IN THE MATTER OF A SECTION 45 PROCEEDING
respecting registration No.393, 713
for the trade-mark CENTENNIAL & Design
On February 22, 1995 at the request of Messrs. Gowling, Strathy and Henderson, the Registrar forwarded a Restricted Section 45 Notice to Centennial Food Corp., the registered owner of the above referenced trade-mark registration.
The trade-mark CENTENNIAL & DESIGN (shown below) is registered in association with the following wares and services:
Wares:
(1) Food products namely, beef, poultry, lamb, veal, fish and seafood; processed meats; soups, sauces and spice bases; vegetables".
Services:
(1) Meat packing and meat butchery services.
The requesting party requested that the Section 45 notice be restricted to "vegetables, soups, sauces and spice bases".
In response to the Section 45 notice, the registrant furnished the affidavit of Mr. Nashir Vasanji. Both the requesting party and the registrant made written submissions in regard to the present proceedings. No oral hearing was conducted.
Prior to January 1, 1996, Section 45 of the Trade-Marks Act R.S.C. 1985, c. T-13 (hereinafter "the Act") required the registered owner to demonstrate use of its trade-mark at any time during the two years preceding the date of the Notice. However, Section 45 as amended by the World Trade Organization Agreement Implementation Act now requires the registrant to demonstrate use at any time during the three year period preceding the date of the notice for each of the registered wares and/or services. The Trade-Marks Opposition Board applies Section 45 as amended to all Section 45 cases whether they were commenced before or after January 1, 1996. Consequently, the relevant period in this case is between February 22, 1992 and February 22, 1995. If the registrant cannot show use within this period, it is required to show the date of last use of the mark and provide the reason for the absence of use since such date.
In his affidavit, Mr. Vasanji states that he is Vice-President and General Manager of Manufacturing of Centennial Food Corp. He states at paragraph 3 that his company has continuously used the trade-mark in association with sauces and spice bases since at least as early as August 1994, and up to and including February 22, 1995. He submits as Exhibit "A", a copy of a price list dated August 8, 1994, which he states was used by his company over the period 1990 to date, and which shows some of his company's products. He clarifies that those products shown in Exhibit "A" with the letters "LIT" in the product number are used with the trade-mark.
He also submits two other Exhibits as follows: Exhibit "B", which he refers to as "current run" labels used by his company with the trade-mark since at least as early as August 1994; Exhibit "C", which he asserts are copies of sales invoices dated January 17, 1995 and February 23, 1995 from his company for products sold in association with the trade-mark.
The arguments of the requesting party can be summarized as follows: (1) Mr. Vasanji may not have personal knowledge of the matters deposed to in his affidavit (2) use has not been shown with vegetables, soups and spice bases (3) concerning the wares “sauces”, the evidence is insufficient to show use in the normal course of trade; if any use is shown it is as a trade-name and furthermore, any use shown is not by the registrant (4) the registration may have been improperly obtained since it appears the declaration of use submitted prior to registration may have been improperly filed. I will address each of these submissions.
Concerning Mr. Vasanji's knowledge, I am satisfied that as Vice-President and General Manager of Manufacturing of Centennial Food Corp. he would have had knowledge of the affairs of the company and would have had company records available to him. Consequently, it seems to me, on balance, that Mr. Vasanji was manifestly in a position from the standpoint of his office as Manager of Manufacturing and as the Vice-President with the registrant company "to know whereof he deposed" (see Vapor Canada Ltd. v. MacDonald et al 6 C.P.R. (2d) 204). I therefore find the affidavit admissible.
Concerning the evidence, I am satisfied that the invoice dated January 17, 1995 filed in Exhibit "C" shows sales of "sauces" by the registrant during the relevant period. The invoice shows a sale to a business in Western Canada of four units of “tartar sauce”. The law is clear that a single sale made in the normal course of trade, so long as it was made bona fides, is sufficient to show use pursuant to Section 45 (see Philip Morris Inc. v. Imperial Tobacco Ltd. et al. 13 C.P.R. (3d) 289). As I have no reason to doubt the “bona fides” of this transaction, I am satisfied that it shows use in the registrant’s normal course of trade.
