Federal Court Decisions

 

 

Date: 20061128

Docket: T-588-06

Citation: 2006 FC 1440

Edmonton, Alberta, this 28 day of November, 2006

PRESENT:     The Honourable Mr. Justice Russell

 

 

BETWEEN:

TINT KING OF CALIFORNIA INC.

Applicant

and

 

THE REGISTRAR OF TRADE-MARKS and

 ATTORNEY GENERAL OF CANADA

Respondents

 

REASONS FOR JUDGMENT AND JUDGMENT

 

 

APPLICATION

 

[1]               This is an appeal, pursuant to section 56 of the Trade-marks Act R.S.C. 1985 c. T-13 (Act), of a decision of the Registrar of Trade-Marks (Registrar) to expunge the trade-mark TINT KING (Mark) in accordance with section 45 of the Act. The Mark was registered on April 21, 1989 by the Applicant’s sole officer and director, Allen Elliot Starkman (Mr. Starkman).  The move to expunge the Mark was initiated by Borden Ladner Gervais LLP on behalf of an interested party.  A notice of proceedings dated June 14, 2005 requesting the Applicant to furnish an affidavit showing the Mark was in use in Canada in the previous three years was sent to Mr. Starkman’s home address.  However, as the affidavit of Penney Dawn Starkman, Mr. Starkman’s widow explains, Mr. Starkman died of cancer in December 2004 after a year long illness, and during a period of bereavement following his death she did not read business correspondence addressed to the Applicant.  As a result, she was not aware until November, 2005 of the Registrar’s letter dated October 20, 2005 notifying Mr. Starkman that the Mark had been expunged.  The earlier letter dated June 14, 2005 giving Mr. Starkman the required three month notice period has not been located by his widow. However, once aware of the contents of the letter, Mrs. Starkman initiated these proceedings to demonstrate use of the Mark in the previous three years.

 

[2]               The Respondent has indicated that it will not be filing submissions on this appeal.

 

ISSUE

 

1.      Has the Applicant provided acceptable evidence of use, as required by section 45 of the Act?

 

ANALYSIS

 

The Law

 

[3]               Subsections 45 (formerly 44) and 56 of the Act read as follows:

 

Grounds for Appeal

 

[4]               The Applicant relies upon Austin Nichols & Co. (c.o.b. Orangina International Co.) v. Cinnabon, Inc., [1998] 4 F.C. 569, 231 N.R. 362 (C.A.) for the proposition that it should be allowed to submit evidence on appeal that was not before the Registrar when the Registrar made the decision to expunge the Mark. In Austin Nichols, the Court found as follows at paragraph 13:

The role of the court sitting in appeal of a decision of the Registrar is made abundantly clear by the last words of subsection 56(5).  In giving the Court the same discretion as that “vested in the Registrar”, Parliament has recognized that the Court sitting in appeal is expected to be able to decide the issues as if they were tried for the first time before the Court […]

 

 

[5]               This means that a registered owner has on appeal the same opportunity to file evidence as before the Registrar.

 

[6]               However, further hurdles to hearing a section 56 appeal in the present case are that no reply was made to the Registrar’s section 45 letters, and the original affidavit (Original Affidavit) submitted to the Court is not in the name of the sole director and shareholder of the Applicant, Mr. Starkman, but was sworn by Mrs. Starkman.  Roebuck v. Canada (Registrar of Trade Marks), 15 C.P.R. (3d) 113, 13 C.I.P.R. 75 (F.C.T.D.), supports the argument that Mrs. Starkman’s lack of response to the expungement letters may be excused. In Roebuck, Justice Martin provided the applicant, who did not receive the expungement notice because of an address change, with some leniency.  Justice Martin found at page 3 that the purpose of section 44 (now 45) “is not designed or intended as a procedure for adjudicating disputes between competing interests.” The fact that the evidence before the Court was not before the Registrar did not bar the appeal. Thus, in my view, in the present case, the fact that Mrs. Starkman did not open her mail during a period of bereavement does not bar her from making a section 56 appeal on behalf of the Applicant.

