Section 45 Proceedings
Trade Mark: ALUM-A-POLE
Registration No.: TMA 351,090
On April 18, 1996, at the request of the firm Dennison Associates, the Registrar forwarded a Section 45 Notice to Alum-A-Pole Corporation, the registered owner of the above-referenced trade-mark registration. The trade-mark ALUM-A-POLE is registered for use in association with the following wares:
(1) Aluminum pump jack poles, all types of scaffolding equipment including aluminum poles, joints, clamps, bracing, scaffolding, pump jacks, scaffolding bench, side railings, interlocking scaffolding apparatus and the like. (2) Aluminum pump jack poles.
In response to the Section 45 Notice, the registrant furnished the affidavit of Carl Anderson, President of the registrant company. The requesting party alone filed written submissions, and only the registrant was represented at the oral hearing held on July 29, 1997, in regard to the present proceedings.
In his affidavit, Carl Anderson alleges that since at least as early as 1988, the registrant (referred to by the affiant as “my Company”) has been using and continues to use the subject mark up to the present date on each of the registered wares in Canada. At paragraph 4 of the affidavit, Mr. Anderson states that the wares associated with the ALUM-A-POLE mark are manufactured by his Company and sold to building supply stores, and the like, in Canada.
At paragraph 5, the affiant deposes that as of the date of the Section 45 Notice, his Company was using the trade-mark on each of the wares by applying labels bearing the mark to the wares themselves and/or to the cartons in which the goods are shipped. As Exhibit A, he attaches sample labels allegedly used in Canada. Mr. Anderson further states that “in Canada, the ALUM-A-POLE mark labels are used both alone and on product bearing other “ALUM-A” formative marks, such as ALUM-A-JOINT and ALUM-A-BRACE.” He also claims that the ALUM-A-POLE mark labels appear on product bearing his Company’s various “PRO” formative marks, such as PRO-BENCH, PRO-JACK and PRO-TRIM, as well as on the registrant’s staging product, and he explains that “staging” is another name for “scaffolding” and is the same product.
At paragraph 6, Mr. Anderson alleges that invoices corresponding to the sale of the wares also bear the ALUM-A-POLE trade-mark in Canada. As Exhibit B, he attaches a sampling of invoices evidencing the sale of ALUM-A-POLE wares, by his Company, in 1995 and 1996 in Canada, which he alleges show sales of the wares before and after the date of the Section 45 Notice in Canada.
At paragraph 7, the affiant states that his Company has continuously used and promoted the subject mark in association with each of the wares. As Exhibit C, he attaches a copy of a representative promotional piece distributed by his Company over the years from the date of first use to the present in Canada. As Exhibit D, he attaches copies of instructional materials available at building stores in Canada that carry the registrant’s product, which he claims are typical of instructional materials bearing the subject mark distributed in Canada since the date of first use to the present.
The requesting party argues that the registrant’s evidence does not show use of the registered mark per se. In the alternative, if any use of the registered mark has been shown, the requesting party submits that it is only in respect of the wares “aluminum poles”.
Having reviewed the evidence, I am satisfied that it shows use of the trade-mark ALUM-A-POLE in association with each of the registered wares. The evidence, in my view, shows that the registrant is using the phrase “ALUM-A-POLE” both as a trade-mark for a particular product and as part of a logo used in conjunction with other “ALUM-A” trade-marks and with other trade-marks such as “PRO” trade-marks.
Regarding the requesting party’s argument that the evidence does not show use of the registered mark per se, I note that the phrase ALUM-A-POLE appears in the following manner on three of the labels submitted as Exhibit A, as well as at the top of each of the invoices submitted as Exhibit B:
The requesting party submits that the above logo shows use of an integrated composite mark with no special emphasis on any one portion of the mark, and that the registrant has therefore not shown use of the registered trade-mark per se. In support of this argument, the requesting party relies on Registrar of Trade Marks v. Compagnie Internationale pour l’informatique CII Honeywell Bull S.A. (1985), 4 C.P.R. (3d) 523, [1985] 1 F.C. 406, 4 C.I.P.R. 309, 61 N.R. 286.
Counsel for the registrant submits that the phrase ALUM-A-POLE is distinguishable from the additional matter, both by the use of the ® indicia above the letter “L” in the word POLE, as well as by the fact that the phrase ALUM-A-POLE appears in red letters and is separated from the words ALUM-A-JACK by the name of the registrant company which appears in black letters.
