Date: 19991117
Docket: T-126-99
BETWEEN:
APOTEX INC.
Appellant
-and-
BORDEN & ELLIOT
Respondent
REASONS FOR ORDER
TEITELBAUM J.:
[1] This is an appeal pursuant to section 56 of the Trade-marks Act R.S.C., 1985, c. T-13, as amended ( hereinafter the "Act") from a decision of the Registrar of Trade-marks dated November 30, 1998, ordering that Registration No. 360,106 be expunged.
The appellant (applicant) seeks an order reversing that decision and allowing the trade-mark to remain under this registration number and in the name of Apotex Inc.
FACTS
[2] The trade-mark DINO-VITES was registered as No. 360,106 on September 8, 1989 in the name of Randle Laboratories Inc. ("Randle") for use in association with children"s vitamins.
[3] During 1990, the appellant Apotex Inc. purchased the majority of shares in Randle, and on September 1, 1992 acquired Randle, including all its assets and inventory, by a bill of sale.
[4] On November 2, 1992, the DINO-VITES trade mark was assigned by Randle to Apotex, and was recorded at the Trade-Marks Office on October 29, 1993.
[5] On April 9, 1997 the Registrar forwarded a section 45 notice to Apotex Inc., the registered owner of Trade-mark Registration TMA 360, 106 for the mark DINO-VITES for use in association with children"s chewable multiple vitamins.
[6] The Registrant filed the affidavit of Barbara E. Shifman, sales and marketing manager for Apotex Private Label, sworn July 9, 1997 as evidence of the use of the trade mark DINO-VITES by the owner during the relevant period of time - from April 9, 1994 to April 9, 1997.
[7] In a decision dated November 30, 1998, Senior Hearing Officer Savard ordered that Registration No. 360,106 be expunged for the following reasons:
| 1) it was unclear whether Apotex Private Label (APL) was a division of the registrant company or a separate legal entity, and therefore whether use by APL was use by the registrant, or by a separate company; |
| 2) sample packaging depicted in "Exhibit C" to the affidavit bore the name "Randle Laboratories Inc.". The hearing officer stated: "It may be the "packages" are "old stock", namely, packages the registrant had on hand as a result of its acquisition of the trademark on November 2, 1992. However, there is no explanation in the affidavit to that effect and I am not prepared to make such an inference...". (page 2) |
| 3) "The leaflet attached as part of "Exhibit D" also raises doubt as to whether the use of DINO-VITES is by the registrant as the leaflet refers to Apotex Inc. as a company who creates private label brands." (page 2) |
[8] The Senior Hearing Officer found that the evidence was too ambiguous to conclude that the use of the trade mark was by the registered owner and therefore expunged trademark No. 360,106.
THE DECISION OF THE SENIOR HEARING OFFICER
[9] The essence of the Senior Hearing Officer"s decision may be found in the following paragraphs:
| In her affidavit, Ms. Shifman states that APL is the marketing arm of the registrant for the OTC products and that accordingly, the registrant manufactures the OTC products on behalf of APL and APL markets these products. At paragraph 3 of the affidavit, Ms. Shifman indicates that her functions include the sales and marketing for APL, which in turn entails the presentation of the product line to customers, the coordination of the manufacturing of a product as APL is in the custom manufacturing business. She also surveys the market place for new product entries, provides product quotes and establishes marketing forecasts for APL. |
| From the above statements, I find it unclear whether APL is a separate legal entity or merely a division of the registrant company. Further, I find the statement that the registrant manufactures the products on behalf of APL to also be somewhat ambiguous. |
| [...] The leaflet attached as part of Exhibit D, also raises doubts as to whether the use of DINO-VITES is by the registrant as the leaflet refers to Apotex Inc. (the registrant) as a company who creates private label brands of pharmaceutical products for others. This seems to support my conclusion that the use of the trade-mark may not be by the registrant. |
| [...] In view of the deficiencies (ambiguities) in the affidavit and in the documents submitted, I cannot find the evidence reliable and unequivocal in showing use of the trade-mark in Canada by the registered owner. |
STATUTORY PROVISIONS
Trade-Marks Act, R.S.C., 1985, c. T-13
| Appeal 56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. Additional evidence 56(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar. 45. (1) The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date. 45(2) Form of evidence (2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may hear representations 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. 45(3) Effect of non-use (3) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trade-mark, either with respect to all of the wares or services specified in the registration or with respect to any of those wares or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trade-mark is liable to be expunged or amended accordingly. Notice to owner (4) When the Registrar reaches a decision whether or not the registration of a 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 referred to in subsection (1) was given. 45(5) Action by Registrar |
