Date: 20001026
Docket: A-866-97
CORAM: ROTHSTEIN J.A.
MCDONALD J.A.
SHARLOW J.A.
BETWEEN:
SIM & McBURNEY
Appellant
- and -
GESCO INDUSTRIES, INC.
and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT
Heard at Toronto, Ontario on Tuesday, October 24, 2000
Judgment delivered at Toronto, Ontario
on Thursday, October 26, 2000
| REASONS FOR JUDGMENT OF THE COURT BY: ROTHSTEIN J.A. |
Date: 20001026
Docket: A-866-97
CORAM: ROTHSTEIN J.A.
McDONALD J.A.
SHARLOW J.A.
BETWEEN:
SIM & McBURNEY
Appellant
- and -
GESCO INDUSTRIES, INC.
and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT
(Delivered from the Bench at Toronto, Ontario
on Thursday, October 26, 2000)
ROTHSTEIN J.A.
[1] The issue in this appeal is whether Gesco Industries, Inc.'s (Gesco) registered trade-mark "STAINSHIELD" is used in association with "services of stain resistant treatment for application to carpets, rugs" as described in its registration.
[2] Following a request by the appellant under subsection 45(1) of the Trade-marks Act, R.S.C 1985, c. T-13, as amended, and after receiving evidence from Gesco, and hearing submissions, the Registrar of Trade-marks found the "STAINSHIELD" trade-mark was used in association with wares and not services as specified in the registration. Pursuant to subsection 45(3) of the Trade-marks Act, she expunged the trade-mark. Gesco appealed to the Federal Court Trial Division under section 56 of the Act. The Trial Judge found that the function of the Registrar under section 45 is only to determine whether a trade-mark is used and that the Registrar exceeded her jurisdiction in going on to decide that the use was in association with wares and not services. He determined that the evidence adduced before him established the requisite use. He allowed the appeal and ordered the trade-mark re-entered on the register.
[3] Subsections 45(1) and (3) provide:
| 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. . . . (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. . . . |
| 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. . . . (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 le justifient, l'enregistrement de cette marque de commerce est susceptible de radiation ou de modification en conséquence. . . . |
| [4] We are of the view that the Registrar did not exceed her jurisdiction in considering whether the use described by Gesco was in association with wares or services. While section 45 is a summary procedure, it does require the Registrar to determine whether a trade-mark is used in association with wares or services specified in the registration. The relevant words of subsection 45(3) are whether the trade-mark is used "either with respect to all of the wares or services specified in the registration or with respect to any of those wares or services." Where no evidence of use in association with any of the wares or services specified in the registration is furnished, the registration of the trade-mark is liable to be expunged. Where there is evidence of use with respect to some but not all of the wares or services specified in the registration, the registration is liable to be amended by the deletion of the wares or services for which there is no evidence of use. For this reason, we do not agree with the finding of the learned Trial Judge that the jurisdiction of the Registrar under subsection 45(3) is only to determine whether there is evidence of use. The Registrar did not exceed her jurisdiction in deciding whether there was use of the trade-mark in association with services. |
| [5] However, we are of the view that the Registrar erred in concluding that the trade-mark was not used in association with services. Generally, a determination as to whether a trade-mark is used in association with specified wares or services is factual in nature. In this case, however, the Registrar's findings contain an implicit legal determination, namely, that a trade-mark used in association with services applied to a product before it is sold constitutes use in association with wares and not use in association with services. Indeed, the Registrar's reasons indicate that to qualify as a trade-mark in association with services, the services must be rendered directly to the public and not to a product before it is sold to the public. In making this determination, we think the Registrar erred on a fundamental issue of statutory interpretation that has a significance beyond the facts of this case with respect to which the Court is entitled to intervene. |
| [6] Section 4 of the Trade-marks Act deems when a trade-mark is used in association with wares or services: |
| 4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. (2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. . . . |
4. (1) Une marque de commerce est réputée employée en liaison avec des marchandises si, lors du transfert de la propriété ou de la possession de ces marchandises, dans la pratique normale du commerce, elle est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont distribuées, ou si elle est, de toute autre manière, liée aux marchandises à tel point qu'avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée. (2) Une marque de commerce est réputée employée en liaison avec des services si elle est employée ou montrée dans l'exécution ou l'annonce de ces services. . . . |
