LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 174
Date of Decision: 2010-10-14
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Michel Bigras against registration No. TMA411,551 for the trade-mark SIGMA ACCOUNT in the name of BMO Nesbitt Burns Corporation Limited/Corporation BMO Nesbitt Burns Limitée
[1] On December 30, 2008, at the request of Michel Bigras (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) to BMO Nesbitt Burns Corporation Limited/ Corporation BMO Nesbitt Burns Limitée (the Registrant) the registered owner of the trade-mark SIGMA ACCOUNT registration number TMA411,551(the Mark) covering financial services, namely, fee-based brokerage accounts (the Services).
[2] Such notice requires the Registrant to show whether the Mark has been used in Canada in association with the Services 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 use since that date. The relevant period in this case is any time between December 30, 2005 and December 30, 2008 (the Relevant Period).
[3] In response to the notice, the Registrant filed the affidavit of Paul C. Adair together with exhibit A to his affidavit. Both parties filed written representations and no oral hearing was requested.
[4] Section 45 proceedings are considered to be summary and expeditious for clearing the register of non-active trade-marks. The expression “clearing deadwood” has been often used to describe such proceeding [see Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 13 C.P.R. (3d) 289].
[5] A simple allegation of use of the Mark is not sufficient to evidence its use in association with the services within the meaning of s. 4 of the Act. There is no need for evidentiary overkill establishing such use. However any ambiguity in the evidence filed shall be interpreted against the owner of the Mark [See Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980) 53 C.P.R. (4th) 62 and Footlocker Group Canada Inc. v. Steinberg (2005), 38 C.P.R. (4th) 508]. It is with these general principles in mind that I shall now summarize the evidence filed.
[6] Mr. Adair is the Registrant’s Vice-President & Managing Director, Wealth Group Product Development and Portfolio Management and has been with the Registrant since July 1998. In his capacity, amongst other functions, he oversees the team responsible for product development as well as the marketing and support of all Wealth Group products offered by the Registrant. He has access to and he is familiar with the sales, marketing and promotional history of the Wealth Group products and Portfolio Management and has knowledge of the trade channels through which the financial products and services have been provided in Canada.
[7] He states that among the Wealth Group products and services offered by the Registrant, in its normal course of trade, is the provision of investment advice to guide the varied clientele through the financial planning process and assist its clients in an effort to meet financial goals. This is accomplished primarily via the Registrant’s roster of trained investment advisors with a mission to provide support, counsel and advice to help establish client investment strategy and tactics.
[8] A part of this investment advice is branded as SIGMA ACCOUNT, a financial services account providing fee-based brokerage accounts via the Registrant’s own Investment Advisors. Mr. Adair affirms that the Mark is displayed in association with those services which have been offered during the Relevant Period.
[9] A brochure sent to the Registrant’s clients in Canada in its normal course of trade during the Relevant Period is attached to his affidavit to illustrate the use of the Mark in association with the Services. The brochure filed is a one page document in black and white which appears to be a master as the inscription “< IA Name>” appears on top of the inscription “Investment Advisor”. Also the phone number of the Investment Advisor has been identified as “(XXX) XXX-XXXX”. On the brochure appears “BMO Nesbitt Burns Sigma Account ®” written with the same font and size. At the bottom of the document there is the following notice: “® BMO…[is] registered trade-mark of Bank of Montreal, used under license. Nesbitt Burns is a registered trade-mark of BMO Nesbitt Burns Corporation Limited”. In the core of the brochure the trade-mark SIGMA appears followed by the symbol ®. There is also at the bottom of the brochure the following notice: “® SIGMA is a registered trade-mark of BMO Nesbitt Burns Corporation Limited.” I note that there is no notice to the reader on this brochure that SIGMA ACCOUNT is a registered trade-mark owned by the Registrant.
[10] In its written submissions, the Requesting Party is arguing that the evidence filed falls short from showing use of the Mark in association with the Services during the Relevant Period. It argues that the deponent has not provided how and when the brochure was sent to the Registrant’s clients and that there is no document such as invoices, pictures, advertisements bearing a date that has been attached to the affidavit. Finally the services associated to the Mark have not been clearly identified in the document filed by Mr. Adair. According to the Requesting Party what is left is a simple allegation of use of the Mark during the Relevant Period which is insufficient to maintain the registration in accordance with Plough supra.
[11] Use of a trade-mark in association with services is defined under s. 4(2) of the Act in the following terms:
(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.
[12] While Mr. Adair’s affidavit may be brief it does allege some of the essential facts necessary to conclude to the use of a trade-mark in association with the Services during the Relevant Period, namely:
The Services were advertised during the Relevant Period (brochure Exhibit A);
The brochure was distributed in Canada during the Relevant Period, thus demonstrating that the Services were available in Canada during that period;
The distribution of the brochure was done in the normal course of trade.
[13] The only remaining issue is to determine whether the Mark has been used or some other trade-mark(s). On the brochure, as mentioned previously, there is the inscription “BMO Nesbitt Burns Sigma Account®”. Does it constitute use of the Mark?
[14] In a similar situation in Canada (Registrar of Trade-marks) v. Cie. Internationale pour l’informatique CII Honeywell Bull, S.A. (1985), C.P.R. (3d) 523 the Federal Court of Appeal had to decide if the use of CII Honeywell Bull constituted use of the trade-mark BULL. In its decision the court stated:
5. The problem to be resolved is not whether CII deceived the public as to the origin of its goods. It clearly did not. The real and only question is whether, by identifying its goods as it did, CII made use of its trade mark "Bull". That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identify and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used. The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin.
6 Viewing the problem in that light and applying that test, we cannot escape the conclusion that, in using the composite mark "CII Honeywell Bull", CII did not use its mark "Bull".
[15] In Nightingale Interloc v. Prodesign (1984), 2 C.P.R. (3d) 534 the Registrar enunciated the following principle:
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.
[16] The location of the symbol ® in this case, the size and font of the letters and the footnotes at the bottom of the brochure do create a first impression that the trade-mark being used is BMO Nesbitt Burns Sigma Account and not the Mark [see also Fasken Martineau DuMoulin LLP v. AGF Management Ltd. (2003), 29 C.P.R. (4th) 411]. As in CII Honeywell Bull, I do not consider the use of “BMO Nesbitt Burns Sigma Account” to be use of the Mark. Several trade-marks are identified in the footnotes as described above. There is no reference to the Mark. I do not consider the addition of BMO and Nesbitt Burns to the Mark and BMO Nesbitt Burns Sigma Account to be unimportant.
[17] There remains the reference to SIGMA® in the brochure. Would that constitute use of the Mark in association with the Services? By placing the symbol ® immediately after SIGMA in the core of the brochure and by informing the consumer that SIGMA is a registered trade-mark through a footnote, I fail to see how a consumer would think that, as a matter of first impression, that the use of SIGMA constitutes use of the trade-mark SIGMA ACCOUNT.
[18] From the evidence in the record I conclude that the Registrant failed to establish use of the Mark in Canada during the Relevant Period in association with the Services within the meaning of s. 4(2) of the Act. Moreover there are no special circumstances alleged in Mr. Adair’s affidavit that would justify the non-use of the Mark during the Relevant Period.
Disposition
[19] Pursuant to the authority delegated to me under s. 63(3) of the Act, registration No. TMA411,511 will be expunged from the register in compliance with the provisions of s. 45 of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office