SECTION 45 PROCEEDING
TRADE-MARK: SECRET INTERNATIONAL
REGISTRATION NO.: TMA 308,613
On April 23, 1997, at the request of Vanity Fair, Inc., the Registrar forwarded a Section 45 notice to Manufacturier de Bas de Nylon Doris Ltée/Doris Hosiery Mills Ltd., the registered owner of the above-referenced trade-mark registration.
The trade-mark SECRET INTERNATIONAL is registered for use in association with the wares: ladies’ pantyhose and ladies’ hosiery.
In response to the notice, the registrant furnished the affidavit of Warren D. Chisling, Chief Financial Officer of the registrant company. Each party filed a written argument and was represented at the oral hearing. Section 45 proceedings were commenced against twelve of the registrant’s registered trade-marks which incorporate the word “SECRET” as a component thereof. The hearing with respect to each case was scheduled at the same time. However, the present decision is only with respect to the trade-mark SECRET INTERNATIONAL.
In his affidavit, Mr. Chisling states that the registrant is one of the largest manufacturers of hosiery and pantyhose in Canada. He mentions that the company adopted the trade-mark SECRET and commenced using such trade-mark with ladies’ hosiery in 1967. He then explains that the registrant expanded its line of products and that it has continuously and extensively used the SECRET trade-mark and design variations thereof. He adds that over the years the registrant expanded its portfolio of trade-marks, adopting a series of trade-marks which incorporate the word SECRET together with other words, all of which he states, with the SECRET trade-mark and design variations thereof, form part of the Doris family of “SECRET” trade-marks, which he refers to as the SECRET family of trade-marks.
He has furnished sales figures for the period 1986 to 1996 concerning sales of hosiery products under the SECRET family of trade-marks. He has also provided the facts surrounding the advertising of ‘SECRET” products and the ‘SECRET family of trade-marks”.
Concerning the trade-mark SECRET INTERNATIONAL, he states it has been used with ladies’ hosiery and pantyhose since 1985. He has provided sales figures which he states represent sales of products bearing the trade-mark SECRET INTERNATIONAL. He also provided packaging as Exhibit JH-6 which he has identified as a copy of representative packaging (style #25l6) displaying the trade-mark SECRET INTERNATIONAL.
The main argument of the requesting party is that the evidence fails to show use of the trade-mark during the relevant three-year period.
I agree with the requesting party that the evidence is ambiguous as to whether sales of the wares in the type of packaging attached as Exhibit JH-6 were made during the relevant period.
Although Mr. Chisling has stated that since 1985 the registrant has extensively used the trade-mark in Canada in association with ladies’ hosiery and pantyhose, this statement consists of a bare allegation of use.
Consequently, I will have regard to the balance of the evidence to determine if use has been shown during the relevant period.
Concerning the packaging attached as Exhibit JH-6, I am satisfied that it bears the registered trade-mark SECRET INTERNATIONAL. However, Mr. Chisling has failed to indicate when such packaging was being used. I find the evidence raises doubt as to whether it was in use during the relevant period, particularly considering that the only invoice furnished which refers to a sale of style #25l6 bears a date subsequent to the relevant period. If the trade-mark was in use during the relevant period with respect to pantyhose style #25l6, then I find it unclear the reason the registrant would have chosen to provide an invoice bearing a date subsequent to the relevant period. Further, I have noted that none of the advertising material attached as exhibits to the Chisling affidavit refer to the trade-mark SECRET INTERNATIONAL. Therefore, I am of the view, that if pantyhose and hosiery had been sold during the relevant period in packaging clearly displaying the trade-mark in the manner shown by Exhibit JH-6, it would have been very easy for the registrant to have clearly stated so or to have provided unambiguous evidence to support his allegation of use.
Further, although he provided sales figures with respect to products bearing the trade-mark SECRET INTERNATIONAL, in view of the ambiguities in the evidence, I find it unclear the manner the trade-mark would have been associated with these products during the relevant period. Consequently, although I am prepared to infer that the “pantyhose” style #25l6 which were sold on June 29, l997, that is subsequent to the relevant period, would have been sold in the type of packaging attached as Exhibit JH-6, that is the only inference I am prepared to make in this case.
Consequently, as it cannot be concluded from the evidence as a whole if such packaging was used during the relevant period, then I conclude that the evidence fails to show the manner the trade-mark was associated with the wares during the relevant period.
Concerning the registrant’s argument that in the alternative, use has been shown by reason of the mark belonging to a family of trade-marks comprising the word SECRET, I find such argument unsuccessful. Counsel for the registrant submitted the if one of the marks forming the SECRET family of trade-marks is used, then all marks are deemed used and he relied on the case McDonald’s Corp. v. Yogi Yogurt Ltd., 66 C.P.R. (2d) l0l, stating that the principles in such case are applicable here. He then stated that the evidence shows extensive use and advertising of the SECRET family of trade-marks.
However, as I have stated in related proceedings regarding eight of the registrant’s trade-marks incorporating the word SECRET, see for example the decision in the case involving the trade-mark ULTRA SECRET, Registration No. 202,5l4, the fact that the registrant may have extensively used the trade-mark SECRET “per se” and may be using other trade-marks incorporating the word “SECRET”, and may or may not have a family of trade-marks, is irrelevant to the issue to be decided in the present proceeding.
Accordingly, as the evidence fails to show the manner the trade-mark SECRET INTERNATIONAL was associated with the wares during the relevant period , I conclude that use has not been shown pursuant to Section 4(l) of the Act, and that trade-mark registration ought to be expunged.
Registration No. 308,613 will be expunged in compliance wiht the provisions of Section 45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 28th DAY OF May, 1999.
D. Savard
Senior Hearing Officer
Section 45