In a matter related to section 45
in respect of registration No. 309,865
for the trade-mark
"FESTIVAL" standing in the name of
ICI Paints (Canada) Inc.
The FESTIVAL trade-mark was registered on December 27, 1985, by BAPCO, a partnership
of C-I-L Inc. and the Sherwin-Williams Company (hereinafter "BAPCO"), for use in association
with "decorative paint".
On January 15, 1993, the firm of Buisson Brassard Poirier, acting on behalf of Société
Chimique Laurentide Inc., requested that the Registrar "[TRANSLATION] send a notice to the
original owner (of this trade-mark) pursuant to section 45(1) of the Trade-marks Act". On June
28, 1993, the Registrar acted on this request by giving notice not to the original owner, BAPCO,
but to ICI Paints (Canada) Inc. (hereinafter "ICI Paints"). On April 16, 1993, that is, during
the intervening period, the register was amended to enter ICI Paints as the present owner.
It is important to set out this chronology of the events because, in its written submission in
response to the evidence furnished by ICI Paints, the requesting party again stresses that the
evidence should have proven use of the trade-mark by BAPCO, since "[TRANSLATION] the
registered owner is BAPCO". With respect, I believe the requesting party is mistaken. ICI
Paints is clearly the "registered owner" of the trade-mark. Furthermore, since ICI Paints was
already the registered owner when it was given notice under section 45(1), it does not have to
prove its title here. As a result, the only evidence it has to furnish in these proceedings is that
proving its own use of the trade-mark (or justifying the absence of such use) during the two years
prior to the date of the notice.
Thus, in response to the notice it received, ICI Paints furnished the affidavit of its National
Account Manager, Norman Oliver, as well as a written submission. No hearing was held in
respect of this matter.
Attached to the affidavit as Exhibits A-I to A-4 are large labels for paint cans that resemble those
seen in the advertising inserts submitted as Exhibits Band C-l to C- 3. The labels bear the
registered trade-mark FESTIVAL together with the word "paint".
In paragraph 2 of his affidavit, Mr. Oliver declares that the paint sold under the registered trade-
mark FESTIVAL is in fact produced by ICI Paints and marketed under that trade-mark by the
Zellers department store chain. He submits, as Exhibits D-l to D-3 in particular, copies of
invoices drawn up in the name of lCI Paints that identify the Zellers chain as the buyer. These
invoices clearly concern the sale of FESTIVAL brand paint and are dated between February 15
and March 22, 1993.
In paragraph 10 of his affidavit, Mr. Oliver also declares that ICI Paint sold Zellers 1,154,400
litres of FESTIVAL paint between January 1 and November 25, 1992, and in support of this
declaration he attaches a statement dated November 25, 1992, as Exhibit F. I note that the
volume the statement appears to indicate is actually 1,154.4 litres. However, a handwritten (and
initialled) note at paragraph 10 explains that this figure must be multiplied by one thousand. I
have no difficulty accepting this assertion, as certain sales mentioned elsewhere in the statement
for other types of paint would otherwise be limited to tenths of litres, which I consider unlikely.
I
In view of the above, I consider that the present owner, ICI Paints, has proven its use of its
registered trade-mark FESTIVAL in accordance with section 45(1) of the Act. Consequently,
registration No. 309,865 will be maintained in accordance with section 45(5).
DATED AT HULL, QUEBEC, THIS 17th DAY OF /January 1995.
Denise Savard
Senior Hearing Officer