| (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 the appeal. |
Appel 56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois. Preuve additionnelle 56(5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion don"t le registraire est investi. Le registraire peut exiger une preuve d'emploi 45. (1) Le registraire peut, et doit sur demande écrite présentée après trois années à compter de la date de l'enregistrement d'une marque de commerce, par une personne qui verse les droits prescrits, à moins qu'il ne voie une raison valable à l'effet contraire, donner au propriétaire inscrit un avis lui enjoignant de fournir, dans les trois mois, un affidavit ou une déclaration solennelle indiquant, à l'égard de chacune des marchandises ou de chacun des services que spécifie l'enregistrement, si la marque de commerce a été employée au Canada à un moment quelconque au cours des trois ans précédant la date de l'avis et, dans la négative, la date où elle a été ainsi employée en dernier lieu et la raison de son défaut d'emploi depuis cette date. 45(2) Forme de la preuve (2) Le registraire ne peut recevoir aucune preuve autre que cet affidavit ou cette déclaration solennelle, mais il peut entendre des représentations faites par le propriétaire inscrit de la marque de commerce ou pour celui-ci ou par la personne à la demande de qui l'avis a été donné ou pour celle-ci. 45(3) Effet du non-usage (3) Lorsqu'il apparaît au registraire, en raison de la preuve qui lui est fournie ou du défaut de fournir une telle preuve, que la marque de commerce, soit à l'égard de la totalité des marchandises ou services spécifiés dans l'enregistrement, soit à l'égard de l'une de ces marchandises ou de l'un de ces services, n'a été employée au Canada à aucun moment au cours des trois ans précédant la date de l'avis et que le défaut d'emploi n'a pas été attribuable à des circonstances spéciales qui des trois ans précédant la date de l'avis et que le défaut d'emploi n'a pas été attribuable à des circonstances spéciales qui le justifient, l'enregistrement de cette marque de commerce est susceptible de radiation ou de modification en conséquence. 45(4) Avis au propriétaire (4) Lorsque le registraire décide ou non de radier ou de modifier l'enregistrement de la marque de commerce, il notifie sa décision, avec les motifs pertinents, au propriétaire inscrit de la marque de commerce et à la personne à la demande de qui l'avis visé au paragraphe (1) a été donné. 45(5) Mesures à prendre par le registraire (5) Le registraire agit en conformité avec sa décision si aucun appel n'en est interjeté dans le délai prévu par la présente loi ou, si un appel est interjeté, il agit en conformité avec le jugement définitif rendu dans cet appel. |
ISSUES
[10] This application raises the following question:
| Has the appellant shown use in Canada of the trade-mark DINO-VITES by the registered owner in the three years prior to the section 45 notice? |
POSITIONS OF THE PARTIES
Appellant"s Position
[11] The appellant submits that the evidence indicates that Apotex Inc. has established its use of the trade mark in the ordinary course of trade during the relevant three years.
[12] Secondly, the appellant argues that a section 56 appeal provides for a trial de novo with additional evidence to that presented to the Registrar. Referring to the decision in Keepsake Inc. v. Prestons Ltd. (1983), 69 C.P.R. (2d) 50 F.C.T.D.), the appellant argues that section 56 affords the opportunity to bolster the deficiencies in the evidence furnished to the Registrar.
Respondent"s Position
[13] The respondent argues that the findings of the Senior Hearing Officer are well founded in the evidence that was before her for consideration. Further, the respondent submits that the supplementary affidavit filed by Barbara A. Shifman subsequent to the decision of the Registrar contains no substantial additional evidence in support of the appellant"s position.
[14] The respondent submits that the decision of the Senior Hearing Officer should stand as there is no evidence to show that the sales which were presented as evidence at the time of the decision constitute use of the trade-mark DINO-VITES by the registered owner or were in the regular course of trade.
ANALYSIS
The Standard of Review
[15] While an appeal to this Court, pursuant to section 56 of the Act has been characterized as a trial de novo because of the right of the registered owner to submit new evidence, as was done by the appellant here, the jurisprudence illustrates that a high degree of deference has been granted to the decisions of the Registrar.