 

[7]               Justice Martin in Roebuck at page 3 also asserts that an affidavit sworn in support of a section 56 appeal may be made by a third party. This argument was first upheld by the Federal Court of Appeal in the case Canada (Registrar of Trade Marks) v. Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d) 488 60 N.R. 380 (F.C.A.) at page 5.  As a result, although Mrs. Starkman is not listed as a director and shareholder of the Applicant, as the executor of Mr. Starkman’s will she is entitled to submit affidavit evidence in support of the present section 56 appeal.

 

[8]               In accordance with the principles set forth in Centre Ice Ltd. v. National Hockey League (1995), 63 C.P.R. (3d) 498 at 494 for the granting of an extension of time, I find that the Applicant has established that an extension is appropriate in this case.

 

Evidence of Use

 

[9]               According to section 2 of the Act, 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.”

 

[10]           Hence, the Applicant must provide evidence of use of the Mark in association with its wares or services in Canada during the previous three years, as per section 45 of the Act. Mrs. Starkman has provided the following evidence of use: (a) a December 2001-December 2002 City of Toronto phone listing advertising the firm; (b) an August 2002/2003 York region phone advertisement listing; (c) an advertisement using the name Tint King from January 1984; and (d) a copy of a current invoice.

 

[11]           Footlocker Group Canada Inc. v. Steinberg (2004), 35 C.P.R. (4^th) 443, 2004 FC 717 at paragraph 73 (QL) provides the following guidance when considering evidence of use:

The case law establishes the limited onus that rests on the owner of a trade-mark of proving use to a sufficient degree to avoid expungement in a s.45 proceedings.  The cases also establish that the affidavit evidence does not have to be perfect.  In Gesco Industries Inc., supra, Wetston J. said that “evidence filed with the Registrar must establish facts from which a conclusion of ‘use’ or ‘use in the normal course of trade’ would follow as a logical inference from the facts established.”

 

[12]           The decision of Justice Martineau in Swabey Ogilvy Renault  (2002), 19 C.P.R. (4^th) 516, 2002 FCT 458 at paragraph 7 further supports the contention that “section 45 is a summary procedure designed to clear the register of trade-marks that have fallen into disuse and that are, at least arguably to some extent, ‘deadwood’”.  As such, “‘evidentiary overkill’” is not required by the registered owner and the threshold for use is not a stringent one.

 

[13]           Turning to the case at bar, and applying these principles to the facts, is there sufficient evidence submitted by Mrs. Starkman to support the statement of use of the Mark in the previous three years?  Considering the number of Canadian branches of the Applicant as listed in the Original Affidavit at paragraph 4 (there are 11 locations listed in Canada, as well as another branch in Costa Rica), the evidence submitted in support of the application is somewhat slim. At the hearing of this matter counsel requested an adjournment sine die to allow him time to provide clarification on use of the Mark. I granted the adjournment on condition that he would provide me with authority for his request to file supplemental materials and he followed up on these matters by letter dated October 24, 2006.

 

Adducing New Evidence

[14]           Rule 312 of the Federal Courts Rules, SOR 98/106, as identified by counsel for the Applicant in his submissions, provides as follows:

[15]           Rules 306 and 307 outline the filing requirements for the standard affidavits that are required from Applicants and Respondents.

[16]           A related rule is Rule 84(2) which provides as follows:

 

[17]           According to Justice Heneghan in Robert Mondavi Winery v. Spagnol’s Wine & Beer Making Supplies Ltd. (2000), 10 C.P.R. (4th) 331 (F.C.T.D.) at paragraphs 21-22, although Rules 84 and 312 should yield similar interpretations, Rule 84(2) is intended to deal with matters that arise during cross-examination and which could not have been foreseen with reasonable diligence.  Rule 312 seems to be the broader provision and would appear to apply in this case.

