Trademark Opposition Board Decisions

3.

Consommation

et Corporations Canada

Ottawa I Hull. Canada
Kl A OC9

June 261987

Consumer and

Corporate Affairs Canada

·.--.--

__ • .6 ______________________________ ~ --- ••• ---

Cowling & Henderson,
Suite 2400,

Two First Canadian Place,
Toronto, Ontario.

M5X IA4.

Gentlemen:

            Re: SECTION 44 PROCEEDINGS
Registration No. UCA 45377
Trade Mark: COUNTRY INN

T584 157 7-44

NoIre fCtefenc. Our I,,.

216959

At the request of Messrs. Stitt, Baker & McKenzie, acting on behalf of
Effem Foods Ltd., the Registrar issued a s. 44  Notice dated October 16,
1985 to Sears Canada Inc., the registered owner of the above referenced
trade mark registration.

The mark COUNTRY INN was registered on October 20, 1952 for use in
association with the following wares and services:

Wares:

(1) candies, (2) wine jellies, jams, preserves, cakes,
box chocolates and cheeses, (3) cookies.

Services: restaurant services.

In response to the Registrar's Notice, the registrant furnished the
affidavit of its National Merchandise Manager, Mr. Gordon J. Aston, along
with Exhibits A through F thereto. Further to the filing of this evidence,
the requesting party requested an oral hearing which was scheduled for
April 14, 1987 but postponed at the request of both parties. A hearing was
re-scheduled for June 2, 1987 and the parties again requested a
postponement. However; the second postponement was refused on the grounds
that the parties had had over one year to negotiate an amicable settlement
and that the Registrar did not have the authority to grant stays in s. 44
proceedings; as discussed In Anheuser-Busch¹•

At the hearing, learned counsel for the requesting party argued at length
that the evidence filed was insufficient to show use of the mark in
association with its registered services and at best only showed use in
association with the wares "cakes".

While it is true that the evidence furnished presents certain technical
shortcomings, in my respectful opinion, the objections raised by counsel
are either not convincing or raise issues which are outside the scope of

s. 44 proceedings. Section 44 simply requires that the registered Owner
furnish an affidavit or a statutory declaration showing that the trade mark
is in use. It is not designed nor intended as a procedure for adjudicating
disputes between competing interests; the whole as discussed by the Federal
Court in several cases, the most recent being Anne Roebuck and Anessence
Inc. v. Registrar of Trade Marks and Rogers, Bereskin & Parr (Hay 1, 1987)
yet unreported, FCTD file T-2101-86.

• • • /2

1.       Anheuser-Busch Inc. v. Carling O'Keefe Breweries of Canada Ltd.(1982)
69 C.P.R. (2d) 136.

Canada

4.

Consommation

et Corporations Canada

Ottawa I Hull. Canada
K1AOC9

Consumer and

Corporate Affairs Canada

-2-

VOll'e'~ YOUI"

At the hearing, counsel for the registrant produced complete Sears
catalogues in an effort to clarify paragraph 6 of the affidavit and Exhibit
E thereto. However counsel for the requesting party objected to the
production of this material on the ground that it was an attempt to file
additional or supplementary evidence out of statutory delays, and I felt
duty-bound to agree.

In the course of the hearing, counsel for the requesting party dissected
the Aston affidavit paragraph by paragraph and alleged shortcomings in all
of them: The main criticism, as I understand it, was that the omission of
the specification "in Canada" on several activities discussed therein,
renders the affidavit a bare allegation of facts of the type discussed in
Plough Canada²• With all due deference, I can see no substantive
similarity in the affidavit of use filed in the Plough case and the one

           filed in the instant case.                   

I can agree that paragraph 2 of the Aston affidavit is somewhat ambiguous
and could easily have been more specific and informative. However, in my
opinion it is not patently ambiguous and bears no similarity to the dog in
a manger attitude discussed in American Distilling³.  Having given an
opportunity to counsel for the registrant, at the hearing, to elucidate on
the meaning of the second sentence of paragraph 2, without success, I can
now only give it a fair reading within the context of the affidavit as a
whole.

As I understand the situation, Sears Canada operates restaurants in several
of its department stores in Canada and in so doing uses its mark COUNTRY
INN in the advertisement and the performance of this service; as shown by
paragraphs 8, 9 and la of the affidavit and Exhibit F thereto. I find this
evidence sufficient to satisfy the requirements of the Act in regard to
restaurant services. Sears Canada also operates candy sections within its
stores where candies are sold by the pound. Paragraphs 3, 4 and 5 of the
affidavit, along with Exhibits A, B, C and D also satisfy me that the mark
is in use in association with the wares "candies". Sufficient facts have
been established to allow me to conclude that the requirements of S-8. 4(1)
have been met in regard to candies.

The only possible point of contention, in my respectful opinion, stems from
the wording of the second sentence of paragraph 2. Given a fair reading,
this sentence leads me to believe that the mark was not in use with "wine
jellies, jams, preserves and cookies" as of and immediately prior to the
notice date. The catalogue pages filed as Exhibit E are of little
assistance in this determination since they are undated. Yet paragraph 7
seems to suggest that revenues were derived from the advertisement and sale
of these particular wares in 1985. Counsel for the requesting party argued
that the dictum expressed in Rainier⁴ should be followed in this case.  

••• /3

2. Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1981) 53 C.P.R. (2d) 62.

5.               American Distilling Co. v. Canadian Schenley Distilleries Ltd. (1977) 38
C.P.R. (2d) 60.

4. John Labatt Ltd. v. Reinier Brewing Co. (1984) 80 C.P.R. (2d) 228.

Canada

6.

Consommation

et Corporations Canada

Ottawa I Hull. Canada
K1AOC9

Consumer and

Corporate Affairs Canada

- 3 -

vocr.,-.ne. YOtII /lie

7. 

Upon due consideration, I find the circumstances in Rainier different from
the present. In Rainier the evidence made it clear that the trade mark was
in recent use with beer only and that it had never been used with the other
registered wares. In the instant case, continuous and active commercial
use has been established over a period of several years, leaving a question
mark on use within the last nine months on some of the wares only. I am
not convinced that these circumstances should lead to a conclusion of
non-use within the meaning of the Act. Again, I do not believe that it is
the intent or purpose of s. 44 of the Act to monitor use of trade marks so
closely-that a stoppage in use on some of the registered wares for a very
short period of time should be sanctioned by expungement.

Should the requesting party wish to argue abandonment, it should proceed
under the provisions of s. 57 of the Act.

Therefore, by reason of the evidence filed in these proceedings, bearing
in mind the arguments presented by both counsels and of the most recent
pertinent jurisprudence enunciated by the Federal Court. I have concluded
that the subject trade mark is in use in Canada with all of its registered
wares. Consequently, its registration ought to be maintained as it
presently appears on the register.

Registration UCA 45377 will be maintained accordingly, in compliance with
the provisions of s-s. 44(5) of the Trade Marks Act.

Yours truly

             J. P. D'Aoust           

Senior Hearing Officer
   for Registrar of Trade Marks

JPD:sl

c.c. Messrs. Stitt, Baker & McKenzie

(JFC)

Canada