IN THE MATTER OF A SECTION 45 PROCEEDING
respecting registration No. 349,799 for the trade-mark
SCOOZI standing in the name of Falcon Hotel Limited
The trade-mark SCOOZI was registered under No. 349,799 on January 6, 1989 in the name of Yorkdale Inn Limited for "restaurant, bar and discotheque services." At the request of Paesano Eatery Ltd., the Registrar of Trade-marks issued a notice on January 19, 1993 pursuant to Section 45 of the Trade-marks Act to the registered owner Yorkdale Inn Limited.
In reply to the Section 45 notice, an affidavit of J. Robert Lamoureux was filed. At the same time, an assignment was filed transferring registration No. 349,799 from Yorkdale Inn Limited to Falcon Hotel Limited. The assignment was executed by Mr. Lamoureux on April 23, 1993 and it was recorded in the Trade-marks Office on July 30, 1993. The first paragraph of the assignment states that Yorkdale Inn Limited
....did as of the 1st day of November 1992 sell, assign and
set over absolutely unto FALCON HOTEL LIMITED.....
all of its right, title and interest in and to the trade mark
SCOOZI, in Canada, registered under number 349,799...
The final paragraph of the assignment states that the assignor sells and assigns its trade-mark to the assignee
.....with the intent that the title in Canada to such trade mark
and the registration of the trade mark shall be fully vested in
the said Assignee, its successors and assigns, as and from the
1st day of November 1992.
Both parties filed a written submission but no oral hearing was conducted.
Section 45 of the Trade-marks Act requires the registered owner to show use of its trade-mark within the two year period preceding the date of the Section 45 notice or to provide a reason for the absence of use during that period. In his affidavit, Mr. Lamoureux identifies himself as the President of both Yorkdale Inn Limited and Falcon Hotel Limited. In paragraph two of his affidavit, he states that Yorkdale Inn Limited used the trade-mark SCOOZI up until October 1992 and that the name was used in conjunction with a bar and restaurant operation at 3080 Dufferin Street in Toronto. One of the items appended as Exhibit A to Mr. Lamoureux's affidavit appears to be a paper place mat that was used at the bar and restaurant. It bears the date January 1992, the address 3080 Dufferin and the trade-mark SCOOZI. Although the information provided by Mr. Lamoureux regarding use of the mark by Yorkdale Inn Limited is somewhat sparse, I consider that it is sufficient to allow me to conclude that the mark was in use by that company within the two-year period prior to the date of the Section 45 notice. Thus, on that basis alone, the registration ought to be maintained.
In his affidavit, Mr. Lamoureux states that the current owner, Falcon Hotel Limited, began using the trade-mark SCOOZI in November of 1992. Mr. Lamoureux supports that conclusion by providing evidence of the outdoor signs used by Falcon Hotel Limited at its restaurant and bar located near Sudbury, Ontario. He also states that Falcon Hotel Limited has done $50,000 in business per month in association with that trade-mark since November of 1992.
In view of the above, I am prepared to conclude that there was use of the trade-mark SCOOZI in association with the registered services by Falcon Hotel Limited from November of 1992 up to the date of the Section 45 notice. It is the requesting party's contention that such use does not meet the requirements of Section 45 because Falcon Hotel Limited was not the owner of the mark during that period and there is no indication that it was a registered user or licensee of the mark at that time. The requesting party contends that the assignment of the mark to Falcon Hotel Limited purports to be effective retroactive to November 1, 1992 and that it cannot be given such a construction in view of the decision in Marcus v. Quaker Oats Co. (1988), 20 C.P.R.(3d) 46 (F.C.A.).
The new owner contends, on the other hand, that the assignment occurred on November 1, 1992. Although the final paragraph of the assignment is somewhat ambiguous as to when the transfer occurred, the first paragraph states that it took place on November 1, 1992. Thus, it would appear that the assignment is confirmatory in nature rather than purporting to be retroactive in effect. Thus, I consider that Falcon Hotel Limited was the owner of the trade-mark SCOOZI from November 1, 1992 on. The evidence of use of the mark by that company between November of 1992 and the date of the Section 45 notice is therefore also sufficient to maintain registration No. 349,799.
In view of the above, registration No. 349,799 will be maintained.
DATED AT HULL, QUEBEC, THIS 12th DAY OF May, 1995.
David J. Martin,
Member,
Trade Marks Opposition Board.