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Consommation
et Corporations Canada
. Ottawa I Hull, Canada
K1A OC9
JAN 15 1988
Consumer and
Corporate Affairs Canada
Votre reference Your file
Messrs. Sim & McBurney
Suite 701
330
University Avenue
Toronto, Ontario
M5G 1R7
Gentlemen:
RE: SECTION 44 PROCEEDINGS
Registration
Nos.: TMA 268,638 and TMA 269,648
Trade Marks: ADS and ADS Design
4177-5
Notre reference Our file
471,645
At the request
of Messrs. Smart & Biggar, acting on behalf of Applied
Digital
Data Systems Inc., the Registrar issued two (2) Section 44 notices dated
June 21 and
July 17, 1985 respectively, to Auto Dealers Systems Inc., the
registered owner of the above referenced trade mark registrations.
The marks ADS
and ADS Design were registered on April 30 and May 28, 1982
respectively, for use in association with computer software. The corporate
name of the registrant company was changed to 421281 Ontario Limited by
Articles of Amendment - under the Ontario Business Corporations Act - dated
September 20, 1984. The marks were subsequently assigned to Ads Computer
Services Inc., on May 1, 1985. The assignment was recorded on the register on
July 11, 1986.
Because of the
similarity in all essential respects, these two cases are hereby
processed simultaneously.
In response to
the Registrar's notices, the registrant furnished the affidavits
of its Vice-President of Marketing and Operations, Mr. Bruce Amson along with
Exhibits A through K thereto. Further to the filing of this evidence, the
requesting party filed a written submission to which the registrant did not
respond, preferring to await the Registrar's decision based on the evidence
furnished.
In
its written submission, the requesting party criticizes the evidence filed
as follows:
1 - "The affidavit does not show that the registrant is
selling computer software under the trade marks ADS and
ADS Design in the normal course of trade",
2 - "The registrant has filed no evidence showing use of
its
trade marks on the actual wares themselves or on the
packages in which computer programs are distributed, nor
has it shown use in any manner that would give notice of
the association between the trade marks and the wares",
and
3 - "Exhibits A and G of Mr. Amson's affidavit show the
registrant's design trade mark as covered by registration
No. 269,648. Although other exhibits show the word ADS in
a design form, such design form is different from that
covered by the registration".
It must be
stated from the outset, that I am at a loss to understand the full
import of the requesting party's arguments. If it is arguing that there can be
no use because there is no sale of wares established, then I must refer to
Section 2 of the Act which reads as follows:
•.• /2
1+
Consommation
et Corporations Canada
. Ottawa I Hull, Canada
K1 A aC9
"trade mark means
Consumer and
Corporate Affairs Canada
- 2 -
Votre reference Your file
Notre reference Our tile
(a) a mark
that is used by a person for the purpose of
distinguishing or so as to distinguish wares or services
manufactured, sold, leased, hired or performed by him from
those manufactured, sold, leased, hired or performed by
others." (emphasis mine)
In the present
case, it is quite clear from the licensing agreement filed as
exhibit 13 that the registrant is licensing its customers to use its ADS
computer software or parts thereof in the administration of their automobile
dealerships. It is obviously using its trade marks to distinguish its computer
software from that of others.
It is true
that the evidence does not establish that the marks are featured on
the wares themselves or on their packaging, but it seems clear to me that the
association between the marks and the wares is obvious to any licensee who
enters into an agreement with the registrant and adopts his computer software
to manage its accounting, parts inventory control payroll, leasing, management
reports, customer follow-up traffic control, parts invoicing, vehicle control,
contract preparations or any part thereof. I am therefore
satisfied that use
of the marks has been shown within the meaning of Section 4(1)
of the Act.
As to the
deviation in the use of the design mark - TMA 269,648 - as evidenced
by most of the promotional material filed in exhibit, I do not believe
that it
can be considered as substantial. The distinctive features of this mark
consist of the word ADS and the stylized form in which the three letters are
reproduced. The fact that the letter "D" has been lowered somewhat
does not
detract from the mark's general characteristics. When compared side by side
the mark as registered and the mark as used do not appear as two different
marks but as the same mark where the letter "D" is printed out of
line to
increase the mark's visibility. This variation is not apt to deceive the
consuming public in any way.
Therefore,
by reason of the evidence filed in these proceedings, I have
concluded that both subject trade marks are in use in Canada, within the
meaning of the Act and, that consequently their registration ought to be
maintained as they presently appear on the register.
Registrations
TMA 268,638 and TMA 269,648 will be maintained accordingly, in
compliance with the provisions of subsection 44(5) of
the Trade Marks Act.
Yours truly,
J. P. D' Aoust
Senior Hearing Officer
for REGISTRAR OF TRADE MARKS
gmc-h
c.c. Messrs.
Smart & Biggar
P.O. Box 2999, Station D
Ottawa, Ontario.
KIP 5Y6
Canada
(Your ref.: (8096-18)