Date: 20010927
Docket: T-1108-00
Neutral citation: 2001 FCT 1061
BETWEEN:
WESTINGHOUSE AIR BRAKE COMPANY
Applicant
- and -
MOFFAT & CO.
Respondent
Docket: T-1109-00
BETWEEN:
WESTINGHOUSE AIR BRAKE COMPANY
Applicant
- and -
MOFFAT & CO.
Respondent
[1] This is an appeal by Westinghouse Air Brake Company from an April 28, 2000 decision of the Registrar of Trade-marks made pursuant to subsection 45(5) of the Trade-marks Act, (R.S.C. 1985, c. T-13), (the "Act"), expunging Canadian Trade-mark registration nos. TMDA 37797 (File T-1108-00) and UCA 47829 (File T-1109-00) for the trade-mark UNIVERSAL.
FACTS
[2] The trade-mark UNIVERSAL, registration no. TMDA 37797 is registered for use in association with the following wares:
spring draft gears, friction draft gears, draft lugs, draft yokes, hand brakes, buffer castings, car bolsters, truck column anchors, pin lifters and brine tank valves. (Applicant's record (File T-1108-00), Tab 4 at p. 14).
[3] Registration no. UCA 47829 is registered for use in association with the following wares:
Hand brakes and yokes, and brake adjusters. (Applicant's record (File T-1109-00), Tab 4 at p. 12).
[4] On December 2, 1997, at the request of Moffat & Co., the Registrar issued a section 45 notice to Westinghouse Air Brake Company (now Westinghouse Air Brake Technologies Corporation) in respect to registration nos. TMDA 37797 and UCA 47829.
[5] In response to this notice, the applicant filed the affidavit of Robert J. Brooks sworn on May 28, 1998 ("First Brooks Affidavit") and then a second affidavit of Robert J. Brooks sworn on June 19, 1998 ("Second Brooks Affidavit").
[6] The first Brooks affidavit states that Westinghouse Air Brake Company has since 1925 continuously used the trade-mark UNIVERSAL in Canada in association with "spring draft gears, friction draft gears, draft lugs, draft yokes, handbrakes, buffer castings, car bolsters, truck column anchors, pin lifters and brine tank valves, and continuously since 1953 in association with hand brakes and yokes and brake adjusters. Mr. Brooks' affidavit then explains that the trade-mark UNIVERSAL has at all times been used by prominently displaying the trade-mark on labels or hang tags affixed by the Company to the registered goods or cast into the metal registered goods at the time of manufacture. He further states that the trade-mark UNIVERSAL is prominently displayed in maintenance manuals and drawings which at times accompany the registered goods.
[7] Attached to the affidavit as evidence are photocopies of photographs (the originals were attached to his second affidavit) showing how the trade-mark is used. In his affidavit, Mr. Brooks also states that Cardwell Westinghouse is an operating division of Westinghouse Air Brake Company. Invoices of Cardwell Westinghouse are attached as evidence of sales and annual sales figures are given. A copy of an advertisement is also enclosed with the affidavit.
[8] On April 28, 2000, pursuant to section 45 of the Act, the Hearing Officer, Ms. Savard, concluded that in view of the evidence furnished, trade-mark registrations TMDA 37797 and UCA 47829 ought to be expunged.
[9] Concerning the use of the trade-mark, Ms. Savard was in agreement with the requesting party that the evidence was insufficient to show use of the trade-mark during the relevant period in association with each of the registered wares. The following is an excerpt of her comments:
As I find it is unclear which of the wares would fall under the "Universal Registered Goods", I find it cannot be concluded from the affidavit that each of the registered wares was sold during the relevant period. As the invoices and the brochures refer to "hand brakes, slack adjusters, and draft gear" only, I conclude that the evidence shows use during the relevant period but only in respect to those wares. (Applicant's record (T-1108-00), Tab 4 at p. 23).
[10] Concerning the use of the trade-mark by the applicant, Ms. Savard was once again in agreement with the requesting party that any use shown is use by a third party, Universal Railway Devices Company. Ms. Savard said that:
[...] it is clear from the trade-mark registration page that in the year 1990 the trade-mark was assigned to another entity, namely Rail Acquisition Corp., which later on changed its name to Westinghouse Air Brake Company (the current registered owner). From the above, it would seem that Westinghouse Air Brake Company, the owner of the trade-mark in the year 1974, and the current owner are not one and the same company but appear to be totally separate entities. Consequently, the fact that Universal Railway Devices Company was merged in 1974 into Westinghouse Air Brake Company, the owner in 1974, is irrelevant with respect to the present proceeding.
As the evidence shows that Universal Railway Devices Company appears to be the entity using the present trade-mark, and as there is no evidence that it is a mere division of the present registered owner, I conclude that any use shown by the evidence is not use by the registered owner of the trade-mark. Consequently, although the invoices show that sales of the wares have been made by Cardwell Westinghouse, a division of the present registered owner, this is not sufficient to permit me to conclude that the use of the trade-mark is by the registered owner since there is evidence that the wares are those of Universal Railway Devices Company [...] As such evidence appears to contradict the statements made in the affidavit, I find the evidence ambiguous and I am unable to conclude that the use of the trade-mark is by he registered owner or accrues to the registered owner.
