SECTION 45 PROCEEDINGS
TRADE-MARK: FOR THE RECORD
REGISTRATION NO.: 445,615
On September 1, 2000, at the request of The Sports Network Inc., the Registrar forwarded a Section 45 notice to Abalene Sales and Promotions Ltd., the registered owner of the above-referenced trade-mark registration.
The trade-mark FOR THE RECORD is registered for use in association with the following wares:
(1) Sports related products namely; cards, photographs, posters, pre-recorded videos, cassette tapes, compact disks; and printed matter namely; magazines, newsletters and newspapers.
(2) Certificates of achievement awarded to individuals for accomplishments.
An application to extend the statement of wares and to add services is presently pending but it is not relevant for the matters in this proceeding.
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 Stewart Edward MacFarlane was furnished. The requesting party filed a written argument. An oral hearing has not been requested in this case.
In his affidavit, Mr. MacFarlane indicates that he is an Officer and Director, namely the President of Abalene Sales and Promotions Ltd. (hereinafter “Abalene”). Enclosed with his affidavit are various exhibits including Activity Reports, player portrait cards, various certificates, a poster, sample newsletters, invoices, sales sheets and web pages.
He further states that Abalene employs 3 full-time sales people across Canada and has a base of 350 customers across Canada.
The requesting party argues that the Registrant has not filed the required evidence to maintain the registration in respect of the wares “pre-recorded videos, cassette tapes, magazines and newspapers.” Furthermore, the requesting party claims that (i) there is no use with respect to the cards; (ii) the certificates are not “certificates of achievement awarded to individuals for accomplishments”; (iii) the newsletters were not used in the normal course of trade since no evidence was provided to show that their distribution was in connection with a sale. Concerns regarding wares not found in the registration, the use of sales sheets at shows and items displayed on the web page for sale were raised.
Section 45(1) of the Act makes it clear that use must be shown in association with each of the wares or services specified in the registration, see John Labatt Ltd. v. Rainier Brewing Co. (1984), 80 C.P.R. (2d) 228 (F.C.A.). Failure to show use with each of the wares may result in an amendment to the registration.
I totally agree with the requesting party that there is no mention in the evidence concerning the wares “pre-recorded videos, cassette tapes, magazines and newspapers”. Consequently, such wares will be deleted from the registration.
Regarding the wares “cards”, the player portrait cards furnished in the affidavit of Mr. MacFarlane do clearly show use of the mark FOR THE RECORD. However, there is no evidence to demonstrate use with such cards within the relevant period, namely at any time between September 1, 1997 and September 1, 2000. The evidence made available indicates the distribution of the cards in 1995. There is no indication of any other sale or distribution of portrait cards in the affidavit, in Abalene’s Activity Reports and in the invoices provided. Therefore, I cannot conclude that the mark was being used in association with such cards during the relevant period.
However, the affiant has provided an invoice, dated February 13, 1998, showing the sale of “postcards”. Although no actual postcards depicting the mark FOR THE RECORD were furnished, I note that at paragraph 21 of the affidavit, Mr. MacFarlane has clearly indicated that the products which were delivered to the registrant’s customers prominently displayed the trade-mark FOR THE RECORD. Accordingly, in view of such sworn statement I am prepared to conclude that the “postcards” bore the trade-mark at the time of their transfer in the normal course of trade. (See Mantha & Associates v. Central Transport Inc., 64 C.P.R. (3d) 354.) Further, I accept that “postcards” are “cards” namely wares covered by the trade-mark registration.
In addition concerning the wares “cards”, I note that in the list of items found at paragraph 4 of the affidavit, reference is made to 500,000 FOR THE RECORD McDonald’s Restaurant Women’s Olympic Hockey cards having been distributed in 1998. As Mr. MacFarlane has indicated in paragraph 4 of the affidavit that the list was a representative sample of the sales volumes for products bearing the trade-mark, I am prepared to infer that the “hockey cards” would have been sold to McDonald’s restaurants in 1998. Again as Mr. MacFarlane has indicated that the items bore the trade-mark, I conclude that the use was in compliance with Section 4(1) of the Act.
In view of the above, I conclude that the evidence shows use of the trade-mark in association with the wares “cards” during the relevant period.
Regarding the wares “certificates”, evidence of use has been shown in relation to certificates that Abalene sells. The requesting party claims that the certificates, including the 1996 World Junior Champions, the 1998 Nagano Olympic Winter Games Snowboarding Men’s Giant Slalom and the 1998 Canadian Men’s Olympic Hockey Team, are “informative in nature” and not “certificates of achievement awarded to individuals for accomplishments”. At first glance, I would be inclined to agree. However, given a broader reading of the registration, it is possible to consider these certificates as “certificates awarded to individuals for achievements or accomplishments”. If an item was only given to an individual when he or she achieved some particular goal or outcome, the reception of such an item would be for the achievement of that goal or outcome. It is not necessary for that item to bear the person’s name or even be related to the filed in which the goal or outcome is achieved. There mere reception of the item would be recognition of the achievement. For example, a pee-wee hockey coach who distributes a “Team Canada” certificate to each of her players for making the play-offs could be seen as “certificates of achievement” for that specific event. The distribution of this certificate does not need to bear the name of the individual player. Consequently, the distribution of the above-mentioned certificates could be seen as a “certificate of achievement” in the broader sense when given to an individual for the accomplishment of some goal or outcome. In the example given, the certificate itself is not related to the specific goal or outcome, but can nonetheless be considered a “certificate of achievement”, given in recognition of a certain goal.
