Date: 20011105
Docket: T-1121-00
Neutral citation: 2001 FCT 1205
BETWEEN:
BUNDY AMERICAN CORPORATION
Applicant
- and -
NO-FRILLS CAR & TRUCK RENTAL INC.
Respondent
(Rendered orally on October 25, 2001, as edited)
[1] The applicant brings an application under section 57(1) of the Trademarks Act to expunge registration of the trade-mark "PRICELE$$ AND DESIGN" registered by the respondent January 21,1998 as No. TMA 488,031. Although the respondent was served, the respondent did not appear or enter any appearance.
[2] The issue is whether the registration of the trade-mark is invalid pursuant to section 18 of the Trade Marks Act.
[3] The applicant, Bundy American Corporation ("Bundy") is the owner of three U.S. service mark registrations under the name "PRICELE$$". They have used the service mark "PRICELE$$" in the United States since June 1998 with respect to vehicle rental, sales and leasing and since May, 1993 with respect to vehicle dealership services. The trade-mark "PRICELE$$ AND DESIGN" is registered in the Canadian Trade-Mark Register by the respondent, No-Frills Car & Truck Rental Inc. (known as "No Frills"), as registration No. TMA 488,031. This trade-mark was registered and issued on January 21, 1998.
[4] No Frills was incorporated as an Ontario business corporation on February 11, 1997. This company was never registered under the Motor Vehicle Dealers Act. A different corporation 1237013 Ontario Inc. was registered under that Act as carrying on business under the name "No-Frills Car & Truck Rental".
[5] A corporation known as 1033814 Ontario Inc. was registered under the Motor Vehicle Dealers Act as doing business under the name "Priceless Auto Sales & Leasing" at 932 Danforth Road, Scarborough, which registration lapsed on October 13, 1995 and was not renewed. This company also registered the business name "Pricele$$ Auto Sales & Leasing" under the Business Names Act on June 16, 1993, which registration expired on June 15, 1998 and was not renewed.
[6] The only evidence of the use of any trade-mark or business name which included the word "Priceless" was the listing in the 1997 Toronto Telephone Directory of the name "Priceless Auto Sales & Leasing" at 932 Danforth Road and 1153 Martingrove Avenue, Toronto; such listings were not renewed nor continued in subsequent telephone directories.
[7] Under section 18(1) a court may find abandonment of a trade-mark where it finds that the mark is no longer in use in Canada and there is an intention to abandon the mark. In this case there is no evidence of use of the mark. An intention to abandon can be inferred from the long period of disuse. Furthermore, the respondent chose to use another trade-mark, "PRACTICAL LEASING & SALES" as is evidenced by Personal Property Security Act Registration in the year 2000. Furthermore, the only evidence of use of the trade-mark which includes the word "PRICELE$$" is the telephone listing under the name Priceless Auto Sales and Leasing. It may be inferred that these listings were placed on behalf of 1033814 Ontario Inc. which at one time carried on business under that name. There is no evidence whatsoever of the use of the trade-mark "PRICELE$$ & DESIGN" as it is shown on the Trade-Marks Register.
[8] There is a second reason why the respondent is not entitled to registration of the trade-mark. The respondent was incorporated February 11, 1997. The application for registration of the trade-mark was signed on February 4, 1997, one week before the incorporation. There was no evidence before me to show that the respondent ever adopted the application. The test for abandonment is clearly met in this case.
[9] The application to expunge registration of the trade-mark "PRICELE$$ & DESIGN" registered as number TMA 488,031 is granted.
"W. P. McKeown"
J.F.C.C.
Toronto, Ontario
November 5, 2001
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-1121-00
STYLE OF CAUSE: BUNDY AMERICAN CORPORATION
Applicant
-and-
NO-FRILLS CAR & TRUCK RENTAL INC.
Respondent
DATE OF HEARING: THURSDAY, OCTOBER 25, 2001
PLACE OF HEARING: TORONTO, ONTARIO
REASONS FOR ORDER BY: MCKEOWN J.
DATED: MONDAY, NOVEMBER 5, 2001
(RENDERED ORALLY ON OCTOBER 25, 2001)
APPEARANCES: Mr. James Beamish
For the Applicant
No one appearing on behalf of the Respondent
SOLICITORS OF RECORD: Miller Thompson LLP
Barristers & Solicitors
20 Queen Street West
Suite 2500
Toronto, Ontario
M5H 3S1
For the Applicant
No solicitor of record for the Respondent
FEDERAL COURT OF CANADA
Date: 20011105
Docket: T-1121-00
Between:
BUNDY AMERICAN CORPORATION
Applicant
-and-
NO-FRILLS CAR & TRUCK RENTAL INC.
Respondent
REASONS FOR ORDER