SECTION 45 PROCEEDINGS
TRADE-MARK: ALL THE BEST & Design
REGISTRATION NO. TMA543,633
On May 25, 2005, at the request of Linda Nickels, the Registrar issued the notice prescribed by section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) to All The Best Fine Foods Limited, the registered owner of registration No. TMA543,633 for the trade-mark ALL THE BEST & Design.
The trade-mark is shown below:
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, which have been on the register for at least three years, at any time during the three years preceding the date of the notice and, if not, the date on which it was last used and the reason why it has not been used since that date. If such use is not shown, then the matter to be decided is whether the registrant’s failure to use its mark was justified by special circumstances.
The wares and services at issue in these proceedings are gourmet gift baskets, the operation of a retail food store and gift store, and catering services. The relevant period is any time between May 25, 2002 and May 25, 2005.
What qualifies as use of a trade-mark is defined in s. 4 of the Act, which is reproduced below:
4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
(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.
(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
In response to the s. 45 notice, the registered owner filed the affidavit of its President, Jane Rodmell. Each party filed a written argument. An oral hearing was not held.
Ms. Rodmell has provided a thorough affidavit, explaining the history and activities of the registrant.
She states that the trade-mark has been used in association with the operation of a retail food and gift store since at least as early as 1996 to the present by the registrant or its predecessor in title. She backs up this claim with the following items, which she attests were used during the relevant time period:
- bags bearing the mark that are provided to customers to carry home their purchases;
- brochures displaying the mark that promote the registrant’s services, and which were provided to the public and customers;
- hang tags and stickers displaying the mark that were attached to products sold; and
- invoices displaying the mark at the top.
I note that one of the brochures is dated 2004 and that the invoices provided include ones dated March 15, 2005, January 6, 2005 and February 28, 2005.
Ms. Rodmell also states that the trade-mark has been used in association with catering services since 1991 to the present by the registrant or its predecessor in title. She backs up this claim with the following items, which she attests were used during the relevant time period:
- brochures bearing the mark which advertise the services; and
- invoices displaying the mark at the top.
I note that one of the brochures is dated 2004 and that the invoices provided are dated January 25, 2005 and April 4, 2005.
Ms. Rodmell further states that the trade-mark has been used in association with gourmet food baskets since 1996 by the registrant. She backs up this claim with the following items, which she attests were used during the relevant time period:
- stickers bearing the mark that are attached both to products within each gift basket and to the basket itself or its wrapping;
- advertising brochures that clearly depict the gourmet baskets bearing the mark; and
- invoices evidencing sales of the gourmet gift baskets.
I note that the invoices provided are dated December 23, 2002, November 26, 2002, and June 5, 2003.
The requesting party’s written argument focuses on two issues.
First, the requesting party argues that use has not been shown by the registrant, but by some unknown entity called either All The Best Fine Foods or All The Best Fine Foods Ltd. However, as pointed out in the registrant’s written argument, the Canadian Business Corporations Act provides that a company whose name includes the word Limited may also use and be legally designated by the abbreviation Ltd. Moreover, contrary to the requesting party’s submissions, a trade-mark owner’s name need not appear in conjunction with its trade-mark. A trade-mark must indicate a single source, but it need not name that single source. In addition, as Ms. Rodmell has clearly indicated that the sales were by the registrant, I accept that All The Best Fine Foods is probably merely a trade-name or abbreviation of the registrant [see New Line Productions Inc. v. Green, 2005 CarswellNat 3535]. I note that the address of All the Best Fine Foods is that of the registrant.
Second, the requesting party has set out a number of steps that it says must be followed in order to give public notice that something is a trade-mark. While its list might be considered recommended, it certainly is not mandatory. The registrant’s mark is clearly a trade-mark; it stands on its own and serves to distinguish the registrant’s wares and services from those of others. The use of ™ is not mandatory, nor is the presence of the registrant’s full legal name.
As I am satisfied by the evidence that the mark was in use in Canada during the relevant time period in association with the wares and services at issue, registration No. TMA543,633 will be maintained, in accordance with the provisions of s. 45(5) of the Act.
DATED AT TORONTO, ONTARIO THIS 9th DAY OF OCTOBER 2007.
Jill W. Bradbury
Member
Trade-marks Opposition Board