Date: 20000203
Docket: T-1418-97
| IN THE MATTER OF AN APPEAL pursuant to Section 56 of theTrade-marks Act from a decision of the Registrar of Trade Marks dated April 29, 1997 expunging trade mark registration number UCA 17982 pursuant to Section 45 of the Trade-marks Act |
BETWEEN:
ANHEUSER-BUSCH, INCORPORATED
Applicant
- and -
McDERMID AND COMPANY
Respondent
REASONS FOR ORDER
LUTFY A.C.J.:
[1] The applicant brings this appeal against the decision of the senior hearing officer, acting on behalf of the Registrar of Trade-marks, to expunge its trade-mark A and Eagle Design for lack of use, pursuant to section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13. The trade-mark in issue was registered on May 10, 1943 as a design mark under the Unfair Competition Act, S.C. 1932, c. 38, and has continued to be treated as a design mark pursuant to subsection 27(3) of the Trade-marks Act.
[2] The respondent, the requesting party under section 45, chose not to participate in this appeal.
[3] In her decision, the senior hearing officer described the applicant"s mark in these terms:
| The mark appearing on the label is framed by a square outline and is no longer framed by the two circles which appeared as part of the registered mark. With respect to the two circles found on the registered mark, the outside circle appears to be the shape of the registered trade-mark; the inner circle is a black line enclosing all of the wording and other features of the mark. The trade-mark found on the label consists only of the capital A and eagle features within a square area, without any of the circles or wording which appeared in the registered mark. [Emphasis added] |
[4] The description of the applicant"s trade-mark A and Eagle Design is set out in the registration of the mark and reads as follows:
| Capital letter A and the representation of an eagle and, in addition, as features of importance, but secondary to the A and Eagle, the representation of a star at the top of said letter A and a shield in the lower opening of said letter A, said eagle standing upon said shield and having its head and portions of its wings and body extending through the upper opening of said letter A, portions of said wings projecting to either side of the upper portion of said letter A. |
[5] The difference in the two descriptions of the trade-mark is evident. Unlike the language used by the senior hearing officer in her decision, the description in the registration makes no reference to "the two circles found on the registered mark".
[6] This difference is explained in new evidence which was adduced on this appeal. In her uncontested affidavit, the associate general counsel of the applicant deposed that the two circles referred to by the senior hearing officer result from the photocopy of a flattened beer bottle cap which showed the applicant"s trade-mark. The deponent also stated that the trade-mark design applied for in 1943 was not intended to include the words "Anheuser-Busch Inc.", "Budweiser Beer", "Reg. U.S. Pat. Off." or "Trade Mark" which were also shown on the beer bottle cap. In the deponent"s words:
| 5. The picture shown [on the register of trade-marks and relied upon by the senior hearing officer in her decision] is a photostat copy of a flattened beer bottle cap which my company used on its BUDWEISER beer bottled at the time of the application for the A & EAGLE DESIGN MARK, namely in 1943. The photostat copy includes wording that appeared on the bottle cap but that was not intended to form part of the mark applied for. The dark inner circle corresponds to the upper rim of the beer bottle, and the space between the dark inner circle and the outside edge of that picture represents the portion of the cap that would be pressed over and around the rim of the bottle. The words "Anheuser-Busch Inc." identify the beer maker and the words "Budweiser Beer" identify the beer. The words "Reg. U.S. Pat. Off." and "Trade Mark" surrounding the A & Eagle Design identify it as a registered trade mark in the United States. |
[7] This evidence was not before the senior hearing officer. In my view, this is substantial additional evidence which provides this Court with greater latitude in reviewing the Registrar"s decision and making its own finding of fact: Choice Hotel International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340 (F.C.T.D.) at 344, and Garbo Group Inc. v. Harriet Brown & Co., [1999] F.C.J. No. 1763 (QL) (T.D.) at paragraph 38.
[8] Subsection 31(3) of the Unfair Competition Act required the applicant to furnish five accurate and complete representations of the design prepared on or attached to paper of the prescribed size. The applicant"s filing in 1943 of "a photostat copy of a flattened beer bottle cap" was done, one can assume, in compliance with this statutory requirement.
[9] There was no dispute before the Registrar that the applicant had in fact sold its registered wares in Canada during the relevant time period with its trade-mark A and Eagle Design. That design, without the two circles and the additional words, is clearly visible on the BUDWEISER beer bottle label. In her decision, however, the senior hearing officer accepted the requesting party"s sole submission that the applicant"s trade-mark was not being used as registered.
[10] On the basis of the new evidence, neither the outside circle nor the inner circle described by the hearing officer should be considered as part of the design. According to this new evidence, neither the circles nor the additional words on the bottle cap were intended to form part of the design, a view that is supported by the designation of the design in the registration. For this reason alone, in my view, the decision of the senior hearing officer must be set aside because it was based on information, placed before her, which has now been shown to be erroneous.
[11] The senior hearing officer also considered the impact of the additional words shown on the specimen which were not referred to in the description of the trade-mark. In her view, the failure to refer to the words in the description was irrelevant:
| I have considered the registrant"s contention that the wording in the registered trade-mark was not referred to in the description of the trade-mark set out in the original application. This is irrelevant, however, as the description given at that time was a concise description of what the applicant considered to be its principal features, so as to enable the Registrar to properly index the mark. Consequently, the description was given for indexing purposes. As I have indicated above, for the purposes of Section 45, I do not believe that all wording should be completely ignored. |
[12] The senior hearing officer then concluded that the use of the mark, without the additional wording and the two circles shown on the depiction in the register, omits important features and could not constitute use within the meaning of section 45. In her words:
| In the present situation, the registered mark is being used without any wording and without the circles framing the mark, in my view the circles being relevant features of the registered mark. Even though the reading matter of the registered mark is devoid of meaning it nonetheless creates a visual impact, together with the circles, which visual impact is lost in the mark as used. The design mark shown on the label would be perceived as a trade-mark itself, while in the mark as registered it is merely a component or element of the mark. It is therefore my opinion that the trade-mark as presently used omits important features of the registered mark and as a result would not be perceived as use of the registered trade-mark. Consequently, I consider the deviation to be more than minor. As the registrant has not shown use of the mark as registered, and as I have concluded that use shown does not constitute use of the registered trade-mark, I conclude that the registration ought to be expunged. |
[13] In reaching her conclusion that the applicant"s marks on its beer labels deviated in an important way from the mark as registered, the senior hearing officer properly considered Promafil Canada Ltée v. Musingwear, Inc. (1992), 44 C.P.R. (3d) 59 (F.C.A.), and Registrar of Trade Marks v. Compagnie internationale pour l"informatique CII Honeywell Bull, S.A., [1985] 1 F.C. 406, 4 C.P.R. (3d) 523 (C.A.). However, her legal analysis was based on facts which I have now concluded were erroneous and the Court"s intervention is further warranted. Even accepting that the additional wording, but not the two circles, form part of the registered trade-mark, I am satisfied that the substantive impression created by the applicant"s use of its design mark on its beer labels is consistent with the dominant features of the mark as registered: Promafil Canada Ltée, supra at 70 and 71-72. The omission of the words on the labels does not detract from the continued use of the stylized A, the eagle, the star and the shield which were the essential features described in the registered trade-mark.
[14] Accordingly, this appeal will be allowed and the Registrar"s decision set aside. There will be no order as to costs.
"Allan Lutfy"
A.C.J.
Ottawa, Ontario
February 3, 2000