear to as a
fact. For the affiant to do this is for the affiant to
usurp the functions of the Registrar or of this
Court in appeal from the Registrar.
'2....
"use" in relation to a trade mark, means any use that by
section 4 is deemed to be a use in association with wares or
services;
4. (1) A trade mark is deemed to be used in association with
wares if, at the time of the transfer of the property in or
possession of such wares, in the normal course of trade, it is
marked on the wares themselves or on the packages in which
they are distributed or it is in any other manner so associated
with the wares that notice of the association is then given to the
person to whom the property or possession is transferred.
Reverting to the analogy of pleading what the
affiant should have done was to establish facts
from which the conclusion of use would follow
rather than to make that conclusion himself which
is the very question that the Registrar and the
Court must decide.
This alone would effectively conclude the appeal
but because of the view I hold respecting the
responsibility imposed on the Registrar by section
44 I do not consider the second contention raised
by counsel for the appellant to be alternative to the
first contention but rather that the two contentions
are cumulative in their effect.
It was held by Walsh J. in Parker-Knoll Ltd. v.
Registrar of Trade Marks ((1977) 32 C.P.R. (2d)
148) at page 153 particularly that evidence of use
should be limited to evidence of use prior to the
giving of the notice by the Registrar.
That being so the allegation in paragraph 2 of
the affidavit that the respondent "is currently
using" its registered trade mark can only mean
that it is being used concurrently with the date of
the jurat, which is November 6, 1978 and is
subsequent to the date of the notice which is
September 7, 1978. Therefore the allegation of use
is an allegation of use subsequent to the date of the
notice and is not permissible evidence.
Accordingly there remains only the allegation
that the registered owner "was on September 7,
1978 using the registered trade mark ...". Taking
that language in its clear sense it means that the
trade mark was being used on September 7, 1978,
which is the date of the notice, but it is not an
unequivocal allegation of use prior to September 7,
1978 which is the material time. The allegations in
an affidavit should be precise and more particular
ly so with respect to an affidavit under section
44(2) because that is the only affidavit to be
received. It should not be susceptible of more than
one interpretation and if it is then the interpreta
tion adverse to the interest of the party in whose
favour the document was made should be adopted.
By section 44 the Registrar is not permitted to
receive any evidence other than the affidavit and
his decision is to be made on the material therein.
The allegations are not subject to the crucible of
cross-examination and contradictory affidavits are
prohibited.
These circumstances, in my view, place upon the
Registrar a special duty to insure that reliable
evidence is received and that a bare unsubstantiat
ed statement of use is not acceptable and an
allegation which is ambiguitas patens in an affida
vit renders that affidavit equally unacceptable.
For the reasons expressed above I have conclud
ed that the Registrar has not discharged this duty
and that there was no evidence before him to
justify his decision.
It therefore follows that the appeal must be and
is allowed with costs against the respondent and
the Registrar is directed to expunge the registra
tion.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.