SECTION 45 PROCEEDING
TRADE-MARK: BIRD DESIGN
REGISTRATION NO.: TMA 149,098
On July 16, 1996, at the request of Messrs. Gowling, Strathy & Henderson, the Registrar forwarded a Section 45 notice to Degrémont-Infilco Ltée - Degrémont Infilco Ltd. (hereinafter Degrémont), the registered owner of the above-referenced trade-mark registration.
The trade-mark BIRD Design (shown below) is registered for use in association with the following wares:
1. Appareils pour traitement biologique d'eaux résiduaires, décanteurs, filtres, appareils de dosage de produits chimiques et échangeurs d'ions utilisés comme adoucisseurs d'eau et déferriseur.
2. Appareils de traitement industriel d'ordures ménagères, appareils de dégazage, appareils de production d'ozone et accessoires de piscine, à savoir: filtres à sable, filtres à terre diatomé, drains de plancher de piscine, écumeurs de surface, pièces de refoulement d'eau traité, adapteurs pour vacuum pour balais de piscine, balais de piscine, réflecteurs submersibles, boîtes de contrôle électrique pour réflecteurs, échelles, supports de tremplin, appareils doseurs de produits chimiques.
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In response to the notice, the registrant furnished the affidavit of Jean-Yves Bergel, Technical Director of the registrant. Each party filed a written argument and was represented at the oral hearing.
In his affidavit, Mr. Bergel states that the parent company Degrémont S.A. was founded approximately 60 years ago in France and the registrant, being an affiliated company thereof, has been operating in Canada since 1960. He submits that the registrant has been using the trade-mark continuously since that date; that since 1960, the registrant has created, manufactured and installed hundreds of “usines de traitements” everywhere in Canada for industries and municipalities in association with the trade-mark. He encloses copies of the annual reports for the years 1995 and 1987. He specifies that the registrant “conçoit, realise, et rénove des installations d’eau potable” for small and large cities. He explains that his company supplies and installs the equipment for new stations and renovates “les usines de traitement des eaux.” He adds that they are “les chefs de file dans le traitement et la purification des déchets liquides, odeurs et valorisation des boues.” He submits that they also supply process and equipment “pour la clientèle industrielle.” For example, he states that his company has the equipment and the technology “nécessaires à la création de l’eau ultra-pure pour l’industrie de l’électronique ou le traitement de la couleur de l’eau pour la production de papier.” He provides Canadian sales figures for the years 1993 to 1995 “répartis par zones géographiques et par types de familles d’équipments.” and he specifies that sales in Canada represent 90% of the sales figures for America. He encloses copies of invoices and explains what the invoices represent. He attaches “des photos représentatives correspondant à des unités et installations de sa Compagnie démontrant la marque” (Exhibit E). As Exhibit F he attaches what he describes as “un échantillon de plaque d’identification utilisée sur nos equipements depuis plusieurs années.” He also encloses “un échantillon de busette portant la marque utilisée dans nos filtres” (Exhibit G). As well he encloses “un échantillon de feuille à dessin” (Exhibit H). As Exhibit I he encloses advertising material and as Exhibit J, brochures which he states have been distributed in Canada.
The requesting party’s main arguments are that any use shown of the trade-mark is as a corporate identifier; further, it submits the evidence fails to show that the trade-mark was associated with any of the registered wares in the manner required by Section 4(1) of the Act.
The registrant, on the other hand, submits that the bird design is being used as a trade-mark and is being used in the manner prescribed by Section 4(l) of the Act. It states that the nature of the registrant’s products and the fact that they are installed on site are factors to be considered in determining whether the required notice of association has been given to the purchaser of the wares. It adds that the photos provided in evidence are representative of the manner the trade-mark is associated with the registered wares.
Concerning the evidence furnished, I am satisfied that it is sufficient to permit me to conclude that sales of “appareils pour traitement biologique d’eaux résiduaires, décanteurs, filtres, appareils de dosage de produits chimiques et échangeurs d’ions utilisés comme adoucisseurs d’eau et déferriseur” were made in the normal course of trade during the relevant period. I arrive at this conclusion having regard to the evidence as a whole, and particularly, Mr. Bergel’s description of the invoices together with his statement that these wares were sold during the relevant period.
I would add, however, that concerning the wares “filters”, although I am prepared to accept that sales of “filters” were made as shown by the invoices dated 29/05/95 and 31/10/94, I do not accept that the invoices show sales of the wares categorized as “accessoires de piscine, à savoir: filtres à sable”.
The issues now are whether the trade-mark has been shown to be in use in association with such wares as a trade-mark and whether it was associated with such wares in a manner that would satisfy the provisions of Section 4(1) of the Act.
