Trademark Opposition Board Decisions

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Consommation

et Corporations Canada

Ottawa I Hull. Canada
K1AOC9

DEC 241987

Consumer and

Corporate Affairs Canada

Votre reference Your file

Spiegel Sohmer

                                                                    I                                                                             •                                                           •

5 Place Vllle Marie

Suite 1203
Montreal, Quebec
H3B 2G2

Gentlemen:

             RE: SECTION 44 PROCEEDINGS
Registration No.: TMA 273,193
Trade Mark: SENA

14,213

Notre reference Our file

469,119

At the request of Messrs. Sterling & Affiliates, the Registrar issued a Section
44 notice dated April 1, 1986 to Sena Marketing Inc. the registered owner of
the above referenced trade mark registration.

The mark SENA was registered on October 29, 1987 for use in association with
the following wares and services:

             WARES:  footwear namely shoes, slippers and sandals;
clothing namely jackets; jewelry.

SERVICES: operation of a retail clothing, footwear and
jewelry store.

In response to the Registrar's notice the registrant furnished the affidavit of
its President, Mr. Chris Bannister, together with Exhibits A to H. Further to
the filing of this evidence, the requesting party filed a written submission to
which the registrant replied in like manner.

In its written submission the requesting party argued mainly as follows:

1.           The invoices submitted as Exhibits E and F do not refer to
wares bearing the trade mark SENA.

2.            The exhibits relating to footwear and clothing must be seen
as having been deliberately manufactured or contrived to
maintain the registration in association with those wares.

3.            The affidavit is silent regarding the wares "jewelry" or
"the operation of a jewelry store".

In its written submission the registrant admits that the trade mark is not in
use in association with "jewelry" but refutes all the other arguments.

On the first point, Section 4(1) does not require that the trade mark be
inscribed on the invoices. It requires that at the time of the transfer of the
property in or possession of the wares, notice of the association between the
trade mark and the wares be given to the person to whom the property or
possession is transferred. In his affidavit Mr. Bannister explains that notice
of the association is given at the time of sale either by the trade mark being

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Canada

1+

Consommation

et Corporations Canada

Ottawa I Hull, Canada
K1 A OCg

Consumer and

Corporate Affairs Canada

- 2 -

votre reference Your file

Notre reference Our file

marked directly on footwear or being marked on labels and hang tags attached to
footwear and clothing. The invoices attached as Exhibits E and F show that
there were transfers of the property in or possession of footwear and clothing
at the material time. Therefore I have no difficulty in concluding that the
trade mark is in use in Canada in association with footwear namely shoes,
slippers and sandals and with clothing namely jackets.

Regarding the second point, I find such objection not convincing and beyond the
scope of Section 44 proceedings. Section 44 is not designed nor intended as a
procedure for adjudicating disputes between competing interests. Should the
requesting party be aware of facts which it cannot evidence before the
Registrar then it should proceed under Section 57 of the Trade Marks Act.

As for the requesting party's third point, as mentioned earlier the registrant
has admitted in its written submission to the non-use of the trade mark in
association with jewelry.

Concerning the service "operation of a jewelry store" I must agree with the
requesting party that use of the trade mark in association with such services
has not been shown. There is no assertion of use in the affidavit with respect
to those services. The photograph attached as Exhibit G to the affidavit shows
that the registrant operates a retail clothing and footwear store and that the
trade mark is displayed in the performance of such services. However there is
nothing in the affidavit or in the exhibits to show use of the trade mark
pursuant to Section 4(2) in association with the "operation of a jewelry
store".

In the instant case, I am satisfied that sufficient facts have been established
to show use of the mark in association with the wares "footwear namely shoes,
slippers, sandals and clothing namely jackets" and in association with the
services "operation of a retail clothing and footwear store". However, since
the affidavit is silent on any use in association with "jewelry" or the
"operation of a jewelry store" such wares and services ought to be deleted from
the registration.

Therefore, by reason of the evidence filed I have concluded that the subject
registration ought to be amended by deleting the word "jewelry" from the
statement of wares and services so that the registration will read as follows:

            wares:   footwear namely shoes, slippers and sandals;
clothing namely jackets

services: operation of a retail clothing and footwear store.

Registration No. 273,193 will be amended accordingly in compliance with the
requirements of, subsection 44(5) of the Trade Marks Act.

Yours truly,

        J.P. D'Aoust                 

Senior Hearing Officer

for REGISTRAR OF TRADE MARKS

JPD:gmc-h

c.c.:

Sterling & Affiliates

Reg'd. Trade Mark Agent Firm
P.O. Box 3337, Station C
Ottawa, Ontario

KIY 4J5      .

Cana

(Your ref.: RWS/new)