[16] In Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. et al. (1987), 15 C.P.R. (3d) 133 (F.C.T.D.) this Court considered the circumstances for interference with a decision of the Registrar. Mr. Justice Strayer stated at page 135:
| ... the appellant urged me to treat the matter completely de novo without regard to the chairman"s decisions. While I accept that these appeals involve determinations of fact which I am as entitled as the registrar to make, in my view the court should be reluctant ro reverse the finding of the registrar or chairman unless it is clearly satisfied that he came to the wrong conclusion on the facts or unless there is significant new evidence placed before the court that was not before the registrar. |
[17] This position was affirmed by Mr. Justice Denault in Mitac Inc. v. Mita Industrial Co. (1992), 40 C.P.R. (3d) 387 where he stated the following at page 391:
| "...in cases such as these, the onus on the appellant is tow-fold. First, the appellant must establish that the hearing officer erred in his appreciation of the facts or in his interpretation of the law. It is well established that such a decision carries considerable weight and is not to be lightly set aside." |
[18] Applying this standard to the present case, the appellant must either prove that the Registrar erred in finding that the evidence was too ambiguous to satisfy a section 45 review, or that the new evidence introduced by way of the supplementary affidavit of Barbara E. Shifman clearly demonstrates that the appellant had used the trade mark in the ordinary course of business between April 1994 and April 1997.
The Evidence before the Registrar
[19] Under section 45 of the Act, the registered owner of a trademark is required, upon notice, to show whether or not the trade mark was in use in Canada during the three years prior to the notice being issued. In the case at bar, notice was issued by the Registrar to the appellant on April 9, 1997 and thus the inquiry focuses on the period between April 1994 and April 1997.
[20] In section 2 of the Act, "use" is defined as follows:
| "use" "emploi" ou "usage" |
| "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; |
[21] In response to these proceedings, the appellant filed the affidavit of Barbara E. Shifman, Sales and Marketing Manager for Apotex Private Label (APL) Over the Counter (OTC) products. There were no written submissions filed by either party and no oral hearing took place. Therefore, this affidavit was the central factor in the Registrar"s decision.
[22] The Registrar found that the affidavit failed to show use by the registered owner. On the issue of use by the owner, the case law suggests that use in Canada, as required by section 45, means use in Canada by the registered owner: Marcus & Marcus v. The Quaker Oats Company of Canada Ltd. (1989), 20 C.P.R. (3d) 46 (FCA).
[23] It is trite law that an affidavit is insufficient in establishing use of the trade mark by the registered owner if it consists of a mere statement with no supporting evidence. In Plough Canada Ltd. v. Aerosol Filters Inc. (1980), 53 C.P.R. (2d) 62 Thurlow C.J. considered this matter, stating the following at page 66:
| What s-s. 44(1) [currently s-s. 45(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 s.2 and of use in s. 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 trader mark is in use in Canada and if not the date when it was last used and the reason for the absence of 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 s-s. 44(3) [currently s-s. 45(3)]. |
He then added:
| There is no room for a dog in the manger attitude on the part of registered owners who may wish to hold on to a registration notwithstanding that the trade mark is no longer in use or not in use with respect to some of the wares in respect of which the mark is registered. |
[24] Equally important, the appellant must show use within the normal course of business. Madame Justice Reed addressed this issue in Coscelebre Inc. v. Canada (Registrar of Trade Marks) (1991), 35 C.P.R. (3d) 74 where she states at page 82 of her reasons:
| The showing of "use in Canada" required by s. 44 [currently s. 45] can be satisfied by usage which falls short of "marketing in a serious commercial manner", providing the use is by way of a normal commercial transaction or in the normal course of trade. |
Madame Justice Reed further stated:
| I do not read the jurisprudence as requiring the court or the registrar to find a certain level of commercial activity, in order to prove use. The single sale in this case was not put forward as an example of one of many sales, as appears to be the case in the Philips Morris case. On the other hand, it is not a sale divorced from all context as was true in Sim & McBurney v. Majdell Manufacturing Co. (1986), 11 C.P.R. (3d) 306, 9 C.I.P.R. 105, 1 A.C.W.S. (3D) 226. |
[25] In the case at bar, the Registrar found that the registered owner had failed to establish that the use of the trade mark during the relevant time was by the registered owner or accrued to the registered owner. More specifically, the Registrar stated at page 2 of her decision that she found the affidavit of Barbara Shifman to be ambiguous concerning the role played by APL with respect to the wares and the trade-mark.
New Evidence before the Court
[26] Turning to the evidence presented to the Court by way of the supplementary affidavit of Barbara Shifman, she states unequivocally at paragraph 2 that all sales of DINO-VITES were by the registered owner directly. In support of this assertion, she adds that during the relevant period between April 1994 and April 1997, APL operated out of the Apotex Inc. premises.
[27] As evidence of use in Canada by the registered owner between 1994 and 1997, Ms. Shifman indicates at paragraph 3 of her affidavit that invoices, which had been entered as Exhibit "E" before the Registrar, show sales of DINO-VITES by Apotex Inc.