[18]           The leading case interpreting Rule 312 is the decision of Justice Nadon of the Federal Court of Appeal in Atlantic Engraving Ltd. v. Lapointe Rosenstein (2002), 299 N.R. 244, 2002 FCA 503 where the Court of Appeal affirmed the decision of Justice Rouleau of the Federal Court.  Justice Rouleau had allowed the respondent in that case an adjournment to file a further and better affidavit in a trade-mark appeal on the grounds that respondent’s counsel was not familiar with the trade-mark field and that it was unfair for the respondent to be denied his trade-mark rights because of ineptitude.  The respondent had not applied for the adjournment and had not shown that the evidence to be adduced was not available earlier.

[19]           The Federal Court of Appeal allowed the appeal because the respondent had not met the test under Rule 312, which is outlined at paragraphs 8-9:

[…] By exception, rule 312 allows a party, with leave of the Court, to file additional affidavits.  Under that rule, the Court may allow the filing of additional affidavits if the following requirements are met:

 

i)                    The evidence to be adduced will serve the interests of justice;

ii)                   The evidence will assist the Court;

iii)                 The evidence will not cause substantial or serious prejudice to the other side […]

 

Further, an applicant, in seeking leave to file additional material, must show that the evidence sought to be adduced was not available prior to the cross-examination of the opponent’s affidavits.  Rule 312 is not there to allow a party to split its case and a party must put its best case forward at the first opportunity. […]

 

[20]           In addition, Justice Evans in Mazhero v. Canada (Industrial Relations Board) (2002), 292 N.R. 187, 2002 FCA 295 stated that any supplementary affidavit should not deal with material which could have been made available at an earlier date, and it should not unduly delay the proceedings.

[21]           The facts in Atlantic Engraving are similar to the matter in issue in the present case and suggest that a party is permitted to seek leave to file additional material even at the hearing itself (even though the initiative in that case was instigated by the Court and not the parties). In this case, the first three factors identified by Justice Nadon in Atlantic Engraving are easily met.  The sympathetic circumstances of the Applicant merit some leniency, the Court requires more evidence to effectively evaluate whether the Mark has been in use, and it is difficult to see how the submission of additional evidence could prejudice the other side when the Respondent has not participated in the appeal and has not submitted any material.

[22]           An issue does arise, however, with respect to the additional requirement that the evidence must not have been available at an earlier date. But the circumstances of this case suggest there is no practical logic for rigidly enforcing this factor. There is no evidence that the Applicant is attempting to split its case. In fact, there would appear to be no incentive or advantage in doing so.  Furthermore, there are situations where this requirement has been interpreted with flexibility.  In this regard, the Applicant refers to the decision in Larson-Radok v. Minister of National Revenue, [2000] 3 C.T.C. 163, 2000 DTC 6322 at paragraphs 6-7, where Prothonotary Hargrave stated, after noting that the supplemental affidavit met the first three requirements under Rule 312, as follows:

The difficulty is that a supplementary affidavit ought not to deal with material which could have been made available at an earlier date.  Yet, I do not believe that this concept ought to be slavishly applied, where innocent confusion on the part of counsel, confusion not shared by the other side, confusion which would prejudice the applicants is involved.  Counsel and client are not always, for all purposes, one entity, with the oversight of counsel an inescapable consequence for client: […] In the present instance, for justice to be done, a supplemental affidavit is in order.

 

[23]           Although the decision in Larson-Radok was driven by the fact that counsel for the applicant had not followed the applicant’s instructions, the situation of the Applicant in the present case also suggests that allowing a supplemental affidavit to be filed is necessary “for justice to be done.” Given that the interests of justice will in no way be compromised by allowing an additional affidavit to be filed, it would appear that this is an appropriate case for the Court to exercise its discretion in favour of the Applicant and allow the supplemental affidavit (Supplemental Affidavit) of Mrs. Starkman.

