RE: SECTION 45 PROCEEDINGS
Trade-mark: RAIN-X Design
Registration No. 196,056
Registration Date: December 7, 1973
At the request of Messrs. Barrigar & Oyen, the Registrar of Trade-marks issued a Section 45 notice on June 27, 1988 to The Hall Chemical Co. Ltd., the registered owner of the trade-mark RAIN-X Design, registration No. 196,056. The trade-mark RAIN-X Design, a representation of which is set out below, was registered December 7, 1973 in association with "Repellant compound for automotive glass".
In response to the Section 45 notice, Hall-Chem Inc., which was recorded by the Trade-marks Office on March 3, 1989 as owner of the above-identified trade-mark, submitted the affidavit of Jean-Claude Hetu, president of Hall-Chem Inc., dated December 23, 1988. Both parties filed written submissions with the Registrar of Trade-marks and an oral hearing was conducted at which both parties were represented.
As an initial matter at the oral hearing, the trade-mark agent for the registrant questioned the propriety of proceeding with the conducting of the oral hearing in the present instance. In particular, the agent pointed out that the requesting party is Barrigar & Oyen whereas the written submission filed by Barrigar & Oyen identifies the requesting party as China Wiper Special Rubber Co., Ltd., as does the hearing brief as filed with the Trade-marks Office. Further, the request for an oral hearing was filed by Barrigar & Oyen on behalf of the requesting party. As there can be no change in the identity of the requesting party subsequent to the issuance of the Section 45 notice, Barrigar & Oyen remains as the requesting party in the proceeding. Further, while I appreciate the submissions of the registrant as to the written argument and hearing brief identifying the requesting party as being other than Barrigar & Oyen, I do not consider it to be particularly relevant to the outcome of this proceeding as the registrant has not been taken by surprise nor has it been in my opinion otherwise prejudiced as a consequence of the filing of the written argument or hearing brief. Rather, it is the evidence filed by the registrant which ultimately determines the outcome of the proceeding while the written and oral submissions of the parties are merely intended to assist the Registrar in his consideration of the issues raised during the proceeding.
In his affidavit, Mr. Hetu states that the registrant, The Hall Chemical Co. Ltd., was continued under Section 181 of the Canada Business Corporations Act under the name Hall-Chem Inc., the date of continuance being February 28, 1980. The name of Hall-Chem Inc. was changed on May 14, 1981 to Hall-Chem International Inc., the same day as 103245 Canada Inc. changed its name to Hall-Chem Inc. Hall-Chem International changed its name to 150866 Canada Inc. on June 30, 1986 and 150866 Canada Inc. amalgamated with G.D. Hall Holdings Ltd. on January 5, 1987, the name of the corporation resulting from the amalgamation being G.D. Hall Holdings Ltd./ La Société de Gestion G.D. Hall Ltée. By way of an assignment dated December 6, 1988, G.D. Hall Holdings Ltd. sold assigned and transferred, as of May 14, 1981, the registered trade-mark RAIN-X Design to Hall-Chem Inc.
The requesting party has argued that effect can only be given to the assignment of the trade-mark as of the actual date of signing (December 6, 1988) as no evidence has been adduced of an intention to assign the trade-mark to Hall-Chem Inc. as of May 14, 1981, bearing in mind that the assignor only came into existence by way of an amalgamation between 150886 Canada Inc. and G.D. Hall Holdings Ltd. on January 5, 1987. In support of its position the requesting party relied upon the decision of the Federal Court of Appeal in Marcus, carrying on business as Marcus & Associates v. Quaker Oats Co. of Canada, 20 C.P.R. (3d) 46. At page 49-50, Mahoney, J. commented as follows with respect to an assignment in issue in that case which was alleged to have retroactive effect:
The registrant has argued that the Registrar has already made a determination under Section 48(3) of the Trade-marks Act in recording Hall-Chem Inc. as registered owner of the registered trade-mark RAIN-X Design on March 3, 1989. As a result, the registrant submitted that only the Federal Court has jurisdiction pursuant to Section 57(1) of the Act to direct that the recordal of the assignment be either cancelled or amended. However, from the first paragraph of the comments of Mr. Justice Mahoney noted above, it would appear that the Federal Court of Appeal has affirmed the jurisdiction of the Registrar in a Section 45 proceeding to decide the effect of an assignment. Further, the Hetu affidavit sets forth all of the steps and accompanying documentation concerning the changes of name, amalgamation and continuation relating to the change in title of registration No. 196,056, as well as adducing a copy of the assignment to Hall-Chem Inc. As a result, I consider that the matter of the assignment of December 9, 1988 can be reviewed in the present proceeding.