[...] As the evidence in this case contains ambiguities, I interpret the ambiguities against the registered owner. (Ibid. at p. 25).
[11] The applicant, Westinghouse Air Brake Company, appealed this decision on June 28, 2000.
[12] In support of its position, the applicant filed the third Brooks affidavit.
[13] In his affidavit, Mr. Brooks presents the following new evidence:
• The registered wares comprise a broad category of wares that can be described as railway equipment, or parts used in railway equipment construction. The registered wares are used either (a) to aid in the handling of railway equipment; (b) to protect the railway equipment and lading; or (c) as parts of the assembly of these devices or the railway equipment.
• "Slack adjusters" are often referred to or called "Brake Adjusters".
• The total sales of UNIVERSAL Rail Equipment in Canada from 1994 through 1999 was in excess of $31,000,000. (dd). Attached to the third Brooks affidavit are invoices documenting sales to Canadian consumers of UNIVERSAL Rail Equipment during the relevant period, and photographs of slack adjusters bearing the UNIVERSAL trade-mark.
• The corporate history of the applicant is complex and described as follows:
• Commencing in December 1974, Universal Railway Devices Company (who then owned the trade-mark Universal and registration nos. TMDA 37797 and UCA 47829) underwent a merger, acquisition and names changes.
• Since December 31, 1974, the successive owners of the trade-mark UNIVERSAL and of the registration have each used and continue to use "UNIVERSAL Railway Devices Company" as a trade name to identify its business.
• During the relevant period the applicant used "UNIVERSAL Railway Devices Company" as a trade name.
POINTS IN ISSUE
1. Was the use of the trade-mark UNIVERSAL registered under registration nos. TMDA 37797 and UCA 47829 use by the applicant?
2. Has the applicant demonstrated use in Canada of the trade-mark UNIVERSAL registered under registration nos. TMDA 37797 and UCA 47829 during the relevant period in association with each of the registered wares?
ANALYSIS
[14] Section 45 of the Act provides that the Registrar may 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.
[15] It is well established that the purpose and scope of section 45 proceedings is to provide a simple, summary and expeditious procedure for clearing the register of trade-marks which are not bona fide claimed by their owners as active trade-marks. (Philip Morris Inc. v. Imperial Tobacco Ltd. (1987) 13 CPR (3d) 289 at p. 293; Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1981] 1 FC 679 at p. 683; Barrigar & Oyen v. Canada (Registrar of Trade-marks) (1994), 54 C.P.R. (3d) 509 (F.C.T.D.).
[16] The determination of the appropriate standard of review was recently discussed in Molson Breweries v. John Labatt Ltd., ([2000], 3 F.C. 145). In Molson Breweries, Rothstein J.A. came to the conclusion that an appeal under section 56 is not a trial de novo in the strict sense of the term. In the absence of additional evidence adduced in the trial division, 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. However, where additional evidence is filed that would have materially affected the registrar's findings of fact or the exercise of discretion, the trial judge must come to his or her own conclusion as to the correctness of the registrar's decision.
1. Use by Registered Owner
[17] The new evidence provided by the applicant clearly demonstrates that the successive owners of the trade-mark have used "UNIVERSAL Railway Devices Company" as a trade-name and more importantly that during the relevant period the applicant used "UNIVERSAL Railway Devices Company" as a trade name. This is the reason why "UNIVERSAL Railway Devices Company" appears on the materials filed as Exhibits to the Brooks affidavits #1 and #2.
[18] Thus, I am satisfied that the new evidence clarifies the concerns of the Registrar regarding the use by the applicant of the trade-mark UNIVERSAL and that this new evidence would have materially affected her decision.
2. Use in Association with Wares
[19] Section 2 of the Act defines use as follows:
| "use", in relation to a trade-mark, means any use that by section 4 is deemed to be a use in association with wares or services; |
« emploi » ou « usage » , à l'égard d'une marque de commerce, tout emploi qui, selon l'article 4, est réputé un emploi en liaison avec des marchandises ou services. |
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[20] Subsection 4(1) reads:
| 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. |
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. |
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[21] In her decision, the Registrar was unable to conclude that each of the registered wares was sold during the relevant period because the invoices and the brochures referred to hand brakes, slack adjusters and draft gear only.
[22] On appeal, the applicant submits that it is only necessary to demonstrate use on association with some of the wares where the registered wares fall into one broad category and that some of the wares are constituent parts of the devices comprised in the category. More particularly, the new evidence shows that the registered wares can be described as a general category of wares namely railway equipment or parts used in railway equipment construction.
[23] I am satisfied that this is significant evidence that would have materially affected the decision of the Registrar of Trade-marks.
[24] For these reasons, the appeal is allowed and registration nos. TMDA 37797 (File T-1108-00) and UCA 47829 (File T-1109-00) are to be maintained. There will be no award of costs.
"Danièle Tremblay-Lamer"
JUDGE
OTTAWA, ONTARIO
September 27, 2001.