LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 159
Date of Decision: 2010-09-27
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Ridout & Maybee LLP against registration No. TMA36960 for the trade-mark PILOT in the name of ADM Agri-Industries Company.
[1] At the request of Ridout & Maybee LLP (the “requesting party”), the Registrar forwarded a notice under s. 45 of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”) on June 30, 2008 to ADM Agri-Industries Company (“ADM” or the “registrant”), the registered owner of the above referenced trade-mark.
[2] The trade-mark PILOT (the “Mark”) is registered for use in association with “flour”.
[3] Section 45 of the 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 services specified in 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 such use since that date. In this case, the relevant period for showing use is between June 30, 2005 and June 30, 2008 (the “Relevant Period”).
[4] It is well established that the purpose and scope of s. 45 of the Act is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register and as such, the evidentiary threshold that the registered owner must meet is quite low.
[5] Use in association with wares is set out in s. 4(1) and 4(3) of the Act and in this case, only s. 4(1) applies:
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 the 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.
[6] The registered owner is required to show use of the trade-mark with each of the wares and services set out in the statement of wares and services; it is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 (F.C.A.)]. Although the threshold for establishing use in section 45 proceedings is quite low [Woods Canada Ltd. v. Lang Michener (1996), 71 C.P.R. (3d) 477 (F.C.T.D.) at 480], and evidentiary overkill is not required [Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 56 (F.C.T.D.)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with the wares and services specified in the registration, during the relevant period.
[7] On December 30, 2008 the registrant filed the affidavit of David J. Smith, sworn on December 22, 2008, with accompanying exhibits in response to the Registrar’s notice. Only the registrant filed written submissions and an oral hearing was not requested.
[8] In his affidavit, Mr. Smith, the President and Secretary for ADM, attests that the Mark has been used during the relevant period and continues to be used in Canada by ADM Milling Co. in association with flour sold in 20kg and 40 kg bags. Mr. Smith further attests that the ADM Milling Co. is licensed by ADM to use the Mark in Canada in connection with the manufacturing, labelling, packaging, distribution, marketing and selling of flour in accordance with the specifications established by ADM and as such ADM has direct or indirect control of the character and quality of the flour marked with the trade-mark PILOT. I conclude on the basis of this evidence that any use shown by ADM Milling Co. is deemed to be use by the registrant pursuant to s. 50(1) of the Act.
[9] Mr. Smith also attests that PILOT flour is sold directly by the ADM Milling Co. to bakers and industrial manufacturers or distributors who then sell to Canadian baking and industrial establishments. Attached to his affidavit is sample packaging marked with “PILOT FLOUR” and “FARINE PILOT” as well as representative invoices from each of the years 2005, 2006, 2007 and 2008 demonstrating sales of “FARINE PILOT G403” from the ADM Milling Co. to Perfecta Plywood Ltée of Québec.
[10] On the basis of this evidence, I conclude that the registrant has discharged the onus of demonstrating use of the Mark in Canada during the relevant period in association with “flour” within the meaning of s. 45, s.4(1) and s.50(1) of the Act.
[11] Accordingly, and pursuant to the authority delegated to me under s. 63(3) of the Act, the registration will be maintained in compliance with the provisions of s. 45 of the Act.
______________________________
Darlene H. Carreau
Chair
Trade-marks Opposition Board
Canadian Intellectual Property Office