SECTION 45 PROCEEDINGS
TRADE-MARK: THE TRADE MARKER & DESIGN
REGISTRATION NO.: 343,172
On October 18, 2000, at the request of 88766 Canada Inc., the Registrar forwarded a Section 45 notice to Barlow, Menard & Associates - A Division of Flansberry, Menard & Associates Inc., the registered owner of the above-referenced trade-mark registration. A request to recognize the transfer of the trade-mark was made on January 18, 2001. Confirmation of Change in Title was recorded March 30, 2001 with Flansberry, Menard & Associates Inc. entered as the owner of the above trade-mark.
The trade-mark THE TRADE MARKER & Design (shown below) is registered for use in association with the following wares: periodical publication.
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Section 45 of the Trade-marks Act requires the registered owner 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.
In response to the notice, the affidavit of Raymond A. Flansberry was furnished. Neither party filed a written argument or requested an oral hearing.
In his affidavit, Mr. Flansberry indicates that he is the Managing Director of Flansberry, Menard & Associates Inc. (hereinafter “FMA”). He states that FMA is the nunc pro tunc assignee and has filed as of the affidavit date “a nunc pro tunc assignment document” with the Registrar of Trade-marks. As mentioned earlier the Change in Title of the trade-mark was recorded on March 30, 2001. He points out that FMA is a trade-mark agent firm whose work includes, inter alia, at paragraph 4:
(i) Keeping our clients informed by periodically reporting the changes in various trade-mark procedures through our periodical publication.
He explains that the reporting services under the trade-mark THE TRADE MARKER & Design are performed free of charge to FMA’s clients, seminar attendees, selective non-profit organizations and potential clients and that the periodical publication has been available on the Internet since 1994. As Exhibit A he provides a specimen of the publication on the Internet. He mentions that the number of recipients of the periodical publication under the trade-mark THE TRADE MARKER & Design varies from 1000 - 2000 depending on the number of Internet hits. He adds that the publication is given free of charge and that 500 copies are distributed to clients of FMA on a yearly basis through the office distribution channels. He clearly states that the trade-mark is visible on the front and all subsequent pages of the publication. He adds that the publication is also available to clients who have requested that it be sent to them via email.
The first issue in this case is whether the document entitled “nunc pro tunc assignment” is a valid confirmation of an earlier assignment that occurred between Barlow, Menard & Associates - a Division of Flansberry, Menard & Associates Inc. and Flansberry, Menard & Associates Inc. but had not been recorded.
The Registrar has the jurisdiction in a Section 45 proceeding to decide the effect of an assignment, as stated in Marcus, carrying on business as Marcus & Associates v. Quaker Oats Co. of Canada (1988), 20 C.P.R. (3d) 46 (F.C.A.). Further the Marcus case is authority for the proposition that the Registrar in a Section 45 proceeding should view with scepticism transactions post-dating the Section 45 notice. Accordingly, it is necessary to carefully consider the document in order to determine whether there was, in fact, an earlier assignment of the trade-mark rights from Barlow Menard & Associates to Flansberry, Menard & Associates Inc.
The request to recognize the transfer of the trade-mark was submitted to the Office on January 18, 2001, subsequent to the date of the Section 45 notice. Although the document dated January 18, 2001 shows the transfer of the trade-mark to FMA, I find that it does not clearly confirm that the assignment occurred earlier namely on January 31, 1987. The language used in terms of when the assignment occurred is ambiguous and appears to give retroactive effect. The wording used is as follows:
...
has agreed to sell, assign and transfer and does hereby sell, assign and transfer unto the said Assignee all its rights, title and interest in and to the Canadian trade-mark, The Trade Marker & Design, Registration No. TA 343,172..., as and from January 31, 1987. (Underlining is mine)
The phrase “does hereby sell, assign and transfer... as and from” is indicative of giving something retroactive effect, rather than being confirmatory in nature. This is exactly the type of wording that was considered in Marcus, supra. Consequently, from this reading, I cannot conclude that the assignment of the trade-mark occurred on January 31, 1987.
In the result, I must consider the assignment of the trade-mark from Barlow, Menard & Associates to FMA to have been effected on the execution date of the assignment document, being January 18, 2001. Consequently, I conclude that the recording of the assignment on March 30, 2001 had the effect of recording the change of ownership as of January 18, 2001, but not as of January 31, 1987. It follows that as the owner during the relevant period was Barlow, Menard & Associates - A Division of Flansberry any use to be shown in the instant case is use by Barlow, Menard & Associates - A Division of Flansberry. In the circumstances, the affidavit provided by Mr. Flansberry on behalf of FMA and purporting to show use by FMA is evidence of use by the successor-in-title and not evidence of use by the owner during the relevant period.
