Section 45 Proceedings
Trade Mark: SUPER VUE
Registration No.: TMA 193,898
On March 21, 1996, at the request of the firm Gowling, Strathy & Henderson, the Registrar forwarded a Section 45 Notice to Cascades Dominion Inc., the registered owner of the above-referenced trade-mark registration. The trade-mark SUPER VUE is registered for use in association with the following wares:
Containers made of paper board, molded pulp and plastic for food.
In response to the Section 45 Notice, the registrant furnished the affidavit of Robert S. Hamilton, Vice President Sales and Marketing of the registrant company. Both the requesting party and the registrant made written submissions in regard to the present proceedings. An oral hearing was not conducted.
In his affidavit, Mr. Hamilton states (at paragraph 2) that the subject mark “has been used by the registrant in Canada by being applied to labels which are affixed to packaging containing containers made of paperboard, moulded pulp and plastic for food which have been sold in Canada in the normal course of trade continuously since prior to March 21, 1996 to the present time, including the period between March 21, 1993 to March 21, 1996.” He further states that the containers sold by the registrant are in the form of egg cartons. To demonstrate the manner in which the mark is used, he attaches as Exhibit A, photographs of packages of two hundred and fifty egg cartons, and as Exhibit B, representative gum tape label.
Mr. Hamilton also attaches, as Exhibit C, photocopies of three invoices demonstrating the sale of egg cartons under the trade-mark SUPER VUE. He explains (at paragraph 5 of the affidavit) that the letters “SV” on the invoice represent the sale of egg cartons which are sold under the subject mark.
The requesting party’s arguments may be summarized as follows: (1) use of the mark on the wares which are the subject of the registration has not been shown; (2) the mark is not sufficiently associated with the wares at the time of transfer that notice of the association is given to the transferee; (3) it is impossible to determine what is the registrant’s normal course of trade; (4) the use of the registrant’s mark does not serve to distinguish the registrant’s wares from those of others.
The registrant’s arguments may be summarized as follows: (1) the evidence shows that the trade-mark is being used in association with the registered wares; (2) the mark is associated with the wares at the time of transfer such that notice of the association is given to the transferee; (3) the transfers took place in the normal course of trade; (4) at the time of delivery of the wares, the registrant’s mark distinguishes its wares from those of others.
Having reviewed the evidence, I am satisfied that it shows use of the mark by the registrant in association with the wares “containers made of paper board, molded pulp and plastic for food.” The requirements for use of a mark in association with wares are set out in s. 4(1) of the Act, which reads as follows:
4(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of such wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
Thus, the registered owner must show: 1) transfers of the registered wares; 2) in the normal course of trade; and, 3) that the mark was associated with the wares at the time of transfer such that notice of the association was given to the transferee.
Concerning the first requirement, Mr. Hamilton has identified the wares sold by the registrant as being containers made of paperboard, moulded pulp and plastic for food, and he deposes that these containers are in the form of egg cartons (paragraph 2 of the affidavit). I am therefore satisfied that the transfers of egg cartons, evidenced by the invoices attached as Exhibit C, are in fact transfers of the registered wares. Each of the invoices bears a date within the relevant period, which in this case is at any time between March 21, 1993 and March 21, 1996, as well as the letters “SV” in the “Description” column, which Mr. Hamilton has stated represents the sale of egg cartons under the trade-mark SUPER VUE.
With respect to the second requirement, the transfers of the wares appear to have been in the registrant’s normal course of trade. Although not explicit, from the evidence submitted it seems that the registrant manufactures egg cartons and sells them in bulk to its customers, who would appear to be egg producers or distributors. This conclusion is supported not only by the affiant’s statement that the sales occurred in the normal course of trade, but also by the following facts: the affiant has deposed that the photographs (attached as Exhibit A) are of packages of 250 egg cartons; the gum tape label (attached as Exhibit B) includes the words “Super Vue EGG CARTONS 250 LARGE”; and, the invoices (attached as Exhibit C) show sales of large quantities of egg cartons to the registrant’s customers. Thus, considering the evidence in its entirety, I am prepared to conclude that the transfers of wares evidenced by the invoices were in the normal course of trade.
Concerning the third requirement, the requesting party has argued that the manner in which the registrant is using the subject mark does not necessarily provide association of the mark with the wares to the transferee. With respect, I must disagree. Section 4(1) provides that a trade-mark is deemed to be used in association with wares if it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. The Act does not require, as the requesting party suggests, that the mark must be marked on the wares wherever possible; rather, any manner of association that complies with s. 4(1) will suffice. Further, I am not persuaded by the requesting party’s argument that it is not clear that buyers of the registrant’s wares would associate the mark with the wares since it is possible the shipping wrapper bearing the mark might be discarded (for example, by a receiving department) before the mark is made known to the purchaser itself. As the registrant has argued, by the time the wares have been received by a “receiving department”, a transfer in the property or possession of the wares to the purchaser has already occurred. Consequently, given that the registrant has shown that the mark appeared on the gum tape label which was applied to packages containing egg cartons, I conclude that the requisite association of the mark with the wares at the time of transfer has been shown (see Labatt Brewing Company Limited v. Molson Breweries, A Partnership (May 28, 1996) yet unreported, F.C.T.D. file T-646-95).
The requesting party has also argued that the registrant’s trade-mark does not distinguish the registrant’s goods from the goods of the egg manufacturers (a reference, presumably, to the registrant’s customers). In support of this assertion, the requesting party argues that “if egg producers are distributing their wares in the registrant’s egg cartons, embossed with those producers’ own trade-marks, end users could be of the impression that those egg producers also produce the cartons.” With all due respect, I disagree. The purpose of a trade-mark, as set out in s. 2 of the Act, is to distinguish wares or services manufactured, sold, leased, hired or performed by one person from those manufactured, sold, leased, hired or performed by others. The fact that the registrant’s wares were packaged in packaging to which the label bearing the trade-mark SUPER VUE had been applied would, in my opinion, distinguish the registrant’s wares at the time of sale from wares sold by others, as it would enable the registrant’s customers to determine the source of the wares; whether or not the wares were or could have been subsequently altered for re-sale does not, in my view, have any bearing on this issue.
Disposition:
In view of the foregoing, Registration No. TMA 193,898 will be maintained on the register.
DATED AT HULL, QUEBEC, THIS 22nd DAY OF May, 1997.
C.J. Campbell
Hearing Officer
Section 45