The requesting party submits that the product number for the “tartar sauce” appearing on the January 17, 1995 invoice does not match the LIT number for the product set out in the August 3, 1994 Branch House List (Exhibit "A").
The August 1994 price list (Exhibit "A") shows the sauce as product number 77581 LIT. The invoice shows the tartar sauce as product number 77579 LIT. In my view, it would have been preferable if Mr. Vasanji had explained the different product number. However, I note that the “Cost Entry Worksheet” shows the “tartar sauce” under product no. 77579LIT, the same as on the invoice. Mr. Vasanji stated in his affidavit that the invoice was in respect of products sold in association with the trade-mark and he has clearly stated that the letters “LIT” represented products under the trade-mark. Furthermore, I think it is reasonable to infer that there may be more than one product number for the tartar sauce sold under the trade-mark. In support of my conclusion, I note that the "Chunky Blue Cheese Dressing" appearing on the second invoice seems to be available under product number 77517 LIT as seen on the Price and Cost Entry Worksheet and under product No 77518 LIT as it appears on the Branch House Price List, and yet both are identified as "LIT" products which the affiant has explained represent products sold under the trade-mark. Having regard to the above, I am prepared to accept that the invoice dated from January 17, 1995 was in respect of sales of "tartar sauce" associated with the trade-mark.
Concerning the manner the trade-mark is associated with the wares "tartar sauce" at the time of transfer of such wares, Mr. Vasanji has explained that the mark appears on labels affixed to boxes containing the wares, and the mark also appears directly on the boxes themselves. Exhibit B contains cardboard boxes bearing labels with the trade-mark. The trade-mark is also imprinted on the boxes themselves. One of the cardboard box with a label bearing the trade-mark refers to “tartar sauce”.
The requesting party has argued that the boxes show the word "CENTENNIAL" used in conjunction with the words "FOOD SERVICE" immediately thereafter and with the statement “prepared for /préparé pour” directly above, which clearly results in a first impression of corporate or business name designation rather than trade-mark use. I am satisfied however, that the word "CENTENNIAL" together with the design matter are given more prominence and create distinctive elements which in my view, is sufficient to constitute use as a trade-mark (see Road Runner Trailer Manufacturing Limited v. Road Runner Trailer Co. Ltd. et al., 1 C.P.R.(3d) 443).
The requesting party has also submitted that any use shown is not by the registrant. I respectfully disagree. The name “Centennial Food Service” appearing at the top of the invoices is identified at the bottom thereof as a division of the registrant. Concerning the reference “Packed by Litehouse Inc., Sandpoint, Idaho for Centennial Packers”, the labels also clearly show that it is prepared for “Centennial Food Service”, (the registrant). Centennial Packers is also identified at the bottom of the invoices as “a division of the registrant”. Consequently, I am satisfied that the use shown of the trade-mark is use by the registrant.
Concerning the wares "soups and vegetables", the registrant has failed to clearly show use with such wares. The registrant has stated that it has plans to use the trade-mark with these products in the near future. However, the fact that the registrant intends to use the trade-mark with those wares is insufficient to maintain those wares on the register. Concerning the wares “spice bases”, the bare allegation of use in the affidavit with respect to such wares is insufficient to maintain such wares on the register. In its written submission, the registrant’s agents submitted that the evidence of sales of meats and dressings constitute use in association with “spice bases”. However, I find there is not evidence before me that would permit me to conclude that “spice bases”would include “meats and dressings”.
The requesting party has raised questions regarding the validity of the registration asserting that the declaration of use filed in 1991 may have been improperly filed. As clearly commented on by the registrant, the nature and scope of these proceedings do not permit a consideration of these issues which are questions that should be left to the Federal Court pursuant to Section 57 of the Act.
In view of the evidence furnished, I conclude that the registration ought to be amended by deleting "soups, spice bases and vegetables" from the statement of wares.
Registration No. TMA 393,713 will be amended accordingly, in compliance with the provisions of
Section 45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 30th DAY OF August, 1996.
D. Savard
Senior Hearing Officer