Federal Court of Appeal Decisions

Date: 20070419

Docket: A-248-06

Citation: 2007 FCA 162

CORAM:       SEXTON J.A.

                        PELLETIER J.A.

                        MALONE J.A.

BETWEEN:

SPIRITS INTERNATIONAL N.V.

Appellant

and

REGISTRAR OF TRADE-MARKS and SC PRODAL 94 SRL

Respondents

Heard at Ottawa, Ontario, on April 19, 2007.

Judgment delivered from the Bench at Ottawa, Ontario, on April 19, 2007.

REASONS FOR JUDGMENT OF THE COURT BY:                                                MALONE J.A.

Date: 20070419

Docket: A-248-06

Citation: 2007 FCA 162

CORAM:       SEXTON J.A.

                        PELLETIER J.A.

                        MALONE J.A.

BETWEEN:

SPIRITS INTERNATIONAL N.V.

Appellant

and

REGISTRAR OF TRADE-MARKS and SC PRODAL 94 SRL

Respondents

REASONS FOR JUDGMENT OF THE COURT

(Delivered from the Bench at Ottawa, Ontario, on April 19, 2007)

MALONE J.A.

[1]               We are all of the view that this appeal should be dismissed. 

[2]               The Applications Judge correctly concluded that the proper standard of review was reasonableness simpliciter and he conducted his analysis on that standard.

[3]               The Applications Judge reviewed the evidence relied on by the Registrar of Trade-marks in light of the three prong test in Registrar of Trademarks v. Harris Knitting Mills Ltd. (1985), 60 N.R. 380 (F.C.A.).  We are unable to say that the Applications Judge committed any error when he concluded that there was sufficient evidence that qualified as special circumstances so as to permit the Registrar to conclude that the registrant had met the test for excusable non-use of the trade-mark and that the Registrar’s decision was reasonable.

[4]               That said, it seems to us that the practice of maintaining the registration and simultaneously issuing a second notice under s.45 is to be discouraged.  Such a practice can have no other effect than that which it had here, which is to put into question the soundness of the first decision.

[5]               We would dismiss the appeal with costs.

"B. Malone"

                                                  FEDERAL COURT OF APPEAL

                            NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                                                                              A-248-06

STYLE OF CAUSE:                                                              SPIRITS INTERNATIONAL N.V.

                                                                                                 v.

REGISTRAR OF TRADE-MARKS

and

SC PRODAL 94 SRL

PLACE OF HEARING:                                                        OTTAWA, ONTARIO

DATE OF HEARING:                                                          APRIL 19, 2007

REASONS FOR JUDGMENT OF THE COURT BY:       SEXTON, PELLETIER, MALONE JJ.A.

DELIVERED FROM THE BENCH BY:                            MALONE J.A.

APPEARANCES:

SOLICITORS OF RECORD: