SECTION
45 PROCEEDINGS
TRADE-MARK: QUANTUM
REGISTRATION NO.: 181,295
On December 23, 1991, at the request of Messrs. Barrigar & Oyen, the Registrar forwarded
a Section 45 notice to Quantum Management Services
Limited, the registered owner of the
above-referenced trade-mark
registration.
The trade-mark QUANTUM was registered on
February 11, 1972. The registration covers
the following wares and services:
WARES/MARCHANDISES:
Computer programs.
SERVICES:
(1) The provision of management and personnel
services. (2) Computer programming;
consulting in relation to computer applications; job placement of computer personnel.
In response to the Registrar's notice, the registrant furnished the
affidavit of Lyon
Gould, President of the registrant company and of
Quantum Information Resources Ltd.,
which company
was registered as a registered user of the trade-mark for the wares and
services during the relevant period.
Each party filed a written submission and was represented at an oral hearing.
At the oral hearing, counsel for the registrant pointed out
that the registrant might
submit additional evidence. The
additional evidence could not be provided at the
hearing, because of its confidential
nature, and because the registrant still had to
obtain permission from its customers to submit it. I informed counsel for the
registrant that if it intended to submit additional evidence, then the registrant would
have to request a retroactive extension of
time and would have to comply with the
requirements of
Section 47(2) of the Act. I
gave the registrant a week to make its
request.
I have now received the registrant's request for a retroactive extension of time without
the proposed additional evidence. It appears that the registrant is still not in
a position to file the additional evidence. I find it is difficult to determine if a
retroactive extension of time ought to
be granted to submit additional evidence when
such proposed evidence is not submitted with the request or is not already on
file.
Nevertheless, in its letter of September 24, counsel for the registrant submits that
the proposed
additional evidence would include part of the "deliverables"
transferred
to the registrant's customers upon termination of a contract, which are the user's guide
1
and strategic documents.
As Exhibit A, to his letter of September
24, counsel for the registrant has attached
a page from a user's guide dated October 16, 1991 and he states that clearly this is
an example of the use of the trade-mark QUANTUM in association with a
customized
computer
program. Further, he submits that this illustrates the use of the mark in
association with wares and is a particular example of a contract in which
deliverables
were transferred to the customer in association with the said trade-mark.
Concerning Exhibit A, I must say that I totally agree with the requesting party's
comments in its letter of September 26 that Exhibit A shows use of QUANTUM as a
trade-name and that use of QUANTUM as a trade-mark
to distinguish the registrant's wares
from the wares of others is not shown by this example.
As the proposed evidence has not been
submitted, and as I find Exhibit A (which is
stated to be a clear example of use with the wares)not to constitute evidence
of use
of the trade-mark in association with wares, I conclude that the registrant's
request
under Section 47(2) of the Act appears to be unjustified. Furthermore, I am not
satisfied that the failure to apply for an extension of time within the
extended
statutory time limit was not reasonably avoidable. Consequently, I hereby refuse to
grant the registrant's request for a retroactive extension of time. I will now turn
to the evidence of record.
In its written submission, the
requesting party has conceded that use of the trade-mark
has been shown with the registered services . I have reviewed the evidence and
am
satisfied that the evidence shows use of the trade-mark QUANTUM within the
relevant two-
year period with the services. Consequently, the registration ought to be
maintained
for the services.
The only issue now is whether the
evidence shows use in association with the wares:
computer programs.
The requesting party submits that the
registrant does not provide software; that the
evidence does not show the existence of computer programs associated with the
trade-
mark or a transfer of the property or possession of wares; it submits that what
the
registrant provides is customized software services, not wares.
In its written submission, the registrant submits that when it provides computer
programming services, its clients are
fully aware of the fact that at the same time,
they are also purchasing a "QUANTUM" computer program. It then adds
that in today's
modern technological society, there
are many intangible wares such as computer software
which cannot be distinguished in the traditional fashion from the services and
cannot
be separated from one another.
At the hearing, counsel for the registrant mentioned
that the product created by the
programmer and used on a daily basis by the purchaser is a custom made program
and would
be referred to as a QUANTUM program; that the trade-mark QUANTUM does not
appear on the
program since in most situations the customer does not want the name of the
person or
company who created the program on it.
He referred to Exhibit L which he
submits contains, in part, custom made programs
created by Quantum.
He stated that
with respect to such programs, the registrant
company contracted to deliver programs and that it is programs that were
delivered.
However, there is no copy of a contract in evidence and if Exhibit L could be
said to
contain references to custom made programs. there is no indication that such
programs
have been sold or licensed in association with the trade-mark QUANTUM in the
manner
required by Section 4(1) of the Act; furthermore, there is no evidence as to
when such
programs were designed or created. Concerning the contracts entered into by the
registrant, such contracts might refer to services to be performed by QUANTUM
without
any reference to a QUANTUM custom made program.
In my view, if the registrant has used the trade-mark
in association with wares, it has
failed to show such use pursuant to Section 4(1) of the Trade-marks Act.
If a transfer of the property in or
possession of wares in the normal course of trade
occurs when the registrant creates "custom made programs" for its
customers, the
evidence of record fails to show that at such time notice of the association
between
the trade-mark and the wares is given to the purchaser of the program in the
manner
prescribed by Section 4(1) of the Act. Counsel for the registrant has stated that the
trade-mark QUANTUM does not appear on the screen nor on the program when
accessed and
there is no contract or any other documents in evidence referring to a QUANTUM
custom
made program. The evidence submitted with
respect to the trade-mark QUANTUM is in
association with services. It
clearly shows that Quantum Information Resources Ltd.
is a computer
systems development company that provides different services including
computer programming and consulting in relation to computer applications which
services
are advertised under the trade-mark QUANTUM. The exhibits do not contain any
reference
to QUANTUM custom made computer
programs. Furthermore, all of the invoices which bear
the name QUANTUM at the top thereof seem to be for "services"
rendered. In my view,
the evidence shows QUANTUM appearing as a
trade-name (in that it refers to the company)
or as a trade-mark in association with services it provides.
Consequently, in view of the above, I conclude that
use of the trade-mark QUANTUM in
association with the wares
"computer programs" has not been shown in the manner
prescribed by Section 4(1) of the Trade-marks Act. Accordingly, the wares ought
to be
deleted from the trade-mark registration.
Registration No. 181,295 will be amended accordingly in
compliance with the provisions
of Section 45(5) of the Trade-marks Act.
(
!
,
i
,
J.
DATED AT HULL, QUEBEC, THIS 3RD DAY OF NOVEMBER
D. Savard
Senior Hearing Officer
1994.