Federal Court Decisions

Date: 20061207

Docket: T-148-06

Citation: 2006 FC 1468

Toronto, Ontario, December 7, 2006

PRESENT:     The Honourable Barry Strayer

BETWEEN:

JAGOTEC AG

Applicant

and

RICHES, MCKENZIE & HERBERT LLP

Respondent

REASONS FOR JUDGMENT AND JUDGMENT

[1]               This is an appeal from the decision made on behalf of the Registrar of Trade-marks by a Member of the Opposition Board (Member) of November 22, 2005 to expunge the applicant’s trade mark from the register under section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (Act). The trade mark consists of the words VISIBLE YOUTH, to be used in association with various skin-care products.

[2]               The relevant period within which the registrant was required to prove use at some time was October 24, 1999 to October 24, 2002. The present registrant became the owner of the mark by assignment on August 15, 2001. The evidence of use before the Member, and before the Court on appeal, pertained to the period when its predecessor, SkyePharma PLC, an English company, was the registrant of the mark.

[3]               The Member found that the evidence of use of that mark during the relevant period by SkyePharma PLC was inadequate and therefore the mark should be expunged. On this appeal two new affidavits were filed: one of Thomas Zech, a Vice-President of SkyePharma, Inc. (Skye) of California, a subsidiary of SkyePharma PLC. According to him, under direction from the registrant parent company Skye managed the sale and distribution of Visible Youth products in Canada through its Canadian distributor PharmApprove of Brampton, Ontario. The other new affidavit was sworn by Patricia Anderson, at the relevant times President of PharmApprove. In her affidavit she described a sales process whereby her company received orders from Canadian customers and directed a warehouse in Toronto to ship the product to the Canadian purchaser, with a copy of the order being sent to Skye. Skye issued invoices to, and received payment from, Canadian customers. It also kept records of Canadian sales and provided copies of those records from time to time to PharmApprove.

[4]               Both affidavits had exhibits of invoices issued during the period, sales records, and pictures of the products as sold bearing the words VISIBLE YOUTH. Pictures of advertising material were also exhibited.

[5]               It is well settled that in a section 45 proceeding it is not necessary that the registrant produce detailed and complete records of use. Only a prima facie case of use need be shown. Proof of a single sale if bona fide during the relevant period is enough: see Philip Morris Inc. v. Imperial Tobacco Ltd. et. al. (1987), 13 C.P.R. (3d) 289; Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483; Vogue Brassière Inc. v. Sim & McBurney (1999), 5 C.P.R. (4^th) 537 (all F.C.T.D.).

[6]                The applicant does not press the point that the Member erred in his factual findings but instead relies on the new affidavits filed on the appeal. In assessing this new evidence I must make new factual findings and therefore the standard of review is correctness: see John Labatt Ltd. et. al v. Molson Breweries (2000), 5 C.P.R. (4^th) 180 at 196 (F.C.A.).

[7]               I am satisfied that on the basis of the two new affidavits the applicant has demonstrated that during the relevant period, at least prior to the assignment of the trade mark to the present registrant in August 2001, the trade mark was used through sales of the wares in Canada in containers or packaging bearing the words VISIBLE YOUTH. The invoices, brochures, and sales records do not per se prove such use, but they corroborate the evidence of the two affiants that such sales occurred.

[8]               The respondent also argues that the words VISIBLE YOUTH as they appeared on the products were not a proper depiction of the trade mark as registered. It was said that, as presented on containers and packaging, the two words were placed one above the other with either a horizontal line or design between the two words. On first impression I find this argument unconvincing. I believe any casual observer would immediately associate the two words as part of a descriptive expression. In particular, it would be unnatural to interpret the adjective “visible” as standing alone without a noun to modify.

[9]               I will therefore allow this appeal with costs to the applicant.  

JUDGMENT

            It is hereby ordered and adjudged that:

1.                  The application for judicial review be allowed with costs to the applicant;

2.                  The decision of the Member of the Opposition Board of November 22, 2005 be set aside; and

3.                  Registration No. TMA393,144 be maintained.

“Barry Strayer”

FEDERAL COURT

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                          T-148-06

STYLE OF CAUSE:                          JAGOTEC AG v. RICHES MCKENZIE & HERBERT LLP

PLACE OF HEARING:                    Toronto, Ontario

DATE OF HEARING:                      December 6, 2006

REASONS FOR JUDGMENT

AND JUDGMENT BY:                    STRAYER D.J.

DATED:                                             December 7, 2006

APPEARANCES:

SOLICITORS OF RECORD: