Date: 20040521
Docket: T-1396-03
Citation: 2004 FC 753
Ottawa, Ontario, May 21, 2004
Before the Honourable Mr. Justice W. Andrew MacKay
BETWEEN:
CASSELS BROCK & BLACKWELL LLP
Appellant
and
REGISTRAR OF TRADE-MARKS and
MONTORSI FRANCESCO E FIGLI S.p.A.
Respondents
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an appeal pursuant to section 56 of the Trade-marks Act, R.S. 1985, c. T-13 ("the Act") from a decision dated June 5, 2003, by a senior hearing officer, acting for the Registrar of Trade-marks, whereby the trade-mark No. 352,264 for Daniel & Design for use with San Daniele ham ("the trade-mark") was maintained on the Register, and a second proceeding pursuant to section 45 was ordered.
[2] The decision of the Registrar was made in respect of proceedings initiated by the appellant (Cassels Brock & Blackwell LLP) pursuant to section 45 and a notice under s-s. 45.(1) dated January 25, 2001, requiring the respondent (Montorsi Francesco E Figli S.p.A.) to show whether, at any time during the three-year period immediately preceding the date of the notice, the trade-mark was in use in Canada, and if not, the date when it was last in use and the reason for the absence of use since that date.
[3] The appellant requests that the decision of the Registrar be set aside, and that the trade-mark be expunged from the Register.
Facts
[4] On August 7, 1986, Prosciutti Daniel filed an application to register the trade-mark in Canada in association with "San Daniele Ham." The application claimed registration in Canada based on use and registration of the same trade-mark in Italy. The trade-mark was registered in Canada on April 7, 1989, for use in association with San Daniele ham produced in Italy where it was registered as an Italian trade-mark, number 438,331 dated July 21, 1986. By way of merger effected December 31, 1994, the respondent Montorsi became the owner of the trade-mark.
[5] San Daniele ham is a regional food. Conditions for production are regulated under Italian and European law. Any product called "San Daniele ham" must originate from the Friuli-Venezia-Giulia area of Italy, and must be produced in accordance with prescribed methods and quality control by members of the San Daniele Ham Consortium.
[6] By notice issued January 15, 2001 by the Registrar of Trade-marks, at the request of the appellant, the current owner of the trade-mark, Montorsi, was required to provide evidence of use of the trade-mark within the period January 15, 1998 to January 15, 2001, or the date when it was last in use and the reasons for the absence of use since that date. In response, the respondent filed the affidavits of Mr. Didone Donato, Director of Marketing of the respondent Montorsi.
[7] In the record of the Registrar produced for this proceeding a further affidavit of Mr. Donato was filed on December 5, 2003. This was said by the respondent to have been filed in reply to the second section 45 proceeding. That affidavit is here ignored so that the record before the Court, for the purposes of this appeal, is the same as it was before the Registrar when the decision appealed from was made. There was no new evidence presented on this appeal.
[8] The hearing officer concluded that the respondent had established that its failure to use the trade-mark was due to special circumstances, and that the registration should be maintained. However, she also concluded that certain aspects of Mr. Donato's evidence were vague, concerning, inter alia, aspects and timing surrounding the anticipated completion of the certification process required for admission of the product to Canada, and she decided that a further section 45 notice should be issued. She concluded, among other things:
It is clear from the evidence that Montorsi Francesco has not sold San Daniele Ham in Canada under the registered trade-mark. The issue then is whether the non-use has been due to special circumstances that excuse the absence of use.
The test for special circumstances excusing non-use of a trade-mark was laid out by the Federal Court of Appeal in Harris Knitting Mills. There are three considerations. First, the length of time during which the trade-mark has not been in use; second, whether the registered owner's reasons for not using its trade-mark were due to circumstances beyond his or her control; and third, whether there exists a serious intention on the part of the registrant to shortly resume use.
[9] In applying the test she concluded that there were special circumstances sufficient to maintain the trade-mark on the Register:
Given that it appears ongoing steps have been taken by the Consortium, the Italian Government, and the registrant prior to the date of the notice in order for San Daniele Ham to be accepted for export into Canada, and taking into consideration that several intermediaries are involved which lengthens the process, and considering that expensive and extensive changes have been made by the registrant to its facilities, I conclude that the registrant has shown that it has a serious intention to commence using the trade-mark shown in Canada in the nearest possible future.
