Date: 08091998
Docket: T-1801-97
IN THE MATTER OF Section 45 of the Trade-Marks Act,
R.S.C. 1970, c. T-10, as amended,
- and -
IN THE MATTER OF an appeal from a decision
of the Registrar of Trade Marks dated June 20, 1997
to expunge Canadian Trade Mark Registration No. 393, 922
for the trade mark ZIRCOTEX
BETWEEN:
GERD EISENBLATTER GmbH,
Appellant,
- and -
KENT & EDGAR and
REGISTRAR OF TRADE MARKS,
Respondents.
REASONS FOR JUDGMENT
DUBÉ J:
[1] This appeal pursuant to section 56 of the Trade-Marks Act1 ("the Act") is from the decision of a hearing officer of the Registrar of Trade-Marks ("the Registrar") dated June 20, 1996, under section 45 of the Act expunging the appellant's trade mark "ZIRCOTEX" bearing the registration no. 393,922. The Registrar found that there was no evidence of use of the mark per se during the relevant period.
[2] In his affidavit before the Registrar, Rolf Gerd Eisenblatter, Managing Director of the corporation owning the trade-mark, filed exhibits to show use of the composite mark "ZIRCOTEX-FIX". The Registrar concluded that "in using the composite mark "ZIRCOTEX-FIX" the registrant did not use the mark "ZIRCOTEX". He noted that "the letters "FIX" appear in the same size and style lettering as the word "ZIRCOTEX". He added: "In addition, the fact that a hyphen appears between the two words indicates, in my opinion, that they are intended to be read together and would therefore likely be perceived as forming a single composite trade-mark".
[3] The Registrar referred to a Federal Court of Appeal decision2 to illustrate the application of the principle that the use of a composite mark may not constitute use of the trade-mark as registered. In that case, the Court of Appeal held that in using the composite mark CII HONEYWELL BULL the registrant did not use its mark BULL. Mr. Justice Pratte said as follows:
| The problem to be resolved is not whether CII deceived the public as to the origin of its goods. It clearly did not. The real and only question is whether, by identifying its goods as it did, CII made use of its trade mark BULL. That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used. The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin. |
[4] For the purposes of this appeal, the appellant sought and obtained leave to file additional evidence and filed a second affidavit of Mr. Eisenblatter dated October 16, 1997. In his second affidavit, the affiant stated that "goods which are shipped to Canada are packed in cardboard boxes and sealed with adhesive tape on which the mark "ZIRCOTEX" is printed". He added that "Different products sold under the mark "ZIRCOTEX" are further identified by the additional words "fix" or "alu". These additions are not intended to identify source but to identify products". He explained that the term "fix" has several meanings, e.g. "swift, fast" and also "to fix something" indicating in a play of word that the product can be swiftly fixed. He added as exhibit "A" to his affidavit a photograph of a box sealed with adhesive tape ready for shipment. Marked as exhibit "B" to his affidavit, is a sample of the adhesive tape which is reproduced below.
[5] Counsel for the appellant submits that his client has remedied the defect found by the Registrar through this additional evidence. She points out that the specimen shows the mark "ZIRCOTEX" conspicuously followed by the " symbol. She submits that use of the " symbol is prima facie evidence of use of a trade-mark3. She claims that the mark "ZIRCOTEX" is clearly distinguishable from any additional portions added thereto. The term "ALU" is defined in Mr. Eisenblatter's second affidavit as "a common abbreviation of the term 'aluminum' indicating that the product has a main part made of aluminum".
[6] She states, and rightfully so, that the sole purpose of proceedings under section 45 of the Act is to discover whether or not a trade-mark is in use in Canada and to remove the "dead wood"4, namely trade-marks which have fallen into disuse. Also, that, in accordance with the jurisprudence, section 45 of the Act does not require evidentiary overkill5.
[7] On the other hand, counsel for the respondent argues, and very properly so, that the Registrar's decision is not to be interfered with lightly as he is "an official whose daily tasks involve the reaching of conclusions on this and kindred matters under the Act"6. Unless significant or substantial new evidence is submitted, the Court should be reluctant to overturn his decision7. He claims that the evidence brought in by the second affidavit is not substantial or sufficiently significant to overcome the reluctance of the Court because the affidavit is deficient in three material respects.