In my opinion, the assignment document does not purport to confirm an assignment of rights in the registered trade-mark RAIN-X Design which in fact took place in May of 1981. Rather, the assignment document was clearly intended to constitute an assignment of rights as of December 6, 1988 with retroactive effect to May 14, 1981. No explanation has been provided by Mr. Hetu in his affidavit as to why there was a delay of more than seven years in seeking to record the assignment to Hall-Chem Inc.
Apart from the above, the requesting party has argued that the Hetu affidavit shows use of the trade-mark at issue in association with windshield washer solution and not the wares covered in the registration. In this regard, Mr. Hetu in his affidavit states the following:
15. Hall-Chem a cessé au cours de l'année 1981 de fabriquer les marchandises identifiées au paragraphe 12 de mon affidavit et utilisées au Canada en liaison avec la marque de commerce RAIN-X Dessin et ce, pour des raisons de sécurité. En effet, le produit, lorsque appliqué sur le pare-brise pour automobiles, devenait reluisant et miroitait toutes sortes de couleurs. Plusieurs plaintes à cet effet avaient d'ailleurs été formulées à Hall-Chem;
16. Hall-Chem n'a pas eu d'autre choix que de cesser, au cours de l'année 1981, la fabricatiom et la mise en marché des marchandises identifiées au paragraphe 12 de mon affidavit avant que ces marchandises ne soient la cause d'accidents;
It is clear from the Hetu affidavit that the wares covered in the registrant's registration differ from the wares sold subsequent to 1981 and I do not consider that windshield washer solution constitutes or falls within the scope of a "repellant compound for automotive glass" even though the wares may indeed travel through the same channels of trade and be destined for use by the same clients. While the registrant in its written submission has referred to a previous Section 44 (now Section 45) decision of the Registrar dated May 12, 1980 which maintained the present registration, it is clear that evidence in that proceeding confirmed use of the registered trade-mark in Canada in association with "repellant compound for automotive glass" as of the date of the Section 44 notice in that proceeding. I therefore consider the previous decision of the Registrar to be irrelevant with respect to the outcome of the present proceedings.
The registrant has also argued that special circumstances exist which excuse the absence of use of the trade-mark since May of 1981, namely, the facts set forth in paragraph 15 of the Hetu affidavit set forth above. While I would be prepared to accept the reasons put forth as constituting special circumstances which would excuse the absence of use by the registrant of the registered trade-mark for a period of time, I do not consider that the circumstances outlined in the Hetu affidavit justify non-use of the trade-mark for over seven years. Further, the use of the trade-mark on a continuous basis in association with windshield wiper solution and the absence of any indication of an intention on the part of the registrant to resume use of the trade-mark RAIN-X Design in association with the registered wares supports the conclusion that the registrant has no immediate intention of doing so.
Having regard to the above, I have concluded that the registered trade-mark RAIN-X Design was not in use in Canada by The Hall Chemical Co. Ltd., the registered owner, in association with the wares covered in registration No. 196,056 and that special circumstances do not exist which excuse the absence of such use. Accordingly, and in the absence of an appeal from this decision pursuant to the provisions of Section 56 of the Trade-marks Act, registration No. 196,056 will be expunged from the register.
DATED AT HULL, QUEBEC THIS _5th______ DAY OF ___June,______________ 1991.
G.W.Partington,
Chairman,
Trade Marks Opposition Board.