| [7] The appellant submits, and apparently the Registrar was of the same view, that the services referred to in subsection 4(2) must be services offered to the public independently of wares. It is said that if the services are an input to wares, then any trade-mark associated with those services must be deemed to be a trade-mark in association with the wares only. |
| [8] We see nothing in section 4 that so restricts the services with which a trade-mark may be associated. In our respectful view, whether the services are applied to a product before it is sold or may be obtained directly at the customer's option is not a criterion in subsection 4(2). Subsection 4(2) provides that a trade-mark is deemed to be used in association with services if it is displayed in the advertising of those services. That is the evidence here. The December 17, 1996 affidavit of the vice-president of merchandising for Gesco filed in the Trial Division indicates that "STAINSHIELD" is not a type or brand of carpet. Nor is it a solution in a bottle or spray to be applied to carpets. Rather, "STAINSHIELD" is used to advertise Gesco's process of applying a stain-resistant solution to certain of its lines of carpets. Nothing in subsection 4(2) restricts services to those that are independently offered to the public or that are not ancillary or connected with wares. |
| [9] By contrast, under subsection 4(1), in order to be a trade-mark deemed to be used in association with wares, a number of conditions must be satisfied, i.e. whether the trade-mark is used at the time of the transfer of the property or possession of the wares, whether it is in the normal course of trade, whether it is marked on the wares or packages. Parliament did not impose such restrictions or conditions on when a trade-mark is to be deemed to be used in association with services. |
| [10] In Kraft Limited v. Registar of Trade-marks (1984), 1 C.P.R. (3d) 457, Strayer J. (as he then was) noted that there has been little guidance in the jurisprudence as to the proper interpretation of the word "services" as used in the Trade-marks Act. That remains the case today. After considering United States jurisprudence cited to him, Strayer J. adopted a broad construction of the term "services". At page 460, he states: |
| I am led to somewhat the same conclusion as that of the Court of Customs and Patent Appeals in American Int'l Reinsurance Co., Inc. v. Airco, Inc. (1978), 197 U.S.P.Q. 69 at p. 71, where the court in speaking of the Lanham Act observed as follows: |
| It would appear self-evident that no attempt was made to define "services" simply because of the plethora of services that the human mind is capable of conceiving. This, ipso facto, would suggest that the term be liberally construed. Cognizant of the foregoing statement, each case must be decided on its own facts, giving proper regard to judicial precedent. |
| He then continues at page 461: |
| I can see nothing in this definition to suggest that the "services" with respect to which a trade-mark may be established are limited to those which are not "incidental" or "ancillary" to the sale of goods. |
| We adopt this reasoning of Strayer J. |
| [11] Each case must be decided on its own facts. Here, the "STAINSHIELD" trademark is displayed in the advertising of the treatment of some of Gesco's lines of carpets and rugs. The services may be ancillary to the wares, but that does not mean that the trade-mark is not used in association with the services. On the facts in this case, and on the basis of our view of the law as we have expressed it, we conclude that the trade-mark "STAINSHIELD" is used in association with the services disclosed in the registration of the trade-mark. |
| [12] The Registar therefore erred in expunging the "STAINSHIELD" trade-mark from the register. The Trial Judge was correct in ordering that it be re-entered on the register. |
| [13] This appeal will be dismissed with costs. |
| "Marshall Rothstein" |
| J.A. |
| Toronto, Ontario |
| October 26, 2000 |
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
| DOCKET: A-866-97 |
| STYLE OF CAUSE: SIM & McBURNEY |
Appellant
- and -
GESCO INDUSTRIES, INC. and
THE REGISTRAR OF TRADE-MARKS
Respondents
| DATE OF HEARING: TUESDAY, OCTOBER 24, 2000 |
| PLACE OF HEARING: TORONTO, ONTARIO |
| REASONS FOR JUDGMENT BY: ROTHSTEIN J.A. |
| DATED: THURSDAY, OCTOBER 26 , 2000 |
| APPEARANCES BY: Mr. Kenneth D. McKay |
For the Appellant
Ms. Marilyn Field-Marshall
For the Respondent, Gesco Industries, Inc.
Mr. Sean Gaudet
| For the Respondent, The Registrar of Trade-Marks |
| SOLICITORS OF RECORD: SIM, HUGHES, ASHTON & McKAY |
330 University Avenue
6 thFloor
Toronto, Ontario
| M5G 1R7 |
| For the Appellant |
Page: 2
SOLICITORS OF RECORD:
(Continued) OSLER, HOSKIN & HARCOURT
P.O. Box 50, First Canadian Place
Toronto, Ontario
M5X 1B8
For the Respondent, Gesco Industries, Inc.
Morris Rosenberg
| Deputy Attorney General of Canada |
| For the Respondent, The Registrar of Trade-Marks |
FEDERAL COURT OF CANADA
| COURT OF APPEAL |
Date: 20001026
Docket: A-866-97
BETWEEN:
SIM & McBURNEY
Appellant
- and -
GESCO INDUSTRIES, INC. and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR JUDGMENT