T-4929-81
Union Electric Supply Co. Limited (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Mahoney J.—Ottawa, April 14 and
15, 1982.
Trade marks — Appeal from decision of Registrar to
expunge the appellant's trade mark pursuant to subs. 44(3) of
the Trade Marks Act — Appellant's affidavit established that
the trade mark was displayed in and about the registrant's
various premises where registrant's wares were offered for sale
— Price tags bearing the trade mark were affixed to the
registrant's wares at the time of the sale — Deponent was in a
position in terms of experience and office to know whereof he
deposed — Registrar held that registrant failed to "show" that
the trade mark was in use at the material time because the
registrant's affidavit contained only unsubstantiated state
ments of use without producing any "reliable" evidence —
Whether the Registrar erred in his decision on the evidence
before him — Appeal allowed — Trade Marks Act, R.S.C.
1970, c. T-10, ss. 4(1), 44.
APPEAL.
COUNSEL:
David E. Clarke and Michael A. Holowack
for appellant.
Judith McCann for respondent.
SOLICITORS:
Gowling & Henderson, Ottawa, for appellant.
Deputy Attorney General of Canada for
respondent.
The following are the reasons for judgment
rendered in English by
MAHONEY J.: This appeal arises as a result of
the respondent's decision to expunge the appel
lant's trade mark, registration no. 195,431, UNION
LIGHTING CENTRE/CENTRE D'ECLAIRAGE UNION,
pursuant to subsection 44(3) of the Trade Marks
Act, R.S.C. 1970, c. T-10.
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.
The respondent concedes that, on the evidence
before the Court, the appeal should be allowed
except as to electric blankets. The appellant urges
that the respondent erred in his decision on the
evidence before him and that a judgment on that
issue is most desirable in view of the large number
of decisions which the respondent appears to have
made on a similar basis, some 50 of which are said
to be in process of appeal to this Court. The
appellant says, entirely reasonably, that no appel
lant to the Court is likely to limit its evidence on
appeal to that similar to what the respondent
found insufficient here if it can find additional
evidence.
I accept the appellant's point. There is absolute
ly no justification in putting a trade mark owner to
the expense and trouble of showing his use of the
trade mark by evidentiary overkill when it can be
readily proved in a simple, straightforward fash
ion. Use must be shown, not examples of all uses.
The first affidavit submitted by the appellant
was clearly inadequate in light of the judgment of
the Federal Court of Appeal in Plough (Canada)
Limited v. Aerosol Fillers Inc.' The respondent
quoted that judgment at some length in his deci
sion, including the passage, appearing at page 684,
which follows:
What subsection 44(1) requires is an affidavit or statutory
declaration not merely stating but "showing", that is to say,
describing the use being made of the trade mark within the
meaning of the definition of "trade mark" in section 2 and of
"use" in section 4 of the Act. The subsection makes this plain
by requiring the declaration to show with respect to each of the
wares and services specified in the registration whether the
trade mark is in use in Canada and if not the date when it was
last used and the reason for the absence of such use since that
date. The purpose is not merely to tell the Registrar that the
registered owner does not want to give up the registration but
to inform the Registrar in detail of the situation prevailing with
respect to the use of the trade mark so that he, and the Court
on appeal, can form an opinion and apply the substantive rule
set out in subsection 44(3).
The respondent then fairly summarized the ma
terial evidence contained in the appellant's second
affidavit as follows:
In the second affidavit, dated September 9, 1980, Mr. Hallarn
states that the trade mark UNION LIGHTING CENTRE/CENTRE
D'ECLAIRAGE UNION, was employed by the registrant in
Canada in association with all of the wares specified in the
registration except electric blankets, at the date of the Section
44 notice. Mr. Hallarn explains that the said trade mark was
displayed in and about the various premises of the registrant
where the registrant's wares were offered for sale and sold to
the public. The affiant also states that price tags bearing the
trade mark were affixed to the registrant's wares at the time of
sale in such a manner that the attention of the purchaser would
be drawn to the said trade mark. Exhibit A of the affidavit to
(sic) shows the manner in which the trade mark was applied to
the wares. It is a sample price tag bearing the trade mark
UNION LIGHTING CENTRE/CENTRE D'ECLAIRAGE UNION. In
conclusion, the affiant states that with the exception of electric
blankets all of the wares listed in statement of wares were
available and were sold in association with the said trade mark
at all material times.