Considering all of the above, the fact that Mr. Donato has stated that all members of the San Daniele Ham Consortium must be in compliance with the requirements of the Canadian government and the Agreement and that a certification process must be set up by the Italian government and approved by the Italian government before export to Canada can commence, it is my view that the period of non-use in the present case is not unreasonable.
[10] The senior hearing officer then went on to issue a second section 45 notice concurrently with her decision, requiring the registered owner to show compliance with section 45 again:
However, given that Mr. Donato's evidence is vague concerning the reason all members of the Consortium must comply with the requirements of Canadian government before approval of the product for export to Canada particularly when it appears from the letter of May 25, 1998 from the Canadian Agency that, once some of the establishments visited have been listed, members of the San Daniele Ham Consortium would be able to export San Daniele ham to Canada (as long as assurances were given by the Italian government ans as long as an acceptable certification process is in place) and given that his affidavit is silent concerning the number of members involved and concerning any enquiries his company might have made with respect to obtaining information as to when the changes to all members' facilities are expected to be completed (if such is the case), and that with respect to the certification process involved Mr. Donato has not indicated the efforts the registrant might have made with respect to obtaining information concerning any enquiries his company might have made with respect to obtaining information as to when the changes to all members' facilities are expected to be completed (if such is the case), and that with respect to the certification process involved Mr. Donato has not indicated the efforts the registrant might have made with respect to obtaining information concerning when it is expected the process will be completed, I have decided to issue a second section 45 notice concurrently with this decision to the registered owner requiring it to show compliance with section 45 of the Trade-marks Act again ...
Relevant Statutory Provisions
[11] The following provisions of the Act are relevant.
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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. |
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. |
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(2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may hear representations made by or on behalf of the registered owner of the trade-mark or by or on behalf of the person at whose request the notice was given. |
(2) Le registraire ne peut recevoir aucune preuve autre que cet affidavit ou cette déclaration solennelle, mais il peut entendre des représentations faites par le propriétaire inscrit de la marque de commerce ou pour celui-ci ou par la personne à la demande de qui l'avis a été donné ou pour celle-ci. |
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(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. |
(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. |
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(4) When the Registrar reaches a decision whether or not the registration of a trade-mark ought to be expunged or amended, he shall give notice of his decision with the reasons therefor to the registered owner of the trade-mark and to the person at whose request the notice referred to in subsection (1) was given. |
(4) Lorsque le registraire décide ou non de radier ou de modifier l'enregistrement de la marque de commerce, il notifie sa décision, avec les motifs pertinents, au propriétaire inscrit de la marque de commerce et à la personne à la demande de qui l'avis visé au paragraphe (1) a été donné. |
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(5) The Registrar shall act in accordance with his decision if no appeal therefrom is taken within the time limited by this Act or, if an appeal is taken, shall act in accordance with the final judgment given in the appeal. ... |
(5) Le registraire agit en conformité avec sa décision si aucun appel n'en est interjeté dans le délai prévu par la présente loi ou, si un appel est interjeté, il agit en conformité avec le jugement définitif rendu dans cet appel. ... |
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56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. |
56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois. |
The issues
[12] In this appeal the following issues arise:
1. the record under appeal;
2. the appropriate standard of review;
3. jurisdiction to find special circumstances and simultaneously to issue a second notice under s. 45; and
4. special circumstances and the failure to use a trade-mark.
I deal with these issues in turn.
The record under appeal
[13] When this matter came on for hearing counsel differed concerning the record as that was included in the application record filed by the respondent for this proceeding. One matter included in the respondent's record is a further affidavit of Mr. Donato, Director of Marketing of the respondent sworn November 26, 2003, that is, some months after the date of the decision in question. The appellant urged that this affidavit demonstrated that even after the decision the respondent still had not adequately explained either its failure to meet requirements for access to Canadian market, or the lack of use of its trade-mark. Further, it was urged this was new evidence adduced on this appeal.
[14] I am not persuaded the affidavit in question, the third filed by Mr. Donato and included the respondent's records is part of the record under consideration in this appeal, or that it is to be considered as additional evidence adduced for this appeal. It is said by counsel for the respondent to be an affidavit in response to the Registrar's renewed notice in June 2003 under s. 45 to explain the absence of use and reasons for that. It is not relied upon by the respondent who alone may adduce evidence under s. 45. I find it is not a matter in evidence before me and it was not part of the record of the Registrar upon which the decision in issue was made.