[24]           Rule 312, however, refers to filing supplemental affidavits, not legal argument. Some cases have held that reply memoranda or supplementary records, for instance, cannot contain legal argument.  See: Vrabek v. R, [1997] 2 C.T.C. 261 (F.C.A.), and Bayer A.G. v. Apotex Inc. (1998), 156 F.T.R. 303, 84 C.P.R. (3d) 23 (F.C.T.D.), aff’d on other grounds 2001 FCA 263, leave to appeal denied [2001] S.C.C.A. No. 556. In this instance, the only legal argument is contained in a letter that the Court requested, providing information as to the Applicant’s right to file additional evidence, and clarifying the purpose of the evidence.  Furthermore, the right to consider the additional submissions appears to be covered by Rule 313, which was not addressed by the Applicant’s counsel in his submissions.  Rule 313 reads as follows:

 

[25]           There has been little judicial consideration of this provision, but Justice Hughes in Canadian Private Copying Collective v. Fuzion Technology Corp. (2005), 47 C.P.R. (4th) 265, 2005 FC 1557 gave Rule 313 and its related provisions a very broad interpretation and grouped it with Rule 312 at paragraph 7 when he noted that “Rules 312 and 313 provide for additional affidavits, cross-examination, records and other material.” It was also used in Haddad v. Canada (Minister of Citizenship and Immigration), 2003 FCT 690 to remedy late filing of material from a Citizenship Judge in the appeal of the Citizenship Judge’s decision.

[26]           In my view, therefore, the circumstances of this case warrant admitting into evidence the Supplemental Affidavit of Mrs. Starkman and the accompanying submissions from counsel.

Evidence of Use

[27]           Section 45 of the Act requires the owner to demonstrate use at any time during the three- year period preceding the date of the notice for each of the registered wares and/or services for which the Mark is registered. In this case, the date of notice was June 14, 2005.

[28]           The Applicant’s trade-mark registration record from the Canadian Intellectual Property Office for TINT KING (Exhibit B of Mrs. Starkman’s Original Affidavit) lists several wares sold, generally related to automobile accessories, including window tint; the Mark is also registered in association with automobile services, including window tinting, leasing, maintenance and repairs, and cleaning. Thus, the Applicant has to provide evidence of use of the Mark in relation to both the wares and the services listed in the Registry.

[29]           In this case, the sole evidence submitted to demonstrate use of the Mark are 3 invoices of sale, a blank invoice, and 3 advertisements. The advertisement from 1984 does not show use in the preceding 3 years and so cannot be considered in this appeal.

Use with respect to wares

[30]           Subsection 4(1) governs use with respect to wares and provides as follows:

 

[31]           In Havana House Cigar & Tobacco Merchants Ltd. v. Skyway Cigar Store (1998), 81 C.P.R. (3d) 203, 147 F.T.R. 54 (F.C.T.D.), varied on other grounds (1998), 147 F.T.R. 54, 81 C.P.R. (3d) 203, Justice Teitelbaum reviewed the conditions which must exist in order to establish use of a trade-mark with respect to wares. At page 218 of his decision, Justice Teitelbaum refers to his reasons in an earlier case, White Consolidated Industries Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 (F.C.T.D.), where he noted as follows:

In order to establish use of a trade mark with respect to wares, the following conditions must exist at the date of transfer of the property in or possession of the wares:

 

1.                   The mark must be a trade mark as defined in s.2 [of the Trade-marks Act], that is, used for the purpose of distinguishing wares;

 

2.                   The mark must be associated with the wares so that notice of the association is given; and

 

3.                   The transfer of the property or possession therein must occur in the normal course of trade

 

[32]           The use of a trade-mark on an invoice may or may not be considered use in association with wares described in the invoice. The major consideration is whether the trade-mark is being used as a trade-mark in describing the wares contained in the invoice and, as such, whether appropriate notice of such use is being given to the transferee of the wares. The jurisprudence appears somewhat mixed in this regard. It appears that whether the use of a trade-mark on an invoice is use as a trade-mark in association with wares is most often decided on its position on the invoice.  If a trade-mark is placed at the top of the invoice, with no use in the body of the invoice, the use will not generally be in association with the invoiced wares.  D. Savard, Senior Hearing Officer with the Trade-Marks Opposition Board (TMOB) explained in Moffat & Co. v. Conagra, Inc. (1993), 52 C.P.R. (3d) 564 (T.M.O.B.) as follows:

Concerning the wares “fish”, it would appear from the evidence that the word “Conagra” only appears on the invoices representing sales of such wares.  The trade mark appears at the top of the invoices either with a logo or as part of the name of the company.  In my view, such manner of use would not appear to identify wares but would appear to identify the registrant or its business.  Consequently, it is use of a trade name or at best the logo on the invoices is use of a trade mark in association with services.

