SECTION
45 PROCEEDINGS
TRADE-MARK: SOLITAIRES
REGISTRATION NO.: 335.681
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On July 22, 1996, at the request of Chocolaterie Guylian N.V., the Registrar forwarded a Section
45 notice to Homestead, Inc., the registered owner of the above-referenced trade-mark
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registration.
The trade-mark SOLITAIRES is registered for the following wares:
"Chocolate covered nuts and candy".
In response to the Registrar's notice, the affidavit of Laurens Gerlings, Brands Manager of
Hershey Canada Inc. was
furnished. Each party filed a written submission and was represented at
an oral hearing.
In his affidavit, Mr. Gerlings states that Homestead, Inc., is a related company of Hershey Canada
Inc. and that Hershey Canada Inc. is licensed by the registrant to use the trade-mark and that
under the license the registrant has control over the character or quality of the.wares. He
specifies
that the trade-mark was in use with the wares as of July 22, 1996. He submits
as
Exhibits A and A-I, a representative specimen packaging (Exhibit A) and
photographs of
representative specimens of packaging and a photocopy of the bottom of the
package (Exhibit A-
. 1) which he states show use of the trade-mark during the relevant three-year period.
As Exhibit B, he has attached copies of invoices which he states show sales during the relevant
period; as Exhibit C, he submits pages from the 1993, 1994, 1995 and 1996 catalogues which he
states show the trade-mark SOLITAIRES with respect to items numbers 01309,01310 or 01320,
and/or 00404. Mr. Gerlings also has alleged that in the trade, chocolate covered nuts are candy.
The requesting party argues that the evidence is insufficient to conclude to use of the trade-mark
in association with any of the wares during the relevant period in the manner required by Section
4(1) of the Trade-marks Act; in the alternative, it submits that if any use of the trade-mark has
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been shown, it is only in association with the wares "chocolate covered nuts"
In my view, the evidence clearly shows use of the trade-mark SOLITAIRES in association with
"chocolate covered nuts". It is clear from the specimen packaging and the pages from the
catalogues that the wares sold under the trade-mark SOLITAIRES are chocolate covered
almonds, therefore "chocolate covered nuts" . I am also .satisfied that sales of SOLITAIRES
chocolate covered almonds were made during the relevant period. In the body of the invoices
dated 3/03/95; 26/11/93; 31/10/93; 3/04/94 the trade-mark SOLITAIRES appears and Mr.
Gerlings has clearly indicated that the invoices showed sales of the wares under the trade-mark.
I am also satisfied that the invoices dated 14/12/94 and 24/01/96 show sales of chocolate covered
almonds in association with the trade-mark. The reference to "HERSHEY FAVOURITES", item
01309 in such invoices, would appear to be a reference to an assortment of chocolates sold under
the trade-mark HERSHEY but including SOLITAIRES chocolate covered almonds. In this
regard, the pages of catalogues submitted as Exhibit C clearly refer to item
01309 and clearly
show the container for the wares bearing the trade-mark HERSHEY, a photograph of which has
been submitted as Exhibit A-I . Exhibit A-I also contains a photograph of the back of the
chocolate box. At the back of the box, it is explained that the product contains an assortment of
chocolates which are identified under their respective trade-marks. The trade-mark
SOLITAIRES appears to be one of the trade-marks used to distinguish the chocolate covered
almonds contained in the box. I note that it is identified by the ® symbol and in my view, it would
be perceived as a trade-mark used in association with the chocolate covered almonds.
Consequently, I am satisfied that such use meets the requirements of the Trade-marks Act and
that it is use of the trade-mark SOLITAIRES per se.
The requesting party argues that such use does not meet the requirements of Section 4 of the Act.
It submits that the commercial transactions that were made involving "item 01309" were is
respect of a product sold under the trade-mark HERSHEY, as can be seen on the cover of the
sample box (Exhibit A-I), not in respect of a product sold under the trade-mark SOLITAIRES
and in support of its argument, it relies on the case Massana v. Zenith Electronics Corp., 26
C.P.R.(3d) 570. In my view, the present case is more analogous to the situation in Service
Intelpro v. Procter & Gamb/e Inc., 47 C.P.R.(3d) 118. What the evidence shows is that the
present registrant sells a product containing an assortment of chocolates and the product is sold
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under the trade-mark HERSHEY; however, it is also clear that the registrant uses different trade-
marks to distinguish the different chocolate products contained in the box and that it uses the
trade-mark SOLITAIRES to distinguish the "chocolate covered almonds" contained therein. I
agree with the registrant that there is nothing in the Act that prohibits a registrant from using
more than one trade-mark at the same time. In my view, as long as the purchasing public will
associate the trade-mark SOLITAIRES with the registrant's chocolate covered almonds, I do not
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see the reason such use would not comply with Section 4(1) of the Trade-marks Act. I am of the
opinion that, when a customer purchases the registrant's chocolate box, the customer is aware
that it is purchasing an assortment of chocolates, one of which are SOLITAIRES chocolate
covered almonds, since such is clearly indicated on the back of the container.
I therefore conclude that the evidence shows use of the trade-mark SOLIT AIRES in association
with chocolate covered nuts in compliance with the requirements of the Act.
At the hearing, counsel for the registrant pointed out that as Exhibit A-I clearly refers to the
product sold as "chocolates", and as "chocolates" are candies, use of the trade-mark has also been
shown with the registered wares "candy": In
support of her argument, she has provided the
following dictionary definition for the word "chocolate":.
I agree that the evidence shows that the registrant sells several types of chocolates; however, the
only products distinguished by the trade-mark SOLITAIRES are the "chocolate covered
almonds" which would fall under the registered wares "chocolate covered nuts".
Consequently, the evidence only shows use of the trade-mark SOLITAIRES with "chocolate
covered nuts".
.
Concerning Mr. Gerlings’ allegation that in the trade, "chocolate covered nuts" are also
considered "candy", I agree with the requesting party that such an allegation by Mr. Gerlings is
insufficient to maintain the registration for "candy".
As pointed
out by the requesting party, the wares "chocolate covered nuts" are
listed separately
from "candy" in the registration; consequently, in order to maintain
the registration for both
"candy" and "chocolate covered nuts", the registrant had to show use with "candy" other than
"chocolate covered nuts". I find authority for this position in the decision Sharp Kabushiki
Kaisha v . 88766 Canada Inc., 72 C.P.R.(3d) 195 .
At the hearing, counsel for the registrant stated that if the Hearing
Officer's decision was to
maintain the registration for only one of the wares, it suggested that the
wares "candy` could be
redefined as "candy, namely chocolate covered nuts". However, as I have already mentioned, the
wares "chocolate covered nuts" are listed in the registration as separate wares from "candy". In
my
view, if the registrant has listed them separately in its registration, then it
must have done so
because it considered the use of its trade-mark with "candy" to be
different from such use with
"chocolate covered nuts" (see Sharp, supra). Consequently, the term "candy" cannot now be
amended to read "candy, namely chocolate covered nuts". '
As the evidence does not show use of the trade-mark in association with any wares other than
"chocolate covered nuts", then It follows that the registration ought to be maintained only for
such wares (see John Labatt Ltd. v. Rainier Brewing Co. eta/., 80C.P.R.(2d) 228).
Registration No. 335,681 will be amended accordingly, in compliance with the provisions of
Section 45(5) of the Trade-marks Act.
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DATED AT HULL, QUEBEC, THIS 31st DAY OF OCTOBER
D. Savard
Senior
Hearing Officer
Section 45 Division
1997.
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