The Standard of Review
[15] The parties are agreed it is well established that the appropriate standard of review for considering an appeal from decisions of the Registrar generally under the Act is reasonableness simpliciter (see Molson Breweries , a Partnership v. John Labatt Ltd., [2000] 3 F.C. 135 at para. 29 (C.A.)). That standard has been adopted by Mr. Justice O'Keefe of this Court in an appeal of a decision of the Registrar concerning an application under s. 45, where no additional evidence was filed in the appeal (see Carter-Wallace Inc. v. Wampole Canada Inc., [2000] 8 C.P.R.(4th) 30 (F.C.T.)).
Jurisdiction to find special circumstances, and to issue a second notice under s. 45
[16] The appellant urges that the senior hearing officer, acting for the Registrar, exceeded jurisdiction under s. 45 in finding that the evidence filed by the respondent was sufficient to establish special circumstances justifying non-use of the trade-mark, although evidence on key issues was vague or silent and this warranted issuance by the Registrar of a second s. 45 notice. The two conclusions together are said not to be reasonable where it is found that the evidence is vague or non-existent on aspects pointed out by the hearing officer. The second notice under s. 45 was dated June 5, 2003, the same date as the hearing officer's decision, and it was sent on her initiative.
[17] In two other cases where special circumstances were found to explain non-use but a second notice under s. 45 was also issued by the Registrar, the trade-mark in question had been in use before its use was interrupted. (See Rogers, Bereskin & Parr v. National Fur of Canada Ltd. (1993) 52 C.P.R. (3d) 560 (T.M.H.O.) and Gowling, Strathby & Henderson v. Suzy Shier Inc. (1991), 36 C.P.R. (3d) 221 (T.M.O.B.). Here the mark was never is use in Canada since its registration in 1989. Despite the date of original registration, the respondent, which acquired the trade-mark in 1994, is responsible only to show use or reason for non-use for the period the mark has been owned. (Sim & McBurrey v. Hugo Boss AG (1996), 67 C.P.R. 3(d) 269 (T.M.H.O.)).
[18] The applicant urges that the hearing officer, having determined that the evidence of the respondent was not fully satisfactory, was in effect functus officio and could not also decide there were special circumstances to excuse non-use and thus to continue registration of the mark.
[19] I am not persuaded that the principle of functus officio applies in the case of the exercise of discretion in the administrative function performed by or on behalf of the Registrar. In this case, the authority of the Registrar vested by s-s. 45 is, at his discretion at anytime, to give notice to the registered owner of a trade-mark to furnish an affidavit or statutory declaration showing use of the mark in Canada in the three years proceeding the date of notice and if not then in use, to show when it was last used and the reason for absence of use since that date.
[20] That discretion is intended to serve the purpose of s. 45 within the Act, a purpose identified by Mr. Justice Hugessen in Meredith & Finlayson v. Canada (Registrar of Trade Marks), (1991) 40 C.P.R. (3d) 409 at 412 (F.C.A.).
Section 45 provides a simple and expeditious method of removing from the register marks which have fallen into disuse. It is not intended to provide an alternative to the usual inter partes attack on a trade mark envisaged by s. 57. The fact that an applicant under s. 45 is not even required to have an interest in the matter (the respondent herein is a law firm) speaks eloquently to the public nature of the concerns the section is designed to protect.
Section 45(2) is clear: the Registrar may only receive evidence tendered by or on behalf of the registered
owner. Clearly it is not intended that there should be any trial of a contested issue of fact, but simply an opportunity for the registered owner to show, if he can, that his mark is in use or if not, why not.
[21] In my opinion, the hearing officer did not exceed jurisdiction vested under the Act by determining that the trade-mark registration should be continued after finding that special circumstances in this case excused the absence of use, pursuant to s-s. 45(3), and concurrently, directing a further notice to the respondent under s-s. 45(1). Both determinations were explained with reasons and each is reasonable in the circumstances of this case. The latter finding that a further notice under s-s. 45(1) be sent appears from the decision of the hearing officer to have been intended to acquire further information concerning prospective use of the mark in Canada. That serves the overall purposes of s. 45 of the Act.
[22] I am not persuaded that the hearing officer erred in law in the decision to maintain registration of the trade-mark on finding special circumstances that in her opinion, reasonably based, excused its non-use, and simultaneously to direct a second notice under s-s. 45(1).
