SECTION 45 PROCEEDINGS
TRADE-MARK: CANADIAN BOND RATING SERVICE
REGISTRATION NO. TMA247,812
On February 28, 2006, at the request of Ridout & Maybee LLP, the Registrar issued the notice prescribed by s. 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) to The McGraw-Hill Companies, Inc., the registered owner of registration No. TMA247,812 for the trade-mark CANADIAN BOND RATING SERVICE (the “Mark”). The Mark is registered in association with “rating of debt securities issued by corporations, provincial governments and municipalities.”
Section 45 requires the registered owner of a trade-mark to indicate whether the mark has been used in Canada in association with each of the wares and services listed in the registration at any time during the three years preceding the date of the notice, in this case between February 28, 2003 and February 28, 2006. If the mark has not been used during that time period then the registered owner is required to indicate the date on which it was last used and the reason why it has not been used since that date.
What qualifies as use of a trade-mark in association with services is defined in s. 4(2) of the Act, which is reproduced below:
4. (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.
In response to the s. 45 notice, the registered owner filed the affidavit of Thomas Connell. Only the registered owner filed a written argument. An oral hearing was not requested.
Mr. Connell is the Managing Director of Standard & Poor’s Rating Services, a division of the McGraw-Hill Companies (Canada) Corporation. Mr. Connell sets out the following chain of title with respect to the Mark:
- On November 16, 2002, C.B.R.S. Ltd., the original registrant, amalgamated with The McGraw Hill Companies (Canada) Corp., a wholly owned subsidiary of The McGraw-Hill Companies, Inc.
- During April 2001, The McGraw-Hill Companies (Canada) Corp. transferred the Mark to its parent, The McGraw-Hill Companies, Inc.
The foregoing transfers have all been recorded against the present registration, which makes it clear that there is a typographical error in Mr. Connell’s affidavit, in that the amalgamation occurred on November 16, 2000, not 2002.
Mr. Connell attests:
Since May 1, 2001, and more particularly during the three (3) years immediately preceding February 28, 2006, the Standard & Poor’s Rating Service has been distributing throughout Canada a disk bearing the registered trade-mark CANADIAN BOND RATING SERVICE relating to the services of the rating of debt securities issued by corporations, provincial governments and municipalities.
One of said disks is attached as Exhibit 1.
Mr. Connell identifies four parties in Canada who received the said disk during 2004 and 2005. He also provides a letter of the type that was distributed along with each disk.
Although the disk provided bears a 2001 copyright notice, given Mr. Connell’s statement that this disk was in fact distributed in 2004/2005, I accept that this was the case. Moreover, the letter provided indicates that this disk is meant to provide clients with articles that appeared on the original registrant’s website when it ceased operation in 2001. These articles concern the rating of corporations, etc.
The disk displays CANADIAN BOND RATINGS SERVICE and refers to Standard & Poor’s, a division of The McGraw–Hill Companies, while the accompanying letter sets out the name more fully as Standard & Poor’s, a Division of The McGraw-Hill Companies, Inc. The appearance of an “s” on the word RATING on the disk is of no consequence as the trade-mark being used is not substantially different from the registered mark and the deviation is not such as to deceive or injure the public in any way. [See Principle 2 in Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 (T.M.O.B.) at 538-9.]
Given that the purpose of s. 45 is to remove deadwood from the Register, and noting that the requesting party has not submitted that there are any deficiencies in the registrant’s evidence, I have concluded that the registrant has satisfied its onus.
Registration TMA247,812 will therefore be maintained, in accordance with the provisions of s. 45(5) of the Act.
DATED AT TORONTO, ONTARIO THIS 1st DAY OF NOVEMBER 2007.
Jill W. Bradbury
Member
Trade-marks Opposition Board