I find the matter to be very borderline. In my opinion, the appearance of the ® indicia would seem to indicate that the registrant is attempting to convey the message to the public that the phrase ALUM-A-POLE is a trade-mark. It is conceivable that some consumers would perceive the phrase ALUM-A-POLE identified in such a manner as one of the trade-marks being used in association with the wares identified on the labels (see Smith Lyons v. 547553 Ontario Inc., trading as Filion’s (July 11, 1997) yet unreported, a decision of Senior Hearing Officer D. Savard). Also, the prominent use of the trade-mark ALUM-A-POLE on the brochure attached as Exhibit C, as well as on the instructions for the scaffolding system, may assist some purchasers in perceiving those words when appearing on the labels as a separate trade-mark. I therefore conclude, but not without difficulty, that the use shown, supra, constitutes use of the registered trade-mark ALUM-A-POLE per se. In reaching this conclusion, I am mindful that the purpose of Section 45 is to clear deadwood from the register.
The remaining two labels submitted as Exhibit A bear the phrases “ALUM-A-POLE SCAFFOLDING SYSTEM” and “ALUM-A-POLE SCAFFOLDING SYSTEM SET-UP INSTRUCTIONS & IMPORTANT MANUFACTURER SAFETY REQUIREMENTS”. As both labels show diagrams of what would appear to be scaffolding systems, the additional matter appearing with the trade-mark is, in my view, merely descriptive matter and does not detract from use of the registered mark per se (see Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535).
Pursuant to s. 4(1) of the Act, the evidence must show that the mark was associated with the wares at the time of transfer. In the present case, the affiant has deposed that the registrant was using the trade-mark on each of the wares by applying labels bearing the ALUM-A-POLE trade-mark to the wares themselves and/or to the cartons in which the goods are shipped. Considering this statement in light of my findings that each of the sample labels bears the registered trade-mark per se, I am satisfied that the mark was associated with the wares at the time of transfer.
Section 45 makes it clear that use must be shown in association with each of the wares specified in the registration (see John Labatt Ltd. v. Rainier Brewing Co. (1984), 80 C.P.R. (2d) 228, 2 C.I.P.R. 22, 54 N.R. 296 (F.C.A.)). In that regard, Mr. Anderson has sworn that the registrant used the trade-mark ALUM-A-POLE in association with each of the registered wares, and he has provided a description of such use. Also, the instruction materials and promotional materials furnished in evidence clearly refer to all of the registered wares.
With respect to transfers of each of the wares, the invoices submitted as Exhibit B evidence sales of the following products: ALUM-A-JOINT; ALUM-A-POLE; ALUM-A-BRACE; PRO-JACK; PRO-BENCH; PRO-TRIM COIL; and, STAGING. In selling “staging”, it appears that the registrant sold all types of scaffolding equipment including aluminum poles, joints, clamps, bracing, scaffolding, pump jacks, scaffolding bench, side railings and interlocking scaffolding apparatus, as shown on the scaffolding system instruction labels. Although the staging system appears to have been sold as one item, the labels (which, according to the affiant, were affixed either to the wares themselves or to the cartons in which the goods were shipped) clearly show that the system is comprised of each of the aforementioned types of scaffolding equipment. Hence, purchasers would likely be aware that the “item” they are purchasing in fact consists of aluminum poles, joints, clamps, bracing, scaffolding, pump jacks, scaffolding bench, side railings, and interlocking scaffolding apparatus. In my view, for purposes of Section 45 proceedings, and in light of the wording of the instant registration, this is sufficient to show transfers of each of these registered wares and that the mark was associated with each of these wares at the time of transfer. I would add that this decision is premised on the unique facts in this case.
I am also prepared to conclude that the transfers evidenced by the invoices occurred in the normal course of trade. In that regard, the affiant has sworn that the wares associated with the subject mark are manufactured by the registrant and sold to building supply stores, and the like, in Canada. The invoices appear to corroborate this statement, as they show sales of wares by Alum-A-Pole Corporation to companies that would seem to be in the building products business.
Having determined, although not without some difficulty, that the evidence shows use of the trade-mark ALUM-A-POLE per se in association with each of the registered wares, in compliance with ss. 4(1) and 45(1) of the Act, I conclude that the trade-mark ALUM-A-POLE ought to be maintained on the register.
Disposition:
In view of the foregoing, Registration No. TMA 351,090 will be maintained on the register.
DATED AT HULL, QUEBEC, THIS 15th DAY OF AUGUST 1997.
C.J. Campbell
Hearing Officer
Section 45