The section 44 notice was issued within the 6 years
of Hallarn's experience.
The respondent held:
This second affidavit fails to fulfill the requirements of subsec
tion 44(1). The registrant fails to "show" with respect to
'[ 1981 1 1 F.C. 679.
"each" of the wares specified in the registration that the trade
mark UNION LIGHTING CENTRE/CENTRE D'ECLAIRAGE UNION
was in use in Canada in the normal course of trade prior to and
as of the date of the Section 44 notice.
In Section 44 proceedings the registrant bears the onus of
"showing", as opposed to merely "stating", that the trade mark
is being used within the meaning of Sections 2 and 4 of the
Trade Marks Act. It is my opinion that the use of the word
"showing" in subsection 44(1) imposes upon the registrant the
responsibility to produce reliable evidence from which the
Registrar can draw conclusions and render a decision concern
ing use of the trade mark. The registrant's affidavit is clearly
inadequate in this respect as it contains only unsubstantiated
statements of use without producing any reliable evidence such
as sample invoices which show sales of each of the wares prior
to the date of the Section 44 notice or sales figures for the time
period just prior to the date of the notice. The inclusion of the
sample price tag marked Exhibit A only shows use of the trade
mark as it was applied to the wares themselves. The sample
price tag does not confirm that each of the registered wares
were transferred to customers in Canada in the normal course
of trade or sold on the export market. The absence of "reliable"
evidence does not allow me to conclude that the said trade
mark was in use prior to and as of the date of the Section 44
notice.
The respondent's reference to "reliable evi
dence" appears founded on the following passage
from the trial judgment in the Plough case, 2 where
Mr. Justice Cattanach observed:
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 unsubstantiated statement of use is not acceptable and
an allegation which is ambiguitas patens in an affidavit renders
that affidavit equally unacceptable.
There is no patent ambiguity in the second affida
vit and no intimation in the respondent's decision
as to why he found it not to be reliable evidence.
Use of a trade mark is defined by subsection
4(1) of the Act.
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
2 [1980] 2 F.C. 338 at p. 344.
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.
A tag bearing the trade mark affixed to the wares
at the time of sale would seem clearly to be a use
of the trade mark "in a manner so associated with
the wares that notice of the association is then
given to the person", (i.e., the customer), "to
whom the property or possession is transferred".
When the deponent expressly premised his knowl
edge of the use on the practice he observed while
working at the appellant's retail outlets in Ottawa
and Toronto, the respondent, with respect, erred
when he found that transfers to customers in
Canada in the ordinary course of trade was not
proved.
The deponent's enumeration of the particular
wares sold with the tags attached was competent
evidence of their use in association with each of
those wares; it was not a bald statement of use of
the sort found unacceptable by the Court of
Appeal. The judgment must be understood in its
context. The affidavit there stated only:
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.
That is what was held not to "show" use of a trade
mark in Canada.
The respondent was not justified in character
izing the evidence as not reliable simply because
he would have liked more evidence which, it turns
out, was available. Anyone charged with the re
sponsibility of making a judicial decision is often
confronted with having to do so on the basis of less
evidence than he would like. It remains that the
only evidence the respondent had, while less than
he apparently would have liked, was reliable, as I
understand that ordinary English word. The depo-
nent was manifestly in a position, both from the
point of view of his experience with the appellant
and his office, to know whereof he deposed. That
evidence also established unequivocally that the
trade mark was in use in Canada at the material
time in association with the specific wares for
which it had been registered, other than electric
blankets.
The type of evidence necessary to "show" use of
a trade mark in Canada will doubtless vary from
case to case depending, to some extent, on the
nature of its owner's business, e.g., manufacturer,
retailer or importer, and merchandising practices.
Perhaps the sort of evidence the respondent would
have accepted here is needed in some cases; how
ever, he erred in rejecting the evidence he had here
as insufficient and unreliable.
The appellant was required, in responding to the
section 44 notice, to show use of the trade mark
"with respect to each of the wares" specified in the
registration. The appeal will be allowed except as
to electric blankets.
JUDGMENT
The appeal is allowed subject to the amendment
of trade mark registration no. 195,431 by deletion
of "electric blankets" from the wares in associa
tion with which it is used.
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.