 

[33]           In Sterling & Affiliates v. A.C.B. Dejac SA (1994), 58 C.P.R. (3d ) 540 (T.M.O.B.), D. Savard held that the use of the trade-mark at the top of the invoice did not demonstrate use in association with the wares at the time of transfer of the wares in the normal course of trade, and its use at the top of invoices constituted use as a trade-name.  D. Savard held that there is a distinction between the use of the mark at the top of an invoice and cases where the mark appears in the body of an invoice with the description of the product:  See, for instance, Gordon A. MacEachern Ltd. v. National Rubber Co. (1963), 41 C.P.R. 149, 39 D.L.R. (2d) 668 (Ex. Ct.) where Justice Noël of the Exchequer Court held at page 157 as follows:

Now the question as to whether an invoice or invoices with the inscription of the trade mark thereon in association with wares are associated to a point that the receiver would thereby get notice of the association is, of course, a question of fact.

 

Having decided that proof of a number of sales or transmutations of goods or wares is before this court and that in all cases invoices were forwarded and received by the buyers, I have no difficulty in finding that the reception of these invoices with the trade mark inscribed thereon in association with the goods, in the normal course of trade of the applicant company's is sufficient evidence of notification and of use as set down in s. 4(1) of the Act and that, consequently, the trade mark is thereby “so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred”.

 

[34]           Also, in Goudreau Gage Dubuc & Martineau v. Niagara Mist Marketing, Ltd. (1997), 78 C.P.R. (3d) 255 (T.M.O.B.), the registrant submitted invoices which he alleged showed sales of a number of products sold under the trade-mark. D. Savard held that, because the trade-marks also appeared on the right hand side of the invoice and were not associated with an address, they could be perceived as relating to the wares:

I note that the trade-marks are not identified in the body of the invoices beside each of the products, but the words NIAGARA MIST appear at the top of the invoices, on the left hand side and on the right hand side.  Although I am of the view that the words NIAGARA MIST as they appear on the left hand side followed by a street address, would probably be perceived as identifying the originator for the wares, I am not convinced that the words NIAGARA MIST appearing on the right hand side would not be perceived as a trade-mark distinguishing the registrant’s wares.  Bearing in mind that none of the particular products listed in the invoices have been identified under a particular trade-mark, and given that Mr. Prentice has clearly described the registrant company as the manufacturer of the products, I am prepared to accept that the use of the trade-mark in such manner satisfies the requirements of section 4(1) of the Act in that the invoices would provide notice of the association to the person to whom the property or possession is being transferred.

 

[35]           Thus, the central consideration appears to be whether, in the case of invoices, the wares themselves are identified with the trade-mark, or whether the trade-mark seems to be associated on the invoice with the distributor, in which case it is more likely proof of use in relation to services. In the present case, the invoices submitted in evidence indicate the Mark at the top of the invoice, directly above the address of the proprietor.  Thus, in my view, the use of the Mark on the invoices submitted is best considered evidence of use with respect to services and is not acceptable evidence of use in association with the Applicant’s wares.

[36]           According to Justice McNair in Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 8 F.T.R. 310, 13 C.P.R. (3d) 289, evidence of a single sale in the normal course of trade will suffice to show use in respect of wares, as long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived to protect the registration of the trade-mark.

[37]           There are several wares listed in the Applicant’s registration.  Some cases suggest that a registrant does not have to prove use regarding every item in a given category, just use with respect to a broad category of goods. As Justice Tremblay-Lamer noted in Moffat & Co. v. Westinghouse Air Brake Co. (2001), 14 C.P.R. (4th) 257, 2001 FCT 1061 at para.22:

On appeal, the applicant submits that it is only necessary to demonstrate use on association with some of the wares where the registered wares fall into one broad category and that some of the wares are constituent parts of the devices comprised in the category.  More particularly, the new evidence shows that the registered wares can be described as a general category of wares namely railway equipment or parts used in railway equipment construction.