However, even if FMA had been the owner of the trade-mark during the relevant period, I would have concluded that any use shown by the evidence was not use “in the normal course of trade” within the scope of Section 4(1) of the Trade-marks Act. The trade-mark THE TRADE MARKER & Design is registered for use in association with wares, specifically a periodical publication. The evidence shows that FMA uses the mark in conjunction with a periodical publication, which is distributed free of charge as a reporting service to FMA’s clients, seminar attendees, selective non-profit organizations and potential clients.
It may be that in certain circumstances the free distribution to the public of a publication in association with a trade-mark could qualify as trade-mark use within the scope of s-s. 4(1) of the Act. In this regard, in the case Now Communications Inc. v. Chum Ltd. (2000), 5 CPR (4th) 275 (T.M.O.B.), the Chairman of the Trade-Marks Opposition Board was considering whether the free distribution by the opponent of its NOW magazine qualified as use of the opponent’s trade-mark in association with a magazine. He quoted the following from the case Gowling, Strathy & Henderson v. Royal Bank of Canada, 63 C.P.R. (3d) 322:
The only evidence of use of the INFORMACTION trade mark before November 12, 1991, was a bulletin circulated within the Royal Bank’s organization and an application of the mark as a letterhead on blank stationary. It is not good enough to declare that the trade mark has been used “in the normal course of trade”. The affiant must explain what is the normal course of trade and show how the trade mark was used therein.
On that score, the evidence is thin and vague as there is no indication as to how the trade mark was linked to wares being sold or transferred: Professional Gardener Co. v. Registrar of Trade Marks (1985), 5 C.P.R. (3d) 568 at pp. 571-2, 5 C.I.P.R. 314 (F.C.T.D.) (per Strayer J.). The word “trade” contemplates some payment or exchange for the wares supplied or at least that the transfer of the wares was part of a deal. The only evidence is of the trade mark being associated with internal communications or, at best, free leaflets at one time available to some customers: Renaud Cointreau & Cie v. Cordon Bleu International Ltd. (1993), 52 C.P.R. (3d) 284 (T.M. Opp. Bd.) at p. 287. In short, there is no evidence that the wares covered by the trade mark INFORMACTION were ever manufactured, sold or leased for the purpose of distinguishing the Royal Bank’s wares from others on the market-place.
He then stated the Royal Bank decision was arguably distinguishable from the situation in Now Communications in that Mr. Justice Dubé, in Royal Bank was considering the circulation of a bulletin internally by the Royal Bank whereas NOW magazine was distributed by the opponent to the public with the view of gaining profit from the sale of advertising space in its magazine. As a result, he concluded that the opponent’s free distribution of its magazine in association with the trade-mark may qualify as trade-mark use within the scope of Subsection 4(1) of the Act.
In the present instance, there is no evidence furnished in the affidavit to suggest that the free distribution of FMA’s publication was done with a view to gaining profit through, for example, the sale of advertising space through its publication. The exhibits provided by Mr. Flansberry show various issues of THE TRADE MARKER publication over the relevant period but none contain any advertisements.
From the evidence as a whole, it appears that FMA’s publications are not the object of a normal commercial transaction. In my view, the present case is very similar to Renaud Cointreau & Cie v. Cordon Bleu International Ltd. (1993), 52 CPR (3d) 284 (T.M. Opp. Bd) p. 287. Further, there is no evidence to suggest or where it could be inferred, that the free distribution of the publication is made in anticipation of securing orders and sales with respect to the publication, which would demonstrate an intention of acquiring profits from the marked wares: see Lin Trading Co. v. CBM Kabushiki Kaisha (1985), 5 CPR (3d) 27 (Hearing Officer- T.M.), affirmed 14 CPR (3d) 32 and 21 CPR (3d) 417.
The evidence tends to show that the publication bearing the trade-mark is used in the context of a service for keeping FMA’s clients informed of changes in various trade-mark procedures, such service being described in paragraphs 4(i) and 5 of the Flansberry affidavit. Accordingly, this does not appear to be a use of the trade-mark in association with wares in a commercial context. Therefore, I conclude that the use of the trade-mark is more in respect of services and consequently does not qualify under the s-s. 4(1) use “in the normal course of trade” with respect to wares. Accordingly, Registration No. 343,172 ought to be expunged.
Registration No. 343,172 will be expunged in compliance with the provisions of Section 45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 14th DAY OF FEBRUARY 2002.
D Savard
Senior Hearing Officer
Section 45 Division