TRADUCTION/TRANSLATION

SECTION 45 PROCEEDING

TRADE-MARK: AU PAIN DORÉ

Registration No.: TMA521541______

On September 28, 2004, at the request of Stikeman Elliott, the Registrar sent a notice prescribed by section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) to Boulangerie Au Pain Doré Ltée., owner of the trade-mark contemplated by the above-mentioned registration.

The trade-mark AU PAIN DORÉ (the Mark) is registered for use in association with “Retail and wholesale bakery services and restaurant services” (the Services).

Section 45 of the Act requires the registered owner of a trade-mark to show, with respect to each of the wares or services specified in the registration, whether 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 when it was last so in use and the reason for the absence of such use since that date. The relevant period in this case is from September 28, 2001 to September 28, 2004.

In response to the notice, Boulangerie Au Pain Doré Ltée filed the statutory declaration of Julie Étienne with exhibits JE-1 to JE-3 inclusively. Both parties filed written representations. No hearing was requested.

In her declaration, Ms. Étienne identifies herself as the Director of corporate services and marketing for the Boulangerie au Pain Doré Ltée (the owner) and she has been in the owner’s employ since 1991. She alleges that the owner has been using the Mark since August 1967 in the normal course of trade in association with the Services. To support the allegation of use of the Mark, the affiant filed five photographs, taken during the relevant period, of three different businesses all located in Montréal and operated by the owner. In three of these photographs we can clearly see exterior signs bearing the Mark. The other two photographs were taken inside one of these businesses. She alleges that these businesses were still in operation when she signed her affidavit. She also filed samples of the packaging and labelling on which she claimed the Mark appears. These exhibits were allegedly used to package the wares sold by the owner. Finally, she filed several invoices issued by the owner during the relevant period to illustrate the use of the Mark in association with wholesale bakery products.

The case law tells us that there is no need to show use of the Mark by evidentiary overkill and that the purpose of section 45 proceedings is to clean up the "dead wood" on the register. [See Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980) 53 C.P.R. (4th) 62]

The applicant’s principal arguments in submitting that the owner did not satisfy its burden of proof, however minimal, are that the copies filed as exhibits are illegible and that the banner appearing in the photographs does not have the symbol “®” or “™”. Without one of these symbols, the average consumer could believe that the banners referred to the name of the business rather than to a trade-mark.

With respect to the invoices filed, it alleges that the case law has established that if a trade-mark is also the name of a business, the presence of the trade-mark appearing on the letterhead of an invoice will be considered to be the corporate name and cannot be used to establish the use of the trade-mark in association with the wares described on the invoices.

I take the liberty of saying from the outset that I cannot agree with the applicant’s arguments for the reasons more fully elaborated below.

First of all, the evidence filed in the record consists of original photographs. These photographs are clear and precise. The evidence filed in the record may be consulted at all times during the regular business hours of the Registrar’s office because it is public record. The first three photographs illustrate three exterior facades of businesses operated by the owner. The Mark is clearly visible on a banner. We also see various bakery products offered for sale to the public. There are two photographs taken inside one of these establishments where we clearly see tables and chairs for the owner’s clients, a counter offering food and beverages, which can be consumed on site, and finally a price list of the wares. These photographs show the use of the Mark in association with retail bakery services. As for the lack of the symbols “®” or “™” on the banners, the Act does not set out any obligation in regard to the presence of either of these symbols near the registered Mark. As for the argument regarding the consumer’s potential confusion between the owner’s corporate name and its Mark, without deciding the merits of this argument, it is enough to note that they are different.

The question remains as to whether the invoices filed establish the use of the Mark in association with wholesale bakery services. It is true that the owner’s corporate name appears on the upper left-hand corner of each of these invoices. Such a representation with the business address located directly under this registration clearly indicates that it is the owner’s corporate name and may not be considered as use of the Mark in association with services within the meaning of section 4 of the Act.

We do note, however, the presence of the Mark in two different areas within a graphic appearing on the uppermost left-hand corner of the invoice and superimposed in the centre of the invoice. These invoices illustrate the owner’s wholesale bakery services. They are evidence of the use of the Mark in association with such services.

I find that the owner met his burden of establishing the use of the Mark during the relevant period in association with the Services.

Registration number LMC521541 will be maintained on the register in accordance with subsection 45(5) of the Trade-marks Act.

SIGNED AT BOUCHERVILLE, QUEBEC, NOVEMBER 6, 2007.

Jean Carrière,

Member of the Trade-marks Opposition Board