SECTION 45 PROCEEDINGS
TRADE-MARK: IMAGE & Design
REGISTRATION NO.: 313273
On January 30th, 2004 at the request of Gowling Lafleur Henderson LLP (the “requesting party”), the Registrar forwarded a s. 45 notice to Audio Products international Corp., (the “registrant”) the registered owner of the above-referenced trade-mark registration and hereinafter reproduced:
(the “Mark”)
The registration for the Mark includes a claim for colour that reads as follow:
“The dot over the "i" is coloured red and the colour red is claimed as a trade mark feature.”
The Mark is registered for use in association with the following wares: speaker boxes. (The “Wares”)
Section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), requires the registrant of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and/or services listed on the registration at any time within the three-year period immediately preceding the date of the notice, and if not, the date when it was last in use and the reason for the absence of use since that date. The relevant period in this case is any time between January 30th, 2001 and January 30th, 2004. (The “relevant period”)
In response to the notice, the affidavit of Howard A. Heiber together with exhibits referred therein has been furnished. Both parties filed written submissions. No oral hearing was requested.
Mr. Heiber is the registrant’s President. He states that the registration of the Mark issued in the name of Global Sound Systems Limited, which amalgamated in 1993 with Audio Products International Corp. to form the registrant.
The registrant manufactures and sells sound equipment including speaker boxes. It sells to wholesalers and retailers in Canada and worldwide. During the relevant period, the registrant manufactured the Wares labelled with the Mark. They were sold to Lenbrook Industries Limited (“Lenbrook”) for resale as part of its “PSB speakers product line”. He alleges that the registrant sold in Canada during the relevant period considerable quantities of speakers in connection with the Mark. To substantiate such allegation he filed:
➢ Photograph of a box allegedly bearing the Mark;
➢ Samples of various type of labels, applied either to the packaging or on the Wares themselves, allegedly bearing the Mark;
➢ Invoices issued by the registrant to Lenbrook during the relevant period showing sales of the Wares;
➢ Point of sales materials allegedly bearing the Mark;
➢ Extracts of Lenbrook’s website wherein the Mark is allegedly displayed for the advertising and promotion of the Wares;
The affiant also provides the registrant’s sales figures for the Wares, during the relevant period, in association with the Mark.
The requesting party limits its argumentation to the fact that there is no evidence of use of the Mark as registered during the relevant period by the registrant. To counter this argument, notwithstanding the fact that it admits that there is no evidence of use of the trade-mark as registered, the registrant argues that the essential differences between the trade-mark as used and the Mark amount to the absence of the box background and the altered font. I may add that there is also the absence of a dot on the capital “I” used.
A depiction of one of the variation of the trade-mark used by the registrant is reproduced herein below as an example:
It argues that the word IMAGE dominates the trade-mark used, and the Mark’s identity remains intact “… since the changes are not important to the ability of the Mark to continue to be recognizable as the same indicator of origin of the goods”. To substantiate such position, the registrant is referring to Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 and Registrar of Trade Marks v. Compagnie L’informatique CII Honeywell Bull, Société Anonyme et al. (1985), 4C.P.R. (3d) 523.
In addition the registrant is relying on Mantha & Associates v. Cravatte Di Pancaldi S.r. L. (1998), 84 C.P.R. (3d) 465 to support its contention that the absence of the rectangle does not represent a substantially different trade-mark than the Mark. The registrant directs also our attention to Fasken Marineau DuMoulin LLP v. AGF Management Ltd. (2003), 29 C.P.R. (4th) 411 to support its contention that the Mark “stands out from additional material that may have been added or removed”.
I disagree with the registrant’s contentions. In the Mantha case the trade-marks involved were`:
the registered trade-mark the mark used
As appears from the design marks hereinbefore illustrated, the registered trade-mark did include more than the box design. It appears from a comparison of those marks that the registered trade-mark did not lose its identity when used in the form reproduced herein above. In the present case the distinctive features of the design of the Mark are:
The rectangle background
The font used for the word IMAGE
The red dot on the “i”
None of these features appears in any variation of the trade-mark used by the registrant. The Mark does not consist solely of the word IMAGE. The registrant saw fit to obtain a registration for a trade-mark that included a design having the above mentioned characteristics. I cannot conclude as set out in CII Honeywell that the Mark remained recognizable in spite of the differences between the form in which it was registered and the form used.
In view of my conclusion on the absence of evidence of use of the Mark as registered in association with the Wares during the relevant period, registration 313273 will be expunged in compliance with the provisions of s. 45(5) of the Act.
DATED IN BOUCHERVILLE, QUEBEC THIS 19th DAY OF JULY 2006.
Jean Carrière
Member of the Trade-marks Opposition Board