[28] The supplementary affidavit further clarifies the ambiguity referred to by the Registrar regarding the packages entered as Exhibit "C" which are marked with the Randle Laboratories Inc. label. Ms. Shifman explains that when Apotex Inc. took over Randle Laboratories Inc. in September 1992, it acquired all the assets and inventory. While it sold some of the inventory which was marked with the Randle label before April 9, 1994, the packages entered as Exhibit "C" are examples of some of that inventory which remained but which was still sold to buyers by Apotex Inc. directly.
[29] The Registrar stated in his decision that it was possible that this was the case, however, she was not prepared to make that inference given that there was nothing in the affidavit to that effect. Furthermore, the Registrar found that the leaflet which was entered as Exhibit "D" also raised uncertainty in regards to whether there was use by the registered owner as it marketed Apotex Inc. as a company who creates private label products for others.
[30] This ambiguity was addressed in the supplementary affidavit as well and I am satisfied that the registrant owner is both a manufacturer of private label pharmaceutical products for others and a distributor of its own brand of products, Apotex Private Label, such as DINO-VITES.
[31] I must say that I find it difficult to understand why the appellant did not advance the best possible evidence of use of this trade mark in Canada to the Registrar. There were several central ambiguities which resulted in the Registrar"s finding that the registrant had not established use during the relevant period. With all respect, I believe this could have easily been avoided had the appellant given a more thorough description of their use, an acknowledgment of the apparent inconsistencies in the evidence, and an explanation of them.
Conclusion
[32] In 88766 Canada Inc. v. George Weston Ltd. (1987) 15 C.P.R. (3d) 260 Mr. Justice Strayer stated the following in regards to the consideration of new evidence at page 267:
| It is not the function of this Court, in hearing an appeal from the registrar to set aside the registrar"s decision because the court may have come to a different conclusion that the registrar. |
| Only if the appellant can show and the appellant has the burden to do so, that the registrar has failed to properly interpret the facts before him or has failed to consider the facts before him, should the court interfere in the registrar"s decision. |
| The court may interfere in the registrar"s decision if new evidence, of a substantial nature and by way of affidavit or statutory declaration, is placed before the court to show that the evidence is such that the registrar came to a wrong conclusion. |
[33] While I am cognizant of the need for the Court to be circumspect in interfering with the decision of the Registrar, in my view, the supplementary affidavit does introduce significant new evidence which is such that it illustrates that the Registrar was not apprised of all the relevant facts when she arrived at her decision. With this affidavit, the appellant has successfully clarified the ambiguities which were at the root of the Registrar"s decision.
[34] In light of the above reasons, I find that the appellant has adduced sufficient evidence of the use of the trade mark DINO-VITES in Canada during the relevant time period. I do not believe that the Registrar made an error in arriving at her conclusion based on the evidence which was presented before her, rather, it is the substantive importance of the new evidence introduced by way of the supplementary affidavit which effectively eliminates the uncertainty which previously existed with respect to the nature of the registrant"s use of the trade mark.
[35] For these reasons, the appeal is allowed. The decision of the Registrar is reversed for the trade mark: "DINO-VITES" registered under no. 360,106.
[36] I am satisfied that no costs should be awarded to the Appellant. The evidence placed before me in this hearing should have been placed before the registrar and her decision might have been different.
"Max M. Teitelbaum"
J.F.C.C.
TORONTO, ONTARIO
November 17, 1999
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| COURT NO: T-126-99 |
| STYLE OF CAUSE: APOTEX INC. |
- and -
BORDEN & ELLIOT
| DATE OF HEARING: TUESDAY, NOVEMBER 16, 1999 |
| PLACE OF HEARING: TORONTO, ONTARIO |
| REASONS FOR ORDER BY: TEITELBAUM J. |
DATED: WEDNESDAY, NOVEMBER 17, 1999
| APPEARANCES: Mr. Edward Horne |
Mr. Roger Bauman
| For the Appellant |
| Mr. Gordon Zimmerman |
| For the Respondent |
| SOLICITORS OF RECORD: Hazzard & Hore |
Barristers & Solicitors
| 1002-141 Adelaide St. W. |
| Toronto, Ontario |
| M5H 3L5 |
| For the Appellant |
| Borden & Elliot |
| Barristers & Solicitors |
| Scotia Plaza |
| 40 King Street West |
Toronto, Ontario
| M5H 3Y4 |
| For the Respondent |
FEDERAL COURT OF CANADA
Date: 19991117
Docket: T-126-99
Between:
| APOTEX INC. |
Appellant
- and -
| BORDEN & ELLIOT |
Respondent
REASONS FOR ORDER