SECTION 45 PROCEEDINGS
TRADE-MARK: OMEGA
REGISTRATION NO. 229177
On August 24, 1989, at the request of Messrs. Smart & Biggar on behalf of Omega
Corporation, the Registrar forwarded a Section 45 notice to Omega Apparel
Limited, the registered owner of the above-referenced trade-mark registration.
The trade-mark OMEGA was registered on
July 21, 1978 for use in association with
ties, scarves and handkerchiefs; belts; bathrobes; bathing suits and beach
robes.
In response to the Registrar's notice,
the affidavits of Glynn Davies, President
of Omega Apparel (1988) Ltd.; Stanley Cooper, General Manager of 745723 Ontario
Inc. trading as Omega Scarves; and Janet Greenspoon, Director of Azor
Manufacturing Ltd. were furnished by the registrant. The company 745723 Ontario
Inc. is a registered user of the
trade-mark for the wares "scarves"; Azor
Manufacturing Ltd. is a registered user with respect to the wares “belts”. The requesting
party filed a written submission; no oral hearing was conducted.
In his affidavit, Mr. Davies states that
his company, Omega Apparel (1988) Ltd.,
manufactures and sells bathrobes, beach robes and bathing suits across Canada
to
major department stores, chain stores and small independent stores; the trade-
mark OMEGA being applied to these
garments by way of labels. As Exhibit 2,
representative specimens of these labels were submitted. The requesting party
has commented that one label submitted in Exhibit 2 of the affidavit of Glynn
Davies bears the number CA 00375; it is further submitted that the company
associated with this number is neither the
registered owner or a registered user
of the present trade-mark. However, this is a matter of evidence and as in
Section 45 proceedings, the only
evidence which can be considered is that which
has been submitted by the registrant, the comments made relative to the CA
number
have been disregarded. Notwithstanding the above, I am of the view that the
public might have no knowledge as to the meaning of such number on the label;
and
therefore would not perceive the CA number as representing a company.
Concerning the use shown of the
trade-mark, it is further stated in the affidavit
that the wholesale value of garments bearing the trade-mark OMEGA which were
shipped by the registrant in the
calendar year 1989 was not less than $100,000.00
representing not less than one thousand bathrobes, one thousand beach robes and
one thousand dozen bathing suits. In view of the high volume and value of sales
in 1989, I conclude that subject mark was in use at the material date in Canada
in the normal course of trade in association with bathrobes, beach robes and
bathing suits. The issue therefore is whether
the use by Omega Apparel (1988)
Ltd. in association with
bathrobes, beach robes and bathing suits is use by the
registered owner.
Mr. Davies has stated as follows in his
affidavit: "In about June 1988, my
company acquired all assets and goodwill of the registered owner by way of
parole
agreement, and since that time my company has in effect assumed the mantle of
the
registered owner". He
has also stated that his company was incorporated
expressly in 1988 for the purpose of continuing the business of Omega Apparel
Ltd., which was identified on the registration as the owner when the S. 45(1)
notice issued. As Exhibit 1, he submitted a certified copy of an affidavit of
Morris Fuchs, (President of Omega Apparel Ltd.) wherein Mr. Fuchs confirms that
lion or about November
1988" Omega Apparel Ltd. entered into an agreement with
Omega Apparel (1988) ltd. whereby as of that date his company sold and
transferred several trade-marks including the present trade-mark.
The requesting party submits
that no such assignment ever did take place nor was
there an attempt to record a confirmatory assignment in the Trade-marks Office.
However, the original affidavit of Mr. Fuchs was filed with the Assignment
Section of the Trade-Marks Office on February 22, 1990 as assignment
documentation; as the assignment related to several other trade-marks, the
document was placed only on a master file, i.e. application No. 371,631.
Although
I have noted a discrepancy regarding the date of the transfer of the trade-mark
in that Mr. Davies mentions "in about June 1988" as the time of the
transfer,
whereas Mr. Fuchs claims it was lion or about November 1988", it seems
clear that
the transfer of the trade-mark did occur in 1988, well before the issue of the
Section 45 notice.
Furthermore, although this assignment
has not yet been officially recorded, a
transfer does not have to be registered to make it valid. (see Gordon
Kightley
v. Registrar of Trade-marks et al.(1981), 65 C.P.R. (2d) 36 and Meredith
&
Finlayson v. Berg Equipment Co.
(Canada) Ltd., as yet unreported, Court No. T-
1108-90, judgement rendered July 2, 1992). Furthermore, the present situation
can be distinguished from Marcus, carrying on business as Marcus & Associates v.
Quaker Oats Co. of Canada 20 C.P.R. (3d) 46 in that the document does
not purport
to assign retroactively but actually confirms a transfer that took place in
1988.