I agree with the requesting party that as used the mark would probably be perceived as a corporate identifier, particularly since it often appears beside the registrant’s name. However, I also agree with the registrant that the design could also probably be perceived as a trade-mark distinguishing the registrant’s wares. A trade-mark is defined in Section 2 of the Trade-marks Act as a mark that is used by a person for purposes of distinguishing or so as to distinguish wares or services manufactured, sold, leased... by him from those manufactured , sold, leased... by others. The bird design, in the present case, does appear to be used by the registrant to distinguish the wares it manufactures, supplies, and installs from the wares of others. The fact that the registrant may also be using other trade-marks in association with its wares is not prohibited by the Act. In my view, the bird design appears to be used as a “house mark” for all of the registrant’s wares while the other trade-marks appear to be used to distinguish specific products of the registrant. Consequently, I am satisfied that the present trade-mark is being used as a trade-mark for wares.
Concerning whether notice of the association between the trade-mark and the wares is given to the purchaser at the time of transfer of the wares in the normal course of trade, I agree with the registrant that the nature of the registrant’s wares is an important factor to take into consideration in this case. As pointed out by the registrant, the wares are not the type of wares one would generally find in a store. Further, it appears from the evidence that the wares would probably be seen by the purchaser only once installed. What the evidence shows is that the trade-mark and the wares would have been brought to the attention of the purchaser by way of the brochure distributed by the registrant to its customers or prospective customers. Further, the registrant’s customers would probably have noticed the trade-mark appearing at the top of the invoices and on signage on site where the wares have been installed. Considering all of the above, I am prepared to conclude that the trade-mark was so associated with the wares as to give the notice specified in S. 4(l) of the Act.
In arriving at this conclusion, I had regard to the case BMB Compuscience Canada Ltd. v. Bramalea Ltd., 22 C.P.R. (3d) 561. In that case, the Court concluded that “software forming part of a computer system” was not the type of object, such as a pair of socks, to which one can simply attach a label and which label is clearly visible. The Court went on to quote the following from Fox Canadian Law of Trade Marks and Unfair Competition, 3rd ed. (1972) from pp 59 and 60:
. . . it is not essential that the trade mark be actually attached to the wares themselves or that it be placed on the packages in which they are distributed. That, of course, constitutes good trade mark use, but it is also sufficient if the trade mark is in any other manner so associated with the wares that notice of the association is given to the person to whom the property in or possession of the wares is transferred. Any of these acts must, by definition, take place at the time of the transfer of the property in or the possession of the wares or there is not adequate trade mark use . . .
There is no reason for supposing that use in advertising, circulars, pamphlets, etc. will not constitute use of the trade mark within the meaning of the section if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, the trade mark is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred . . .
. . . so long as the use of the mark is so associated with the wares as to give the notice specified in the section, it is suggested that it is immaterial whether the trade mark appears on the wares themselves, on their wrappers or containers, or is associated with them on show cards, display units, or delivery vans, or in price lists, circulars or advertisements.
At page 570 of the decision, the Court concluded:
I am satisfied that prior to and after the sale and transfer of the Imaginet system the NETMAIL mark and program was shown to and seen by the representatives of George Weston Limited. The applicant had demonstrated its wares in association with the trade mark both before and after the sale to George Weston Limited. This is adequate trade mark usage. If this were not so, no company would be able to sell its software and protect its trade mark unless it delivered to the purchaser of the software the actual software, labelled with the trade mark at the time of giving of possession. It would, in effect, not be possible any longer for companies wishing to protect their trade marked software to install it either at the vendor’s place of business or the purchaser’s place of business because there would be no proper use of the trade mark and the software vendor would lose the trade mark protection of his product. This seems not to be in accord with sound business principles.
In the present case, the registrant’s wares are special types of wares, that is they are not the general type of wares one would expect would be sold with a label or a tag bearing the trade-mark. Further, it may be that the registrant’s customers do not even see the wares prior to their installation. Rather, as I have already concluded, the registrant’s prospective customers and customers would problably have seen the present trade-mark on the brochures, at the top of the invoices and, later, in association with the equipment once installed. Concerning the brochure annexed as Exhibit J to the Bergel affidavit, Mr. Bergel has stated that 500 copies have been distributed each year in Canada since at least the last three years preceding the date of his affidavit (his affidavit having been sworn January 8, 1997). The brochure contains information regarding equipment installed at different locations and the trade-mark can be seen on signage and on some of the equipment.
Having regard to the evidence as a whole, I conclude that use of the trade-mark has been shown in association with the wares “appareils pour le traitement biologique d’eaux residuaires, decanteurs, filtres, appareils de dosage de produits chimiques et echangeurs d’ions utilises comme adoucisseur d’eau et deferriseur” and that these wares ought to be maintained on the registration. However, as I am of the view that the evidence is insufficient to show use of the trade-mark in association with the remaining wares in the registration, such wares will be deleted therefrom.
Registration No. TMA 149,098 will be amended accordingly, in compliance with the provisions of Section 45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 29th DAY OF MARCH 2000.
D. Savard
Senior Hearing Officer
Section 45