 

[38]           However, it has to be admitted that decisions on this matter appear to go both ways. In some instances, the Court has been stricter in requiring use to be demonstrated with respect to wares. For instance, according to Justice Stone in  John Labatt Ltd. v. Rainier Brewing Co. (1984), 80 C.P.R. (2d) 228, 54 N.R. 296 (F.C.A.):

The fact that the other wares specified fall within a group of wares that are in some way related to beer is not sufficient, in my view to preserve the registration intact.  That could only be done if the respondent had show that the trade mark is in use in Canada with respect to each of the other wares.

 

[39]           Since it appears to me in the present case that no use has been demonstrated with respect to wares, there is no need to address whether some goods are sufficiently related to others to satisfy the requirements by showing use only of one good.

[40]           With regard to the advertisement, generally, evidence of advertisement in Canada of the wares with which a trade-mark is associated is not sufficient to constitute use of the trade-mark. See J.C. Penney Co. v. Gaberine Clothing Co. (2001), 213 F.T.R. 189, 2001 FCT 1333 at paragraphs 75-76.

[41]           I note that Applicant’s counsel raises the case of Ridout & Maybee LLP v. Omega SA (Omega AG (Omega Ltd) (2005), 343 N.R. 226, 2005 FCA 306 as standing for the proposition that the Court cannot change the wording of the register in appeals from section 45 decisions. However, that does not appear to me to be what the Federal Court was saying in Ridout. Justice Létourneau appeared to be taking issue not with the Court ordering the amendment of the register but with the Court’s interpretation of the wording of the registration, specifically the categorization of the classes of wares.  Justice Létourneau held at paragraph 4 that a Federal Court judge is entitled to determine if the mark was being used in regard to the property specified under the classes.

[42]           In conclusion, in my view, the Applicant has not demonstrated use with respect to any of the listed wares.

Use in relation to services

[43]           Use is deemed in respect of services where the requirements of subsection 4(2) are met:

[44]           Mere advertising, without performing actual services, does not constitute use: see Cornerstone Securities Canada Inc. v. Canada (Registrar of Trade Marks)(F.C.T.D.), [1994] F.C.J. No. 1713 at para.9. However, in Sunshine Village Corp (Re), [1996] T.M.O.B. No. 219, D. Savard held that advertisements during the relevant period can be sufficient to evidence use of a mark in association with services.

[45]           Advertising through telephone directories appears to be recognized as a means to evidence use. The Federal Court of Appeal in Foodcorp Ltd. v. Chalet Bar B Q (Canada) Inc., (1982), 47 N.R. 172, 66 C.P.R. (2d) 56 (F.C.A.) indicated that use could probably be demonstrated through telephone listings. At paragraph 29, Chief Justice Thurlow held as follows:

The use relied on was the listings which appeared in various city telephone directories.  On behalf of the respondent the submission was made that such a listing of a trade mark is advertising of the services of the restaurant in association with the trade mark within the meaning of subsection 4(2) of the Trade Marks Act.  Not without some doubt I am inclined to think that may be so where the trade mark itself is what is listed.

 

[46]           More recent decisions by the TMOB have held that telephone directories are conclusive evidence of use, at least in the context of an expungement hearing under section 45. In The Bum Wrap Clothing Ltd. (Re) (1995), 63 C.P.R. (3d) 564 (T.M.O.B.), one of the exhibits contained a photocopy of a listing for one year in a telephone directory. D. Savard held as follows:

[..] The photograph of a clothing store having a store sign bearing the trade-mark and the advertisement in the 1992 Penticton telephone directory referring to THE BUM WRAP under the heading clothing” show use of the trade-mark in the advertisement of registered services […]

 

[…]

 

[…] In the present case, the evidence shows the trade-mark being advertised in the Penticton telephone directory in association with the services during the relevant period and the evidence establishes that the trade-mark was also used in the performance of the services during the relevant period.

