TRADUCTION/TRANSLATION
SECTION 45 PROCEEDINGS
TRADE-MARK: OASIS
REGISTRATION NO.: 371,381
On October 12, 2000, at the request of Messrs. Ridout & Maybee, the Registrar issued the notice prescribed by section 45 of the Trade-marks Act to A. Lassonde Inc. (Lassonde), the registered owner at that date. On January 17, 2001, Lassonde Industries Inc. was registered as the new owner.
The OASIS trade-mark is registered in association with the following wares:
“manufactured tobacco products”.
Section 45 of the Trade-marks Act requires that the registered owner of the trade-mark show whether, with respect to each of the wares or each of the services listed in the registration, the trade-mark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date that it was last in use and the reason that there had been no such use since that date. The relevant period, in this case, is at any given time between October 12, 1997, and October 12, 2000.
In response to the notice, the affidavit of Jean Gattuso (and related exhibits) was filed. Each party filed a written argument and was represented at the hearing.
Mr. Gattuso alleges, in his affidavit, that during a part of the relevant period, i.e. from October 12, 1997 to June 9, 1998, Imperial Tobacco Limited (Imperial) was the owner of the mark and during the remainder of the relevant period, i.e. from June 9, 1998, to October 12, 2000, Lassonde was the owner. He states that for the period from June 9, 1998 to October 12, 2000 Lassonde is unable to establish that the trade-mark was in use. He points out that there was no use during this period due to difficulties in finding a suitable market for this type of product as well as suppliers, distributors and licensees. During the period from October 12, 1997 to June 9, 1998, he relies on the affidavit of Ms. Denise Johnson, sworn on July 15, 1997 (a photocopy of which is appended to his affidavit as exhibit JG-3), and he alleges that he has every reason to believe that Imperial used the trade-mark until it was assigned to Lassonde. He states that his representatives, the firm Brouillette Kosie, informed him that they had communicated with the firm Smart & Biggar (Imperial’s agents) in order to obtain evidence of the use by Imperial, but that Imperial declined to provide any evidence.
In my opinion, the evidence furnished does not show any use of the trade-mark during the relevant period. Even considering the Johnson affidavit filed in evidence in an earlier proceeding, the use shown dates back to July 1996, the date on the most recent invoice accompanying the Johnson affidavit. Although Mr. Gattuso alleges that he has every reason to believe that Imperial did not abruptly stop using the trade-mark during the Imperial period and this until the trade-mark was assigned to Lassonde (on June 9, 1998), there is absolutely no evidence to support his allegation. In fact, Ms. Johnson’s affidavit appears to raise a doubt on this point as the most recent invoice accompanying such affidavit is dated July 1996, almost one year before the date the proceeding were commenced i.e. June 4, 1997 (paragraph 2 of the Johnson affidavit). Consequently, it may be that Imperial did not use the trade-mark after July 1996.
As use has not been shown, the issue is whether the absence of use of the trade-mark has been due to special circumstances excusing the non-use. The registrant divides the period of non-use into two segments. The first is from October 12, 1997 to June 9, 1998 (the date the trade-mark was assigned to Lassonde). The second period is from June 9, 1998 to October 12, 2000 (the date of the Section 45 notice).
In summary, the registrant submits that the failure to show use during the first period is due to special circumstances excusing non-use as Lassonde was not the owner during that period and as the predecessor-in-title refused to provide proof of use of the trade-mark during that period. The registrant submits that these circumstances deprived Lassonde from benefiting from the whole three-year period covered by Section 45(1) of the Act.
Concerning the second period, it submits it is a short period of time and the non-use of the mark by Lassonde is due to its difficulty in finding an adequate market as well as suppliers, distributors or licensees.
Regarding “special circumstances” as stated in NTD Apparel Inc. v. Ryan, 27 C.P.R. (4th) 73 supra, at page 81:
[19] A determination of whether there are special circumstances excusing non-use involves consideration of three criteria. The first is the length of time during which the mark has not been in use. The second is whether the reasons for non-use were beyond the control of the registered owner and the third is whether there exists a serious intention to shortly resume use: Registrar of Trade-marks v. Harris Knitting Mills Ltd. (1985), 60 N.R. 380, 4 C.P.R. (3d) 488 (F.C.A.).
[20] In Ridout & Maybee v. Sealy Canada Ltd. (1999), 171 F.T.R. 79, 87 C.P.R. (3d) 307 (T.D.), Lemieux J. considered Harris Knitting Mills. supra, and stated:
It is useful to recall the salient elements of Pratte J.A.’s reasons for judgment in Harris Knitting Mills, (supra). As I see it, Pratte J.A. made these points:
(a) it is impossible to define precisely the circumstances in subsection 44(3) [now 45(3)] which may excuse non-use;
(b) the circumstances of non-use must be special; that is circumstances which do not exist in the majority of cases involving non-use;
(c) the reason for non-use cannot be a voluntary one on the part of the registered owner; non-use must be beyond the control of the owner; the registered owner must show at least serious inconvenience for not continuing the use of the mark;
(d) the length of use and probability of continued non-use is a factor;
(e) special circumstances are an exception to the general rule that [a] trade-mark which is not used should be expunged.
With respect to the first criteria, Lassonde could not provide the date the trade-mark was last in use as it could not obtain evidence from the predecessor-in-title. However, as Lassonde became owner only on June 9, 1998, it only has to excuse the non-use from the date it acquired the trade-mark (see Arrowhead, Spring Water Ltd. v. Arrowhead Water Corp., 47 C.P.R. (3d) 217 at page 219). Consequently, the period of non-use runs from the date of acquisition in June 1998 to the date of the Section 45 notice, amounting to two years and four months. This is a relatively long period of non-use (see NTD Apparel, supra, at page 82).
Regarding Lassonde’s reasons for not using the trade-mark, Mr. Gattuso merely states that it is due to the difficulty in finding an adequate market for the type of wares covered by the registration as well as finding suppliers, distributors or licensees. Mr. Gattuso does not elaborate further on the matter. He does not provide any details concerning the difficulties encountered by Lassonde and he does not provide any evidence of any efforts made by Lassonde in trying to locate suppliers, distributors or licensees. Accordingly, although a new owner may need time to familiarize itself with a new business, further details are needed before an absence of use of over two years can be excused. Here, Lassonde has not persuaded me that the non-use during this period was clearly outside of its control.
Further, the evidence completely fails to show that there exists a serious intention by Lassonde to shortly resume use. In fact, there is not even a bare statement in the Gattuso affidavit to the effect that Lassonde intends to use the trade-mark in the immediate future.
Accordingly, in view of the evidence furnished, I conclude that the registrant has failed to show that the absence of use of the trade-mark during the Lassonde period has been due to special circumstances excusing the non-use.
For these reasons, I conclude that the trade-mark registration ought to be expunged.
Registration No. 371,381 will be expunged in compliance with the provisions of Section 45(5) of the Act.
DATED AT GATINEAU, QUEBEC, THIS 25TH DAY OF FEBRUARY 2004.
D Savard
Senior Hearing Officer