SECTION 45 PROCEEDINGS
TRADE-MARK: WORLD’S FARE
REGISTRATION NO.: TMA452,067
On September 5, 2000, at the request of Aramark Canada Ltd., the Registrar forwarded a Section 45 notice to Worldwide Specialty Foods Ltd., the registered owner of the above-referenced trade-mark registration.
The trade-mark WORLD’S FARE is registered for use in association with the following wares: “specialty dried mushrooms; bread mixes; cookie mixes; snack products namely nut mixes, candy mixes, dried fruit products and mixes, corn chips, cookies, cakes, candies, nuts, potato chips, tortilla chips, chocolate; flavour oils; flavour vinegars; jams; preserves; canned vegetables; canned fruits; specialty dried peppers; mayonnaise based spreads; cured meats; mustards; nuts; dried tomatoes; cheeses”.
Section 45 of the Trade-marks Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and/or services listed on the registration 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. Thus, in this case, the relevant period in which use must be shown is between September 5, 1997 and September 5, 2000.
In response to the notice, the affidavit of Anthony James was furnished. Each party filed a written argument. An oral hearing has not been requested in this case.
The requesting party’s main arguments are as follows:
The documents identified as exhibits to Mr. James’ affidavit are incorrectly described and
identified. Therefore, the documents should be struck out or given little weight. Further, the invoices appear to be packing slips, not invoices “per se”, due both to a lack of a listed price and a recipient’s signature.
In the alternative, the requesting party argues that if use has been shown with respect to any ware, such use does not meet the requirements of Section 4(1) of the Act and further it is merely “token and not in the normal course of trade”.
Concerning the documents furnished, I agree with the requesting party that they are incorrectly described and identified: what is referred to as Exhibit A in Mr. James’ affidavit is actually Exhibit B, and vice-versa, and the invoices described by Mr. James as Exhibit C are marked as Exhibit A. However, as the registrant notes, no prejudice has been caused by this error. When reading the affidavit, it is clear from the wording exactly which exhibit Mr. James is referring to, and all the exhibits are properly notarized. I therefore find that these are mere technical errors which should not be influential or determinative: Wallace v. Geoservices (1988) 19 C.P.R. (3d) 561 at 562-63.
As for the quality of the exhibits, it is true that the photographs of packaged wares attached as Exhibit A (but referred to as Exhibit B in the affidavit) are photocopies, not originals, and are consequently quite dark and of poor quality overall. But despite this, I am prepared to take the sworn statement at paragraph 4 of Mr. James’ affidavit at face value. In other words, despite it being difficult to ascertain the contents of certain packages from the photocopies, I accept that they are “true and accurate representations of the packaging of the food items”, and that they contain what their labels indicate (where legible). Regarding the labels reproduced as Exhibit B (but referred to as Exhibit A in the affidavit), while the requesting party may feel they are not of “professional quality”, this is not relevant to the issue of whether use of the trade-mark in association with the registered wares has been shown. Further, compliance with statutes other than the Trade-marks Act is not a relevant consideration in a Section 45 proceeding: see the decision in Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr, 21 C.P.R. (3d) 483 at 486-487). Consequently, I accept Mr. James’ sworn statement at paragraph 4 of his affidavit that these are actual labels used by the registrant. As noted in the registered owner’s written arguments, the fact that the registrant operates in the wholesale market (as opposed to retail) may explain the quality of the labels. In addition, when the affidavit is given a fair reading, I accept that the labels represent the manner the trade-mark appeared in association with the packaged food items during the relevant period.
Concerning the documents submitted as Exhibit C (but erroneously marked as Exhibit A) I accept that they consist of invoices. In this regard, I note that all the documents bear the word “INVOICE” and show a shipping date.
I turn now to the question of whether the registrant has shown use of its trade-mark in Canada in association with each of the wares and/or services listed on the registration at any time within the three-year period immediately preceding the date of the notice and in the manner required by Section 4(1). Having considered the evidence, I find that the registrant has shown its use with respect to some, but not all, of the wares listed on the registration.
Mr. James has not clearly and unequivocally asserted use of the trade-mark with each item of wares covered by the registration, thus leaving the use to be inferred from statements in the affidavit and the combined strength of the exhibits.
In the affidavit references are made to specific items which Mr. James indicates are repackaged or are packaged for the registrant and sold under the registrant’s private label bearing the trade-mark “WORLD’S FARE”. The items referred to therein are “dried specialty mushrooms, nuts, flours, cheeses, flavour oils and vinegars, specialty olive oils, and canned fruits and vegetables”.
Exhibit A shows labels bearing the trade-mark on repackaged food items and the products displayed are “dried mushroom, dried peppers, cranberry nut mix, figs, dried pineapple chunks, shredded parmesan, mix nuts, mix nuts and peanuts, sundried tomatoes, pistachio nuts, dried apricots”.
Exhibit B consists of labels for the following products “mix dry mushrooms, candy mix, tortilla chips, mixed nuts and peanuts, whole wheat flour, corn chips, candied ginger, nut mix, dried cranberries, whole blanched almonds, pomace olive oil, figs, apricots, macadamia nuts whole, dried ancho peppers, sundried tomato halves, tamaki rice, couscous, chocolate covered almonds, shredded cheddar cheese, wild rice, Monteray Jack cheese, wild blueberries, virgin olive oil, pure olive oil”.