 

See also El Toro Restaurant & Pizzeria Ltd. (Re) (1996), 70 C.P.R. (3d) 346 (T.M.O.B.).

[47]           In the present case, because the notice date is June 14, 2002, only the December 2001-December 2002 and the August 2002-August 2003 directories can be used as evidence of use within the requisite period. One is for a Mississauga branch of the Applicant and one for Oshawa.  These two directories provide some evidence of use during the requisite period.  They also provide evidence that the services that are provided consist of a wide variety of automobile-related accessories, including tinting.

[48]           With respect to the invoices, displaying the mark on invoices, envelopes and business cards may constitute use of a mark in association with an automobile sales and servicing business.  In Campbell Ford Sales Ltd. (Re), [1996] T.M.O.B. No. 117 (QL), cited by the Applicant, C.R. Vandenakker, Hearing Officer, held at paragraph 9 as follows:

In the present case, the registrant has stated that the trade-mark is in use and has been for a number of years. To corroborate this statement, the registrant has attached copies of representative invoices dated within the relevant period for servicing of automobiles showing the trade-mark THE HOME OF THE “HASSLE-FREE LOANER” marked directly thereon.  Further, the registrant has included a card clearly displaying the trade-mark which the registrant deposes is given to all customers for new cars and for used cars for which the warranty has not expired.  In my view, this evidence is sufficient to show use of the mark in the performance of services pursuant to s. 4(2) of the Act.

 

[49]           D. Savard in Accessoires d’Autos Nordiques Inc. (Re), [2005] T.M.O.B. No. 163 (QL) discusses the distinction between invoices as evidence of use in association with wares and of services at paragraph 26:

The fact that the trade-mark appears at the top of the invoices, or on a sign in front of the registrant’s business or on bags used to insert one or more items being purchased by a customer does not in this case serve to prove the type of association required between the trade-mark and these wares pursuant to s.4(1). […] taking into consideration that the registrant’s business is operated under the trade-mark NORDIQUES it seems most likely that the use or display of the trade-mark on store signs, on bags and on the invoices would be considered a use of the mark in association with the registrant’s business […]

 

 

[50]           Thus, the invoices submitted in the Supplemental Affidavit in the present case of Mrs. Starkman, particularly in conjunction with the telephone directories, are, in my view, sufficient to show use in relation to the identified services. From the cases, it does not appear that a vast degree of evidence is needed to demonstrate use. What is necessary is to show all the necessary elements of use. I believe the Applicant has done that here.  The invoices, in conjunction with the descriptions in the telephone directories, do demonstrate use with respect to the provision of services relating to automobile tint and provision of automobile accessories. It is less certain that automotive leasing is evidenced by the documents provided, but, in my view, this can be construed as a part of the broad class of services.

 

JUDGMENT

 

THIS COURT ORDERS THAT:

 

1.                  The Appeal is allowed in part. The Decision of the Registrar with respect to the expungement of wares from the Register is upheld, but the Mark is restored with respect to the services on the Register.

 

“James Russell”

FEDERAL COURT

 

SOLICITORS OF RECORD

 

 

 

DOCKET:                                          T-588-06

 

STYLE OF CAUSE:                          TINT KING OF CALIFORNIA INC. v.

                                                            REGISTRAR OF TRADE MARKS and others

 

 

 

 

PLACE OF HEARING:                    Toronto, Ontario

 

DATE OF HEARING:                      August 15, 2006

 

REASONS FOR JUDGMENT:       RUSSELL J.

 

DATED:                                             November 28, 2006

 

 

 

APPEARANCES:

 

Mr. Michael R. Carey	FOR THE APPLICANT
(No one appearing)	FOR THE RESPONDENTS

 

SOLICITORS OF RECORD:

 

Macdonald Sager Manis LLP Toronto, Ontario	FOR THE APPLICANT
Not applicable	FOR THE RESPONDENTS