IN THE MATTER OF A SECTION 45 PROCEEDING
Respecting
Registration No. UCA22880 for the trade-mark "ASTATIC"
In the name of The Astatic Corporation
At the request of Messrs. Seaby, Proulx & Palmer, the Registrar forwarded a Section 45
notice to the registered owner of the trade-mark "ASTATIC" (hereafter
"the trade-mark")
on February 21, 1989. The trade-mark is registered for use in association with
the
following wares:
"(1) microphones, phonograph pickups, phonograph pickup cartridges, microphone
stands, recording heads, electrical and radio connectors, hearing aid equipment,
vibration
pickups and recorders. (2)
Phonograph needles."
In a letter from Messrs. McMillan Binch dated May 10, 1989, the Registrar was informed
that the trade-mark had been assigned from "The Astatic Corporation"
(hereafter
"Astatic")
to Conneaut
Technologies Inc. (hereafter "Conneaut"). After having been
granted two separate delays for filing evidence, Conneaut submitted on September 15,
1989 the affidavit and related exhibits of Mr. Scott Humphrey, Executive Vice-President
of Conneaut. On the same date, it submitted a copy of
the "Assets Purchase Agreement"
purporting to transfer the
trade-mark from Astatic to Conneaut and an application to
cancel "Canadian Astatic
Limited" as the "registered user" of the trade-mark.
By letter dated January 31, 1991, the
Assignment Section of our Office informed Messrs.
McMillan Binch. agents for Conneaut, that the agreement submitted on
September 15, 1989
had not been ratified and that the
Office required a document wherein all the rights
in the trade-mark had been transferred to the new owner. Furthermore, it was pointed
out that the document was not
dated.
In a letter dated May 14, 1991, the agents for Conneaut, Messrs. McMillan Binch, stated
that the said "Assets Purchase Agreement" was filed with the
Trade-marks Office on
September 15, 1989 and that it was not until February,
1991 that they received
indication that the assignment was deficient, namely it was not ratified or
dated. In
the same letter, Messrs. McMillan Binch indicated that they would
either submit a nunc
pro tunc assignment correcting the deficiencies or argue that
the assignment was
improperly rejected.
Since the agents
for Conneaut had done neither, the
Registrar,
in a letter
dated January 24, 1994 advised Messrs. McMillan Binch that it now had one
month to deal with the deficiency regarding the assignment document and that if
the
matter was not dealt with, he would proceed to render his decision
regarding the Section
45 proceedings based on what is of record. The one-month period has since elapsed
without any response from Messrs. McMillan Binch. The Section 45 decision will be based
on what is of record.
1
Both the requesting party and
the registrant filed written submissions with the
Registrar. An oral hearing was not
conducted in the matter of the present proceeding.
In Section 45 proceedings,
where there has been a change in the ownership of the trade-
mark, the new owner
must establish
the date of said change by submitting sufficient
evidence to allow the Registrar to conclude that the evidence in the Section 45
proceedings
is furnished by the registered owner, a licensee (as defined by Section 50
of the Act), or a person entitled to be recorded as
owner: see in this regard Marcus
v. Quaker Oats Co. of Canada, 20 C.P.R.(3d) 46 at pp. 51-52. In the present instance,
Conneaut
Technologies Inc. has not filed documents satisfactory to the Registrar
,
Consequently, the evidence of use in this case must be furnished by the registered owner,
of record, i.e. The Astatic Corporation.
The evidence of use furnished is by Mr. Humphrey, an officer of Conneaut Technologies
Inc. and purports to show use by
Conneaut Technologies Inc. As there is no satisfactory
evidence that at the date of the notice Conneaut was the owner in fact
(entitled to be
recorded as owner) of the
trade-mark, I find the evidence of use by Conneaut to be
irrelevant in these proceedings. Furthermore, any reference in the affidavit to
use
by "The Astatic Corporation" is considered "hearsay" as it
has not been shown that Mr.
Humphrey has
personal knowledge of the affairs of such company.
In view of the above, I conclude that the registrant, The Astatic Corporation, has
failed to furnish evidence in response to the Section 45 notice and
consequently, its
registration
ought to be expunged.
Registration No. UCA 22880 will be expunged in compliance with the provisions
of Section
45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 30TH DAY OF August 1994.
D. Savard
Senior Hearing Officer