[8] First, the affidavit merely states that "goods are shipped to Canada in cardboard boxes". It does not particularize what goods. However, in my view, although the second affidavit could have been more precise, a reading of both affidavits makes it quite clear that the goods in question are the ones produced under the trade-mark "ZIRCOTEX".
[9] Second, the second affidavit does not provide any evidence whatsoever (such as invoices), showing that the boxes sealed with the adhesive tape have been or were ever actually shipped to Canada. As I read it, paragraph 2 of the second affidavit is sufficiently clear that the goods in question "are shipped to Canada ... in cardboard boxes and sealed with adhesive tape on which the mark ZIRCOTEX is printed".
[10] Third, while the receipts before the Registrar were found to relate to use of the mark "ZIRCOTEX-FIX" the evidence filed on appeal refers to another mark namely "ZIRCOTEX-ALU". That is true and the applicant would have been better served by filing a "ZIRCOTEX-FIX" design. Nevertheless, I do not see that discrepancy as being fatal as the second affidavit clearly defines both terms "fix" and "alu" and explains that both terms are not intended to identify the source but are additions to identify the products.
[11] Thus, while the Registrar's decision based on the first affidavit is sound, the additional evidence shows that the trade-mark in question was used in Canada during the three year period preceding the date of the notice. Of course, the second affidavit could have been more substantial and cannot by any stretch of the imagination be described as "evidentiary overkill", it is nevertheless sufficient to show that the trade-mark "ZIRCOTEX" was in use in Canada during the relevant period.
[12] The combination of both affidavits meets the practical test offered by Pratte J.A. in the Honeywell Bull case. The mark appearing on adhesive tape used for shipping purposes clearly shows "ZIRCOTEX" in one solid word followed by the " symbol to indicate that "ZIRCOTEX" is the trade-mark. The addition, in smaller character and boxed in angularly, of the abbreviation "ALU" would not confuse an unaware purchaser and lead him to believe that the goods in question are from a different origin. In that sense, the abbreviation "ALU" is unimportant. It does not take away the trade-mark "ZIRCOTEX"'s identity. Thus, the mark "ZIRCOTEX" was used in Canada at the material time.
[13] Consequently, the appeal is allowed with costs.
OTTAWA, Ontario
September 8, 1998
Judge
__________________2 Registrar of Trade-Marks v. Compagnie Internationale pour L'informatique CII Honeywell Bull S.A. (1985), 4 C.P.R. (3d) 523.
3 See Trade Mark Reflections Ltd. v. Morgan Crucible Co. Plc. (1977), 78 C.P.R. (3d) 519 (TMOB, Campbell H.O.) and Dennison Associates v. Alum-A-Pole Corp. (1977), 78 C.P.R. (3d) 563 (TMOB, Campbell H.O.).
4 American Distilling Co. v. Canadian Schenley Distilleries Ltd. (1977), 38 C.P.R. (2d) 60 (Thurlow, A.C.J.); Broderick & Bascom Rope Co. v. Registrar of Trade-marks (1970), 62 C.P.R. 268 (Jackett, P.); Re Wolfville Holland Bakery Ltd. (1964), 42 C.P.R. 81 (Thorson, P) and Rogers, Bereskin & Parr v. The Registrar of Trade-marks (1986), 9 C.P.R. (3d) 260, Joyal, J.
5 Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (No. 1) (1982), 63 C.P.R. (2d) 56.
6 Benson & Hedges Canada Ltd. v. St-Regis Tobacco Corp., [1969] S.C.R. 192 at 200.
7 88766 Canada Inc. v. George Weston Ltd. (1987), 15 C.P.R. (3d) 260 at 267 (F.C.T.D.) and Corby Distilleries Ltd. v. Wellington County Brewery Ltd. (1995), 59 C.P.R. (3d) 357 at 362-363 (F.C.T.D.).