Trademark Opposition Board Decisions

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                                       Consommation           Consumer and

                                       et Corporations Canada          Corporate Affairs Canada

Ottawa I Hull. Canada
K1A OCg

MAR 2 5 1985

voue reference Your IIIe

WEHD

No/re reference Our IIIe

386417

Gentlemen:

     RE:      SECTION 44 PROCEEDINGS
Registration NO.: 229.948
Trade Mark:  ORIENT EXPRESS

At the request of Ogilvy, Renault on behalf of Venice Simplon-Orient-Express
Inc., the Registrar issued a Section 44 notice on September 30, 1983 to Orient
Express Trading Company Ltd., the registered owner of the above referenced
trade mark registration.

The trade mark ORIENT EXPRESS was registered on August 22, 1978 in association
with:

"clothing, namely men's and ladies' jackets."

In response to said notice the registrant filed the affidavit of Robert M. Lee,
its President.

Written submissions were filed by both parties.

Exhibit A to the Lee affidavit consists of samples of advertisements stated to
have appeared in the New York Times. The trade mark ORIENT EXPRESS does not
appear anywhere in the advertisements that relate to jackets. The one
advertisement forming part of Exhibit A in which the trade mark ORIENT EXPRESS
appears, refers to a variety of wares, but noticeably missing from such wares
are those of the subject registration, namely "men's and ladies' jackets".

Since, as described above these advertisements bear no relation to the subject
registration, Exhibit B which contains documents showing Canadian circulation
of the New York Times, is irrelevant.

Exhibit E, is a certified public accountant's letter purporting to validate an
attached sheet of mail order sa1es figures for jackets sold in Canada. Mr. Lee
in his description of this Exhibit, describes the jackets sold as “ORIENT
EXPRESS jackets". Nowhere in the Exhibit itself is it indicated that the
jackets so sold, actually bore the trade mark ORIENT EXPRESS. In view of the
fact that the registrant's corporate name contains the words “Orient Express"
as the first two words, I find Mr. Lee's reference to “ORIENT EXPRESS jackets"
decidedly ambiguous. In any event the sales documented in this Exhibit refer
to transactions which occurred in 1978 and 1980. No figures are available for
the years 1981, 1982 and 1983.

Exhibit F is of little relevance in this matter, since it consists of invoices

      of sales which took place in the United States.                              ~

Accordingly, there are very few facts available for proper consideration in
coming to a conclusion of use, and regretfully what is available for
consideration is of little assistance.

••• /2

Canada

                                Consommation                 Consumer and

                                et Corporations Canada    Corporate Affairs Canada

Ottawa I Hull. Canada
KlA OC9

Votre re/erence Your life

NoIre relerence Our lile

- 2 -

Firstly, there is Mr. Lee's allegation that the mail orders from Canada
(presumably occurring as a result of the advertisements for jackets, which
advertisements as noted previously bore no relation to the subject trade mark)
were filled with men's and ladies' jackets bearing the trade mark ORIENT
EXPRESS. This allegation remains a bare and unsubstantiated assertion of use
in face of the fact that the purported sales figures in Exhibit E are of no
relevance to use of the trade mark ORIENT EXPRESS at the material time.

Secondly, sample labels and hang tags bearing the trade mark ORIENT EXPRESS are
attached as Exhibit D to the Lee affidavit. These labels and hang tags are
nowhere described as having been on jackets sent to Canada. I am therefore in
agreement with the requesting party's submission that in view of the detail
provided in some of the exhibits, the omission to identify these labels as
having been on the goods sold in Canada in a glaring one which limits the
consideration which can be given to this Exhibit as a showing of use of the
subject trade mark.

Exhibit C is a letter from a  person in Montreal dated December 12, 1983,
stating that jackets bearing the trade mark ORIENT EXPRESS were purchased by
him and delivered to him in Canada during 1982 and 1983. In referring to this
Exhibit, Mr. Lee states in hit affidavit that he is personally acquainted with
the purchaser, and that he, Mr. Lee delivered these goods personally to the
purchaser in Canada. The registrant in its submissions would have the
Registrar give Exhibit C as much evidentiary value as an invoice showing the
delivery of goods to Canada. However in the absence of some kind of
representative samples of invoices, even if I do look at this letter as one
invoice it is insufficient to show use in the normal course of trade. (The
Noshery Ltd. v. The Penthouse Motor Inc. Ltd. (1969). 61 C.P.R. 207 (Ont.
H.C.); Molson Co',. Ltd.v. Halter (1977), 28 C.P.R. (2d) 158 (F.C.T.D.). The
letter does not describe how the goods were purchased whether by mail order or
purchased in the United States. Since the affiant has adduced evidence of
sales in the U.S. to Canadian customers, the lack of information regarding the
context of the sales of the jackets referred to in exhibit C, renders a
conclusion on the balance of probabilities that use was in Canada impossible.
Again, the written submissions of the registrant do not propose an
interpretation of the ambiguities is the Lee affidavit that could assist me in
coming to a conclusion of use; rather, the submissions tend to perpetuate the
ambiguities.

In summary, I am unable to conclude, from the evidence filed, that on the
balance of probabilities the subject trade mark is in use in Canada in the
normal course of the registrant's trade and therefore its registration ought to
be expunged from the register.

Accordingly, registration No. 229,948 will be expunged unless an appeal from
this decision is initiated under the provisions of Section 56 of the Trade

       Marks Act within the prescribed time.                                 

Yours truly,
Original signed by
J.PAUL D'AOUST

J.P.D'Aoust

Senior Hearing Officer

for REGISTRAR of TRADE MARKS

HS:sl-h16

c.c. Messrs. Ogilvy, Renault

Canada