SECTION 45 PROCEEDINGS
TRADE-MARK: M & Design
REGISTRATION NO.: TMA186,960
On August 4, 2005, at the request of Dimock Stratton LLP, the Registrar issued the notice prescribed by section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) to Myers Chev-Olds-Cadillac Inc., the registered owner of registration No. TMA186,960 for the trade-mark M & Design.
The trade-mark M & Design is shown below:
M & Design is registered in association with:
Wares: (1) Motor vehicles and parts for motor vehicles; and accessories for motor vehicles namely: radio antennas, ash trays, car blankets, infant safety seats, luggage carriers, ski carriers, cartridge tape players and cartridges therefor, car clocks, car compasses, litter containers, fire extinguishers, automobile lamps and lanterns, floor mats, automobile and truck mirrors, touch-up paint, vehicle radios, vehicle thermometers, and
Services: (1) The servicing of automotive vehicles, and body and mechanical repairing of automotive vehicles. (2) Leasing of automotive vehicles.
Section 45 requires the registered owner of a trade-mark to indicate whether the mark has been used in Canada in association with each of the wares and services listed in the registration at any time during the three years preceding the date of the notice and, if not, the date on which it was last used and the reason why it has not been used since that date. If such use is not shown, then the matter to be decided is whether the registrant’s failure to use its mark was justified by special circumstances.
The relevant period in this case is any time between August 4, 2002 and August 4, 2005. What qualifies as use of a trade-mark is defined in s. 4 of the Act, which is reproduced below:
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.
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
In response to the s. 45 notice, the registered owner filed the affidavit of its Vice-President, Frederick J. Burrows. Each party filed a written argument.
Mr. Burrows has provided the following exhibits that show the M & Design mark during the material three-year period:
- A - 2004/2005 Ottawa/Gatineau telephone directory listings
- B – copies of pages from the registrant’s website; Mr. Burrows attests that the registrant “caused the website to be established using the subject trade-mark in relation to the services covered by the subject registration approximately ten years ago and it has continued in operation since that time”
- C – a logo that was attached to 3,242 new or used vehicles and 60 leased vehicles in 2005 prior to the transfer in the property or possession of such vehicles
- D – a Vehicle Purchase Agreement dated September 9, 2003 and an Optional Buy-Back Agreement relating to a lease dated January 1, 2005
- E – photograph of the registrant’s parts department, “in the condition it has been for many years, showing the subject trade-mark clearly visible in the parts department area so that the trade-mark is associated with the parts for motor vehicles and accessories for motor vehicles obtained therefrom, thus providing notice of the association of the trade-mark with such wares, namely parts for motor vehicles and accessories for motor vehicles”
The primary submission made by the requesting party is that the mark shown in the evidence is not the registered mark. In particular, the requesting party argues that the mark shown below is not the registered mark because it “clearly contains the word MYERS”:
In support of its position, the requesting party relies upon Best Canadian Motor Inns Ltd. v. Best Western International Inc. (2004), 30 C.P.R. (4th) 481 (F.C.T.D.), affirming (2002), 23 C.P.R. (4th) 110 (T.M.O.B.). Frankly, I do not see how that case is particularly pertinent to the case at hand. In my view, the more applicable case is Nightingale Interloc Ltd. v. Prodesign Ltd., 2 C.P.R. (3d) 535 wherein two principles were set out, starting at page 538. The first of these, which is applicable to the present case, reads as follows:
Principle 1
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 material would be perceived as purely descriptive matter or as a separate trade-mark or trade name . . .
Applying this principle to the “mark” that comprises the M & Design trade-mark followed by the word MYERS, it is clear that the two portions do not overlap and, given that the key word in the registrant’s name is Myers, I conclude that MYERS would be perceived as either a separate mark or trade-name. I note that in some occurrences, the words CADILLAC CHEVROLET, appear below the word MYERS, albeit in smaller lettering than that employed for MYERS, and that an address appears below that. This further reinforces the perception of Myers as a trade-name.
I will also add that the registered mark does in some circumstances appear on its own, i.e. without MYERS below, in particular on the registrant’s website and on its Vehicle Purchase Agreement.
The requesting party has not made any submissions concerning the issue of whether the registrant has shown use in association with each of the registered wares and services. [See John Labatt Ltd. v. Rainier Brewing Co., 80 C.P.R. (2d) 228.] In this regard, I note that the test that has to be met by a registrant under s. 45 is not a heavy one. All the registrant has to do is establish a prima facie case of use. [See Cinnabon, Inc. v. Yoo-Hoo of Florida Corp., 82 C.P.R. (3d) 513.] I find that the registrant has done so with regard to each of its registered services, as well as with motor vehicles and parts for motor vehicles. However, Mr. Burrows does not claim that the registrant has used the mark in association with each of the accessories for motor vehicles that is listed in the registration. He has provided one exhibit that lists some of the registered accessories, namely the Vehicle Purchase Agreement in Exhibit D refers to an ashtray and vehicle radio. However, there is no mention of any of the other accessories, including no reason giving for the lack of evidence concerning same, so the remaining accessories will be deleted from the registration.
For the foregoing reasons, in accordance with the provisions of s. 45(5) of the Act, the statement of wares and services in registration No. TMA186,960 will be restricted to read as follows:
Wares: (1) Motor vehicles and parts for motor vehicles; and accessories for motor vehicles namely: ash trays, vehicle radios.
Services: (1) The servicing of automotive vehicles, and body and mechanical repairing of automotive vehicles. (2) Leasing of automotive vehicles.
DATED AT TORONTO, ONTARIO THIS 5th DAY OF OCTOBER 2007.
Jill W. Bradbury
Member
Trade-marks Opposition Board