IN THE MATTER OF A SECTION 45 PROCEEDING
Respecting Registration No. 236,635 for the trade-mark "FRANCALDO-FIRENZE"
In the name of Franca Shoe Inc. Chaussure Franca Inc
At the request of Messrs. Phillips & Vineberg, the Registrar issued a s. 45 notice dated November
1, 1991 to Franca Shoe Inc. Chaussure Franca Inc., the current owner of the trade-mark
"FRANCALDO-FIRENZE" (the "trade-mark"). The trade-mark was registered on October 12,
1979 for use in association with ladies' and men's shoes, sandals and boots. In response to the
Registrar's Section 45 notice, the registered owner furnished the sworn affidavit of Aurele Lacroix,
president of Franca Shoe Inc. since its inception in 1965 and Exhibits AL-l through AL-4.
By way of a general comment, it is noted that in the affidavit (e.g. para 10) and in some of the
exhibits (e.g. AL-3(a», the name of the registrant appears as "Chaussure Franca Shoe Inc.". The
registrant has given no explanation for this discrepancy, but I am prepared to infer without evidence
to the contrary that this is merely a bilingual form of the registrant's name and that the evidence
demonstrates use of the trade-mark by the registrant.
In the affidavit, Mr. Lacroix describes the business operations of Franca Shoe Inc. and its use of the
registered trade-mark. The affiant states that the trade-mark has been in use in the normal course
of trade in association with the wares mentioned in the registration, i.e. ladies' and men's shoes,
sandals, and boots since 1985, generating yearly sales of merchandise in association with the
"FRANCALDO-FIRENZE" trade-mark varying between $500,000 and $700,000 a year.
The requesting party argues that the registered owner has not shown use in Canada at the relevant
time in association with the items of wares listed in the registration.. The arguments made in the
requesting party's written submissions shall be given consideration below.
I. What is the
relevant time at which the registrant must show use of the trade-mark in
association with the wares mentioned in the registration?
As a result of recent amendments to Section 45 of the Trade Marks Act (January 1, 1994), the
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registrant is required to show that the trade-mark was in use in Canada "at any time during the two-
year period immediately preceding the date of the notice and, if not, the date when it was last so in
use and the reason for the absence of such use since that date".
The section 45 notice was issued by the Registrar on November 1 1991, hence the relevant time as
determined by the legislation is between November 1, 1989 and the date the notice was issued.
Thus, most of the evidence contained in Exhibit AL-4 pertains to the relevant period. In paragraph
8 of the affidavit, Mr. Lacroix states that the evidence contained in Exhibit AL-3 represents a
sample of promotional material advertising wares labelled with the registered trade-mark during the
last three years. Some of the material, then, might not fall within the relevant period. At least two
items in Exhibit AL-3, however, can be shown to date back to the two-year period. The date
printed at the bottom of the back page of the extract submitted from the "Canadian Footwear
Journal" clearly indicates that the advertisement dates from January of 1990. As to the
advertisement contained in Exhibit AL-3(b), the affiant claims that it originates from the December
18, 1990 edition of "Le Reveil"; I accept the time of publication to be as claimed.
Il. Has the
registrant established use of the trade-mark in
association with each of the wares
mentioned in the registration within the two-year
period preceding the date of notice?
The purpose of a s. 45 inquiry is to remove trade-marks that have become "deadwood" from the
Registry. As J. Mahoney pointed out in Union Electric Supply Co. Ltd. y. Registrar of Trade Marks
(1982) 63 C.P.R. (2d) 56 (F.C.T.D.) at p. 57 of his dicta:
"There is absolutely no justification in putting a
trademark owner to the expense and trouble
of showing his use of the trade mark by evidentiary overkill when it can be
readily proved
in a simple straightforward fashion."
The Registrar's role is to determine whether the registered owner has submitted enough evidence to
conclude that he or she has "shown" use or, at least, has sufficiently related the facts from which
such use can be inferred.
The evidence submitted by the registrant is not without deficiencies. The requesting party's
allegation is correct that it is impossible to determine conclusively from the invoices which items
of footwear listed bore the trade-mark, because the invoices contain descriptions such as "FAREX",
"ALICE " , and "FIGARO" but do not indicate whether the wares sold also bore the trade-mark
"FRANCALDO-FIRENZE". However, the sample footwear and
the photographs of wares provided
by the registrant show that the registrant's footwear bears the trade-mark and at the same time is associated with other trade-marks. The photographs show the other trade-marks as being "FRANCA" , "F AREX", "ALICE", "MABEL" and "FIGARO". The sample footwear shows "PANAMA", "PASTA" and other marks. The invoices submitted as Exhibit AL-4 contain specific references to the trade-marks "F AREX",
"ALICE", "FIGARO", "PANAMA" and "PASTA".
Having considered all the evidence, it appears that there are various lines or styles, if you will, of
"FRANCALDO-FIRENZE" footwear, and it is the names of the lines or styles that appear on the
invoices. There is nothing in the Trade Marks Act to prohibit the use of two or more trade-marks
at the same time: A. W. Allen Ltd. y. Warner-Lambert Canada,(1985) 6 C.P.R. (3d) 270 (F.C.,
T.D.). Consequently, I conclude that the invoices confirm that sales of the wares associated with
the trade-mark were made during the relevant period.
On balance, I believe that enough relevant evidence can be gleaned from the registrant's statements
to maintain registration. The affidavit contains a clear statement to the effect that the registrant has
used the trade-mark in association with each item of wares specified in the registration and the
registrant has furnished examples of such use. The registrant has provided approximate annual
sales figures regarding the wares. It has provided shoes and sandals stamped with the trade-mark,
portions of shoe boxes bearing the trade-mark and a guarantee also bearing the mark
"FRANCALDO-FIRENZE" which it is stated is attached to "boots". The registrant has also
submitted invoices. In my opinion, the items of evidence, when taken together, create a chain of
proof that makes it possible to conclude that the trade-mark is not deadwood in relation to any of
the wares, and that it has been used in association with sales of men's and women's shoes boots and
,
sandals within the two years preceding the issuance of the notice.
Disposition:
Registration No. 236,635 will be maintained in compliance with the provisions of Section 45(5) of
the Trade Marks Act.