As for the invoices they show sales of a variety of food products during the relevant period. However, not all food items thereon are associated with the trade-mark WORLD’S FARE and Mr. James failed to specify which particular product not described by a trade-mark or trade-name was sold in association with the trade-mark WORLD’S FARE. Notwithstanding this, giving the affidavit a fair reading and considering the evidence as a whole, I am prepared to infer from the combination of the evidence namely the labels in use, the photocopies of photographs showing how the labels are attached to the goods, and the assertions in paragraphs 3, 4, 7 and 8 of the James affidavit that the trade-mark was in use in Canada in association with the wares listed in the affidavit, the wares referred to on the labels and the items on the invoices clearly associated with the trade-mark WORLD’S FARE. Consequently, I accept that use has been shown in association with the following registered wares: specialty dried mushrooms, snack products namely nut mixes, dried fruit products and mixes, corn chips, candies, nuts, tortilla chips, chocolate; flavour oils and vinegars; canned vegetables, canned fruit, specialty dried peppers; nuts; dried tomatoes; cheeses.
Eventhough only labels were produced for some of the wares and other wares were merely listed in the affidavit, I conclude that it can be inferred from the evidence as a whole that sales of these wares were probably made during the relevant period. In this regard, Mr. James has stated that the invoices submitted are merely “a small sampling” (as deposed at paragraph 5 of Mr. James’ affidavit) and not evidence of all sales made by the registrant during the relevant period. It should be recalled that “evidentiary overkill” is not required in a Section 45 proceeding: Union Electric Supply Co. Ltd. v. Registrar of Trade Marks, supra at 57.
Concerning the requesting party’s alternate submission, that if any use has been shown it is merely token, i.e., not in the normal course of trade, I find that this is not the case. The requesting party attempted to establish what is the normal course of trade for a wholesaler at page 10 of its written argument: “The normal course of trade for a wholesaler would include frequent sales in high volumes” [emphasis added]. However, this submission is contrary to the principle that, when attempting to show use in a section 45 proceeding, “evidence of a single sale, whether wholesale or retail, in the normal course of trade may well suffice so long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived to protect the registration of the trade mark” [emphasis added]: Philip Morris Inc. v. Imperial Tobacco Ltd. (1987), 13 C.P.R. (3d) 289 at 293. McNair J. In Philip Morris went on to conclude that “evidence of a single sale is sufficient to establish the use of a trademark in the normal course of trade depending upon the circumstances surrounding the transaction...”: Philip Morris, supra at 297. Thus, the frequency of sales of wares bearing the trade-mark by the registrant is not a relevant consideration. As the requesting party itself notes, the invoices submitted by the registrant as exhibits demonstrate sales to various institutions and restaurants, and there is no reason to doubt the legitimacy of that evidence. The registrant has gone well beyond showing a single sale. As the registrant deposed at paragraph 2 of its affidavit, its business is wholesaling food to food stores, restaurants, caterers and other food wholesales. Sales to such businesses were demonstrated by the invoices; therefore, the transactions appear to accord with the registrant’s usual, or “normal”, course of trade. Furthermore, there is no reason to doubt the legitimacy of the sales themselves. The invoices show sales before and during the relevant period and well before the notice issued. Thus, I conclude that the use demonstrated within the relevant time period was within the registrant’s normal course of trade.
However, I agree that use of the trade-mark during the relevant period has not been demonstrated with respect to all registered wares. In my view, the evidence is insufficient to permit me to conclude that the trade-mark was being used in Canada during the relevant period in association with the following registered wares: “bread mixes; cookie mixes; cookies, cakes, potato chips, jams; preserves; mayonnaise based spreads; cured meats; mustards”. In this regard, none of the labels identify these wares and there is no clear statement in the affidavit concerning these wares. With respect to the generic descriptions of some of these wares on the invoices, as none of these items on the invoices are associated with the trade-mark and considering that the registrant also sells products bearing the trade-marks of others, I conclude that the invoices by themselves are insufficient to permit me to arrive at a conclusion of use of the trade-mark in association with such wares. If there had been a clear statement in the affidavit, or if the registrant had produced a label concerning such wares, then I would have been prepared to infer use of such wares in association with the trade-mark. However, it is not the case.
For the foregoing reasons, I conclude that the registrant has failed to show use of its trade-mark in the manner required by Section 4(1) of the Trade-marks Act with respect to the following wares: bread mixes, cookie mixes, cookies, cakes, potato chips, jams, preserves, mayonnaise based spreads, cured meats and mustards. Nor has the registrant provided any special circumstances excusing the lack of use with respect to these wares. I accept the requesting party’s submission on this point, at page 11 of its written submissions, that these wares are common items that would not be subject to cyclical demands. Accordingly, these wares will be deleted from the trade-mark registration.
In view of the above, Registration No. 452,067 will be amended in compliance with the provisions of Section 45(5) of the Act so that the statement of wares will read “specialty dried mushrooms; snack products namely nut mixes, candy mixes, dried fruit products and mixes, corn chips, candies, nuts, tortilla chips, chocolate; flavour oils and vinegars; canned vegetables and canned fruits; specialty dried peppers; nuts; dried tomatoes; cheeses”.
DATED AT GATINEAU, QUEBEC, THIS 27th DAY OF FEBRUARY 2003.
D Savard
Senior Hearing Officer
Section 45 Division