Date: 20001122
Docket: T-1076-95
| IN THE MATTER OF Sections 45 and 56 of the Trade Marks Act |
| R.S.C. 1985, c. T-13 |
| AND IN THE MATTER OF an Appeal from the decision rendered |
| on behalf of the Registrar of Trade Marks dated March 24, 1995 |
BETWEEN:
SOCIETE NATIONALE DES CHEMINS DE FER FRANCAIS SNCF
Appellant
- and -
VENICE SIMPLON-ORIENT-EXPRESS INC.
Respondent
- and -
THE REGISTRAR OF TRADE MARKS
Respondent
REASONS FOR ORDER
McKEOWN J.
[1] The Appellant appeals the decision of the Registrar of Trade Marks in respect of section 45 Proof-of-Use proceedings under the Trade Marks Act. The Respondent registered two trade-marks in November, 1985 based on use in Canada and association with "Travel services, namely railway and passenger service" and the two trade marks have remained on the Register continuously to date. The Registrar issued a section 45 notice with respect to both marks on July 4, 1991 at the request of the Appellant.
[2] The Respondent provided the Registrar with the affidavit of Mr. Hetherington which identified fourteen invoices, six of which pre-dated the July 4, 1991 notice issued by the Registrar. All of the six invoices issued prior to July 4, 1991 (and all but one of the remainder) are directed to Canadian travel agents who acted as intermediaries between the Respondent and the Canadian clients who wished to use the rail services.
[3] The Registrar issued his decision on March 24, 1995. He decided:
| (1) That the booking service in question constituted "travel services, namely railway passenger services", as that phrase is "broad enough to encompass incidental or ancillary services such as train ticketing and train reservations or other such incidental or ancillary services". The Registrar noted that the Act does not distinguish between primary, incidental and ancillary services, which suggested a broad rather than a restrictive interpretation of the phrase at issue; |
| (2) That the Canadian travel agencies act as agents for the Respondent, so that in effect the Respondent has provided reservation and ticketing services in Canada through these travel agencies; and |
| (3) That the provision of such services was made in the relevant period because the trade-marks appeared on the Respondent's invoices and "were being used when such services were being performed". |
[4] There are three issues in this case:
| (1) Did the Registrar err in finding the performance in Canada by travel agencies of booking, reservation and ticketing services constitutes the performance in Canada of such services by the Registrant?; |
| (2) Did the Registrar err in finding that the trade-marks ORIENT-EXPRESS and VENICE SIMPLON-ORIENT-EXPRESS were used in Canada by the Registrant in association with the performance in Canada of a railway passenger service at the relevant period?; and |
| (3) Did the Registrar err in finding that booking, reservation and ticketing services performed in Canada in relation to a railway passenger service performed in Europe constitutes use in Canada by the Registrant of the trade-marks ORIENT-EXPRESS and VENICE SIMPLON-ORIENT-EXPRESS in association with the performance of a "railway passenger service" in Canada? |
ANALYSIS
[5] The standard of review in a case such as this is reasonableness simpliciter. There is no new evidence adduced on this appeal. John Labatt v. Molson Breweries (2000), 5 C.P.R. (4th) 180 (F.C.A.) set out that decisions of the Registrar, whether of fact, law or discretion, within his area of expertise, are to be reviewed on a standard of reasonableness simpliciter. The standard can also be restated to say that the Court must find the Registrar's decision is not reasonable or is clearly wrong before it can substitute its own decision for that of the Registrar.
[6] The Appellant submits that the Registrar erred in finding that the performance in Canada by travel agencies of booking, reservations and ticketing services constituted the performance in Canada of such services by the Registrant. The Appellant states that the Registrar erred when he stated at page 3 of his decision, "I conclude that the registrant's services that are performed in Canada are `train reservations and ticketing services' and that such services are provided to the ultimate consumer". However, it is necessary to read the rest of that sentence after "ultimate consumer" where it states: "that is the general public through an intermediary, i.e. Canadian travel agencies." The Registrar went on and stated, again at page 3 of his decision:
| As the evidence clearly shows that booking and reservations for the rail line services of the registrant may be made in Canada through the Canadian travel agencies and as the invoices confirm that reservation and ticketing services were provided in Canada by the registrant through the travel agencies. I conclude that the registered services were performed in Canada by the registrant. |
[7] The invoices to the travel agencies are issued by Venice Simplon-Orient-Express Inc. and have the two trade-marks in question thereon.
[8] The Registrar dealt with client names, stating at pages 1 and 2:
| I agree that the services covered by the registration may lead to different interpretations. |
| Consequently, one of the main issues to be determined in this proceeding is whether the expression "travel services namely railway passenger service" as appearing in the statement of services of the registration ought to be given a narrow interpretation, i.e., "the operation of a train" or a broader interpretation, i.e. "any ancillary services or activities conducted with respect to the transport of passengers by train and of which the operation of a train is merely one aspect". |
| There is no definition for "services" in the statute. Consequently, the statute makes no distinction between primary, incidental or ancillary services. They need only be services and from the case law it would seem that as long as some members of the public, some consumers or purchasers receive a benefit from the activity, it is a service. In this regard see Kraft Limited v. The Registrar of Trade-marks, 1 C.P.R. (3d) 457, Anheuser-Bush, Inc. v. Carling O'Keefe of Canada Ltd., 4 C.P.R. (3d) 216, and Saks & Co. v. Registrar of Trade-marks, 24 C.P.R. (3d) 49. |
| I tend to agree with counsel for the registrant when he states that the expression "railway passenger service" even in the singular, stands on its own and could include more than the operation of a train. The expression, in my view, conveys several ideas and I can see no reason why such an expression should be given a restrictive interpretation. |
[9] The Registrar's views in this respect are confirmed by the statement of Strayer J. in Kraft Limited v. Registrar of Trade Marks, (1984) 1 C.P.R. (3d) 457 at 461 where he states:
| The basic requirement of a trade mark with respect to services, then, is that it "distinguish" ... services ... performed by [a person] from those ... performed by others ...". It is this definition which brings within the scope of the Act trade marks with respect to services. 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. |
[10] The term "services" was interpreted broadly in Saks & Co. v. Registrar of Trade-marks et al. (1989), 24 C.P.R. (3d) 49 (F.C.T.D.). In that case Saks did not have a Canadian store but did receive mail and telephone orders from Canada for merchandise. The services in that case were performed without the Canadian customer having to leave Canada. In my view the words "travel services, namely passenger rail services" should not be given any more limited scope. Thus, it was reasonable to find that the performance in Canada by a travel agency of booking, reservation and ticketing services constitutes the performance in Canada of such services by the registrant.