In Section 45 proceedings, in the case of a change of ownership, the new owner
must establish the date of said change by filing sufficient documents to allow
the Registrar to conclude that the evidence in Section 45 proceedings is
furnished by the registered owner, a registered user, or a person entitled to
recordal as such (see Bell & Arkin v. Polylab Inc., Section 45 decision dated
August 7, 1990, serial No. 487,695). From the documents filed, I am satisfied
that the affidavit of Glynn Davies is considered to have been submitted by the
person entitled to be registered as registered owner and the use shown in
respect
to bathrobes, beach robes and bathing suits is considered to be by the proper
owner (see Meredith & Finlayson v. Berg Equipment,supra).
However, if I am
wrong in concluding that use can be by a person entitled to recordal as
registered owner, I conclude that the non-use by Omega Apparel Ltd., in this
instance, is considered to be merely technical in nature, there being special
circumstances to excuse the absence of use since at the material date it no
longer owned the trade-mark and since steps were taken by the new owner to be
officially recorded as such on the register. Consequently, having regard to the
evidence filed and bearing in mind the purpose of Section 45, I conclude that
the
trade-mark registration should be maintained for "bathrobes, beach robes
and
bathing suits".
In the affidavit of Stanley Cooper,
General Manager of 745723 Ontario Inc.
(registered user with respect to scarves), trading as Omega Scarves, it is
stated
that such company manufactures and distributes scarves which are sold in the
normal course of trade to major chain stores in Canada such as Zellers and
Towers. Due to the highly seasonal nature of the business, Mr. Cooper states
that scarves are predominately shipped to customers in the three month period
September to November inclusive in response to orders received earlier in the
year of wh1ch not less than five hundred thousand scarves having a retail value
of not less than about $4,000,000.00 have been shipped in the three month period
.•..
September to November 1989. It is
further stated that the trade-mark OMEGA is
applied to packages in which approximately 25% of the scarves were shipped
during
the period September to November 1989; Exhibit 1 being representative of said
package. From the foregoing, it can be concluded that approximately one hundred
and twenty-five thousand scarves were distributed in packaging bearing the
trade-
mark OMEGA during the period mentioned hereinabove.
Commenting on Mr. Cooper's affidavit,
the requesting party submits that it is not
clear that the trade-mark was associated with any
of the scarves sold in 1989.
On this point, I respectfully disagree with the requesting party. Mr. Cooper
has
stated that the trade-mark OMEGA is applied to packages in which approximately
25% of the scarves referred to in paragraph 4 of the affidavit were
shipped;
paragraph 4 refers to sales of scarves during the period September to November
1989. Although the scarves were shipped subsequent to the date of the Section
45 notice, orders were obviously placed prior to the issuance of the notice
(see
statement made in paragraph 3 of the affidavit). With respect to use subsequent
to the notice date I rely on John Labatt Limited v. Rainier Brewing
Co. (1984)
80 C.P.R. (2d) 228. Consequently, the trade-mark registration should be
maintained for "scarves".
In her affidavit, Janet Greenspoon,
Director of Azor Manufacturing Ltd. (the
registered user for belts) states that her company distributes belts and for
the
past several years has sold in Canada not less than about one thousand dozen
belts per month directly to its customers of which approximately 75% had the
trade-mark OMEGA applied thereto; as Exhibit 2 she submits specimens of
representative belting. However, the trade-mark shown on the belting consists
of the words "BY OMEGA". I have doubts as to whether such words would
be
perceived by the public as use of the trade-mark OMEGA per se; such expression
might be perceived as a reference to the entity who manufactured the wares.
Concerning the representative orders for the months of June and July, 1989
which
were submitted as Exhibit 1, they show the vendor as Omega Belt Co. Concerning
that company, although its address on the order forms is identical to the
address
given by Ms. Greenspoon in her affidavit for premises maintained by Azor
Manufacturing Ltd., its relationship with Azor Manufacturing Ltd. has not been
explained. As such company is not the
registered owner or an approved registered
",..
that the evidence presented in
association with belts, does not allow me to
conclude that the use was by a registered user or the registered owner.
None of the affidavits filed either states or shows use of the trade-mark in
association with "ties and handkerchiefs". In the absence of facts from which
use could be inferred, I have no
alternative but to conclude that the trade-mark
was not in use in Canada by registrant in association with these wares at the
material date.
In view of the evidence filed in these
proceedings, I have concluded that use of
the trade-mark OMEGA has been shown within the meaning of Section 2 and
4(1) of
the Trade-marks Act in association with
scarves, bathrobes, bathing suits and
beach robes. Consequently, the trade-mark
registration ought to be amended to
delete the wares "ties, handkerchiefs and belts" from the register.
Registration No. 229,177 will be amended accordingly in compliance with the
provisions of Section 45(5) of the Trade-marks Act.
..•.