Notwithstanding the above, Exhibit M shows a certificate of achievement presented to Namoi deKock in 1999 for a hole-in-one on the third hole at the University Golf Club. The trade-mark FOR THE RECORD is identifiable on the certificate. I am also satisfied that the use shown of the words “FOR THE RECORD” thereon is use as a trade-mark and use pursuant to Section 4(1) of the Act. I believe this is clear evidence of use in relation to certificates of achievement awarded to individuals for accomplishments and I am prepared to infer, based on the evidence as a whole, that this certificate would have been prepared by the registrant at the request of the University Golf Club.
The requesting party submits that the trade-mark FOR THE RECORD on some certificates appears with additional matter. In my view, I find it can be argued that the use of the trade-mark with the additional matter constitutes use of the trade-mark FOR THE RECORD “per se”. The issue of whether a trade-mark appearing with additional matter will constitute use of the mark as registered was discussed in Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 (T.M.O.B.), and can be summarized as follows:
Use of a mark in combination with additional material constitutes use of the mark per se as a trade-mark if the public, as a matter of first impression, would perceive the mark per se as being used as a trade-mark. This is a question of fact dependent upon such factors as whether the mark stands out from the additional material, for example, by the use of different lettering or sizing...or whether the additional matter would be perceived as purely descriptive matter or as a separate mark or trade-name...
One certificate shows the mark being used with additional matter, for example:
CANADIAN HOCKEY ASSOCIATION - FOR THE RECORD ® -
Although the mark and additional matter are presented in the same lettering and sizing, I note that the mark FOR THE RECORD is wholly enclosed within two hyphens and the ® symbol is also enclosed within the hyphens and would lead the viewer to the legend at the bottom of the certificate to the effect that FOR THE RECORD is a registered trade-mark of Abalene.
With regard to the use of the ® symbol in association with the mark FOR THE RECORD, the use of such a notation does not ipso facto make a trade-mark out of a designation in connection with which it is used (see Wilson v. Kellogg Salada Canada Inc. (1991), 37 C.P.R. (3d) 563). It is only one factor to consider. However, in this case, the ® symbol brings the viewer to the legend at the bottom of the certificate which indicates that FOR THE RECORD is a registered trade-mark of Abalene. In my view, by virtue of the mark being enclosed within the hyphens, by the use of the ® symbol within the hyphens which draws the attention of the viewer to the fact that FOR THE RECORD is a registered trade-mark, I am prepared to conclude that the words FOR THE RECORD would be perceived as a registered trade-mark on its own. Consequently, I accept the use shown on such certificate constitutes use of the registered trade-mark “per se”.
Notwithstanding the above, the trade-mark “FOR THE RECORD” appears without additional matter on most certificates.
In terms of the “newsletters”, I have doubts as to whether such “newsletters” are wares being sold in the registrant’s normal course of trade. As I find the evidence is ambiguous concerning whether or not the newsletters are being sold to the registrant’s customers, I find I have to interpret the ambiguity against the interest of the registrant (see Plough Canada Ltd. v. Aerosol Fillers Inc., 45 C.P.R. (2d) 194 (FCTD) and 53 C.P.R. (2d) 62 (FCA)). Consequently, the wares “newsletters” will be deleted from the registration.
Regarding the “compact disks” Exhibit O of Mr. MacFarlane’s affidavit shows an invoice with sales of “FOR THE RECORD - CD’s”. No samples of the compact disks were provided. However, at paragraph 20 of the affidavit Mr. MacFarlane indicates that he has knowledge of and confirm that the mark FOR THE RECORD was prominently displayed on the CDs when they were delivered to the customer. Consequently, I accept that the compact disks would have had the trade-mark displayed on them. The invoice is dated December 11, 1999, therefore it shows a sale that occurred during the relevant period (regarding a single sale, see Philip Morris Inc. v. Imperial Tobacco Ltd. et al., 17 C.P.R. (3d) 237 and 13 C.P.R. (3d) 289 and Quarry Corp. v. Bacardi & Co., 72 C.P.R. (3d) 25 affirmed F.C.A. 86 C.P.R. (3d) 127.)
With respect to posters and photographs, I find there is enough evidence to support use of the trade-mark FOR THE RECORD in association with each of those wares. The mark appears on the poster furnished (Exhibit E) and with sales volumes of 42,000 in 1998 (see paragraph 4 of the MacFarlane Affidavit and also Exhibit A), which is during the relevant period, I conclude that “posters” ought to be maintained. With respect to photographs, the invoice dated February 13, 1998 shows sales of “photos”. Again considering the evidence as a whole, I accept the affiant’s statement to the effect that the trade-mark was prominently displayed on the products sold. Further, I note that Mr. MacFarlane has indicated that some photographs come framed with embossed cards, of the type shown in Exhibit L. These embossed cards clearly show the mark FOR THE RECORD. In addition, I am of the opinion that photographs are equivalent to prints and Exhibits R and T show that the items for sale included “photo/print”. In view of the above, I am satisfied that the evidence shows that the trade-mark was in use in relation to photographs during the relevant period.
In summary, I find that the evidence shows that the trade-mark FOR THE RECORD was in use in association with the following wares: cards, photographs, posters, compact disks, and certificates of achievement awarded to individuals for accomplishments. I find the evidence does not show use in association with “newsletters” in a manner that would satisfy Section 4(1) of the Act. Concerning the wares pre-recorded videos, cassette tapes, magazines and newspapers the evidence is silent concerning such wares.
In view of the evidence furnished, I conclude that the registration ought to be amended by deleting the wares “newsletters, pre-recorded videos, cassette tapes, magazines and newspapers” from the statement of wares.
Registration No. 445,615 will be amended accordingly, in compliance with the provisions of
Section 45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 28th DAY OF MARCH 2002.
D Savard
Senior Hearing Officer
Section 45 Division