[11] In respect of issues (2) and (3), the Appellant admits that the use of the words in issue, ORIENT-EXPRESS and VENICE SIMPLON-ORIENT EXPRESS appear in evidence on invoices for the relevant period issued by the Respondent to travel agencies in Canada. However, the Appellant says that there is no evidence of a sale to the ultimate consumer. This is not required. MacGuigan J. A. reviewed this subject matter in Philip Morris Inc. v. Imperial Tobacco Ltd. (No. 2) (1987), 17 C.P.R. (3d) 237 (F.C.A.). He covered a number of the points in issue here at 241 of his reasons when he said:
| As this court has frequently said, s. 44 [now s. 45] is designed primarily to clear the register of dead wood, not to resolve issues in contention between competing commercial interests, which would be resolved in expungement proceedings under s. 57: Moosehead Breweries Ltd. v. Molson Cos. Ltd. et al. (1985), 11 C.P.R. (3d) 208 at p. 210, 63 N.R. 140 at p. 141. |
| McNair J. has recently held in Philip Morris Inc. v. Imperial Tobacco Ltd. et al. (1987), 13 C.P.R. (3d) 289, that evidence of a single sale in the normal course of trade, whether wholesale or retail, may suffice. |
| Moreover, this Court has held that evidence as to use in the normal course of trade is not limited to use prior to the notice date: John Labatt Ltd. v. Rainier Brewing Co. et al. (1984), 80 C.P.R. (2d) 228, 2 C.I.P.R. 22, 54 N.R. 296. ... |
| The respondent, as a manufacturer, normally sells to wholesalers. Evidence of sales to wholesalers is therefore evidence of its normal course of trade. In my view, if there is apparently genuine evidence as to the normal course of trade, the limited nature of s. 44 proceedings does not allow a court to question that evidence on the basis of its own view, unsupported by evidence, as to what constitutes the normal course of trade. |
[12] The Registrar only had evidence before him regarding sales by the registrant to travel agents who in turn sold to customers. It is not necessary to show a sale to an ultimate consumer or to produce evidence that the trade-marks were located on the actual tickets. Any use of the trade-mark along the chain of distribution is sufficient to demonstrate use as stated by Dubé J. in Hartco Enterprises Inc. v. Becterm Inc. (1989), 24 C.P.R. (3d) 223 (F.C.T.D.) at 227:
| Under s-s. 4(2) of the Act a trade mark is deemed to be used in association with "services" if it is used or displayed in the performance or advertising of such services. Such evidence may be invoices, correspondence, etc. |
[13] The Appellant also raised the issue as to whether or not the registered owner of the trade-marks was clearly identified as being the person who was providing the services. However, the invoices supplied by the registrant clearly indicate that the company sending out the invoices was Venice Simplon-Orient-Express Inc. Furthermore, as Cullen J. stated in Vogue Brassiere Inc. v. Sim & McBurney et al. (2000), 5 C.P.R. (4th) 537, the name of the registrant does not have to appear in the same place as the document showing that the trade-mark was in use. He states at paragraph 36:
| Furthermore, ... the fact that the registrant's name does not appear on the goods is irrelevant as the Act does not require the name of the registrant to appear in association with the trade-mark. |
[14] He also points out that evidence of a single sale may well suffice, "so 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." There is no evidence here to show that the Respondent was deliberately contriving to protect the registration of the trade-mark by the use of these invoices.
[15] In my view there is no error in fact or law by the Registrar and his decision is reasonable.
[16] The appeal is dismissed. Costs to the Respondent.
"W.P. McKeown"
JUDGE
OTTAWA, ONTARIO
November 22, 2000
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1076-95
STYLE OF CAUSE: SOCIÉTÉ NATIONALE DES CHEMINS DE
FER FRANÇAIS SNCF
v. VENICE SIMPLON-ORIENT-EXPRESS INC.
ET AL.
PLACE OF HEARING: OTTAWA, ONTARIO
DATE OF HEARING: OCTOBER 23, 2000
REASONS FOR ORDER OF JUSTICE McKEOWN
DATED: NOVEMBER 22, 2000
APPEARANCES:
| DAVID FRENCH REPRESENTING THE APPELLANT |
| CAROL HITCHMAN REPRESENTING THE RESPONDENT |
| and VENICE SIMPLON-ORIENT-EXPRESS INC. |
COREY BERGSTEIN
SOLICITORS OF RECORD:
| DAVID FRENCH REPRESENTING THE APPELLANT |
OTTAWA, ONTARIO
| HITCHMAN & SPRIGINGS REPRESENTING THE RESPONDENT |
| TORONTO, ONTARIO VENICE SIMPLON-ORIENT-EXPRESS INC. |