Special circumstances and failure to use a trade-mark
[23] The burden of proof upon a registered owner to establish the case for maintaining registration of the mark is relatively low, and, in light of the purpose of s. 45 generally, proceedings under the section are not for "an infinite contestation of the facts" (per Strayer J., as he then was, in Lewis Thomson & Sons Ltd. v. Roger, Bereskin & Parr, (1988), 21 C.P.R. (3d) 483 (F.C.)).
[24] The criteria to be considered when deciding whether special circumstances exist under s-s. 45(3) are the length of time during which the mark has not been used, whether the reasons for non-use are circumstances beyond the control of the trade-mark owner, and whether there exists a serious intent to resume, or in this case to commence, use of the mark in Canada (Registrar of Trade-Marks v. Harris Knitting Mills, (1985) 4 C.P.R. (3d) 488 (F.C.A.)).
[25] The appellant urges that the trade-mark in question has never been used since it was first registered in 1989, a very long time. I have noted that the registered owner is only responsible for explanation of non-use since it acquired the trade-mark in 1994. Since that time, at least, the respondent has been unable to market its product in Canada under the trade-mark because of the requirements set by Canadian agriculture and food agencies, which can only be met by agreement, and acceptance, to meet Canadian criteria for inspection and production procedures, by Italian government officials and Italian producers of the product. There was evidence that some work to accomplish that goal has been undertaken, and the respondent has apparently committed significant finances to changes required within its own facilities. Completing the process of meeting Canadian standards it not a matter entirely with the control of the respondent. Those circumstances the hearing officer noted as special, and the investment of time and money by the respondent in factory renovations in Italy for compliance with Canadian requirements was indicative of a serious intention to use the mark as soon as possible, when permitted by the essential cooperation of others, including both governments. (See Oyen Wiggs Green & Mutala v. Pauma Pacific Inc. (1997), 76 C.P.R. (3d) 48 (F.C.T.D.), aff'd (1999), 84 C.P.R. (3d) 287 (F.C.A.)).
[26] In my opinion, the finding of the hearing officer was reasonable on the evidence presented by the respondent, that is, that special circumstances, matters beyond control of the registered owner, excused the absence of use of the trade-mark and thus the mark was not liable to be expunged from the register. That finding warrants deference by this Court.
Conclusions
[27] The appellant, applicant under s. 45 of the Act, has not persuaded me that the hearing officer erred in law in the decision of June 5, 2003, whereby she found special circumstances existed to excuse the respondent's failure to use its registered Canadian trade-mark, No. 352,264, that the mark should be maintained on the Register and, at the same time, that a second notice under s-s. 45(1) should issue to the respondent. Further, I am persuaded that the findings of the hearing officer on the evidence before her were reasonable, that is, that special circumstances excused the respondent's failure to use the trade-mark, and that further inquiry warranted seeking evidence of the steps required, and by whom, to complete arrangements for the respondent to meet Canadian regulatory requirements, for sale of its products and use of its registered mark in Canada.
[28] Thus, by order and judgment following these reasons, I dismiss the appeal from the decision of the hearing officer.
[29] Both parties requested costs. As in the normal course, costs here follow the event, and are awarded to the respondent. Those costs should reflect the mid-range of column III of party and party costs under the Court's Rules. If the parties cannot agree on costs they may apply for their assessment under the Rules.
ORDER AND JUDGMENT
THIS COURT ORDERS AND ADJUDGES that
[1] The appeal by the appellant is dismissed.
[2] The respondent shall have costs as the parties may agree, or as may be assessed, on a party and party basis with reference to the mid range of column III of the Court's Rules relating to costs.
"W. Andrew MacKay"
Deputy Judge
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-1396-03
STYLE OF CAUSE: CASSELS BROCK & BLACKWELL LLP
v.
REGISTRAR OF TRADE-MARKS and MONTORSI FRANCESCO E FIGLI S.p.a.
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: March 30, 2004
REASONS FOR ORDER
AND ORDEROF The Honourable Mr. Justice W. Andrew J. MacKay
APPEARANCES:
Ms. Julie A. Thorburn
Ms. Catherine C. Dennis FOR APPLICANT
Ms. Susan Beaubien FOR RESPONDENT
SOLICITORS OF RECORD:
Cassels, Brock and Blackwell
Toronto, Ontario FOR APPLICANT
Borden Ladner Gervais LLP
Ottawa, Ontario FOR RESPONDENT