Date: 20050214
Docket: A-284-04
Citation: 2005 FCA 64
CORAM: DÉCARY J.A.
LÉTOURNEAU J.A.
PELLETIER J.A.
BETWEEN:
ECLIPSE INTERNATIONAL FASHIONS CANADA INC.
Appellant
and
SHAPIRO COHEN
Respondent
Hearing held at Montréal, Quebec, February 14, 2005.
Judgment delivered from the bench at Montréal, Quebec, February 14, 2005.
REASONS FOR JUDGMENT OF THE COURT: LÉTOURNEAU J.A.
Date: 20050214
Docket: A-284-04
Citation: 2005 FCA 64
CORAM: DÉCARY J.A.
LÉTOURNEAU J.A.
PELLETIER J.A.
BETWEEN:
ECLIPSE INTERNATIONAL FASHIONS CANADA INC.
Appellant
and
SHAPIRO COHEN
Respondent
REASONS FOR JUDGMENT OF THE COURT
(Delivered from the bench at Montréal, Quebec, February 14, 2005)
LÉTOURNEAU J.A.
[1] We are of the view that the appeal should be allowed and that the decision of the Federal Court should be overturned.
[2] This decision by the Federal Court upheld the decision of the Registrar of Trade-marks to expunge the appellant's trade-mark pursuant to section 45 of the Act relating to trade-marks and unfair competition, R.S.C. 1985, c. T-13. The Court found that the fresh evidence in the case, adduced in the Federal Court, was not such as to affect the Registrar's decision.
[3] However, the uncontradicted fresh evidence of Mr. Khanna, the purchasing manager and authorized representative of the appellant, clearly refers to the sale of ladies' clothing: see his affidavit in the Appeal Book, Document E, paragraphs 13 to 26.
[4] Furthermore, there is a correlation in the file, for the period in dispute, between the patterns or designs used in the manufacture of the clothing and some of the sales invoices for that clothing. And invoice no. 015533, which is Exhibit A-15 in the Appeal Book, discloses a sale by the appellant on July 8, 1999, to Saan Stores Ltd., of sports clothing bearing the Eclipse label as well as a hang tag of the same name. Mr. Khanna states in his affidavit, and the point is uncontradicted, that this was women's sports clothing.
[5] To use the language of our former colleague, Mr. Justice Hugessen, in Central Transport, Inc. v. Mantha & Associés/Associates (1995), 64 C.P.R. (3d) 354, Mr. Khanna's affidavit contains not assertions of use of the mark within the meaning of section 45 (a matter of law), but assertions of facts showing use of the mark in question.
[6] As we know, it is not necessary, in the context of an expungement request under section 45, to provide an over-abundance of evidence of use or utilization of the mark. The purpose of section 45 is to rid the register of "dead wood": see Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62.
[7] Of course, the affidavits before the Registrar and the Federal Court could have been more explicit. But, as Mr. Justice Cattanach said in Keepsake, Inc. v. Prestons Ltd. (1983), 69 C.P.R. (2d) 50 (F.C.T.D.), at page 61, the inference can properly be drawn from the evidence as a whole that some sales of women's clothing were made by the appellant in the normal course of trade and that the mark was used or in use during the period in question.
[8] In our humble opinion, the Federal Court disregarded the evidence of Mr. Khanna, who, contrary to the affidavit filed with the Registrar, was now describing in his affidavit the use made of the trade-mark based on wares sold.
[9] For these reasons, the appeal will be allowed with costs, the decision of the Federal Court will be overturned and, to make the decision that should have been made, the appeal of the Registrar's decision in the Federal Court will be allowed with costs and the decision of the Registrar will be overturned.
"Gilles Létourneau"
J.A.
Certified true translation
Peter Douglas
FEDERAL COURT OF APPEAL
SOLICITORS OF RECORD
DOCKET: A-284-04
APPEAL FROM A DECISION OF MADAM JUSTICE DANIÈLE TREMBLAY-LAMER, DATED APRIL 26, 2004, FEDERAL COURT DOCKET NO. T-599-03
STYLE OF CAUSE: ECLIPSE INTERNATIONAL FASHIONS CANADA INC. v. SHAPIRO COHEN
PLACE OF HEARING: Montréal, Quebec
DATE OF HEARING: February 14, 2005
REASONS FOR JUDGMENT
OF THE COURT: DÉCARY J.A.
LÉTOURNEAU J.A.
PELLETIER J.A.
DELIVERED FROM
THE BENCH BY: LÉTOURNEAU J.A.
APPEARANCES:
Claudette Dagenais FOR THE APPELLANT
Chantal Bertosa FOR THE RESPONDENT
SOLICITORS OF RECORD:
DAGENAIS ET ASSOCIÉS FOR THE APPELLANT
Montréal, Quebec
SHAPIRO COHEN FOR THE RESPONDENT
Ottawa, Ontario