SECTION 45 PROCEEDINGS
TRADE-MARK: OUTRAGE
REGISTRATION NO.: 424,267
On November 4, 1999, at the request of Messrs. Barrigar & Moss, the Registrar forwarded a
Section 45 notice to GORDON 7 S.R.L., the registered owner of the above-referenced trade-
mark registration.
The trade-mark OUTRAGE is registered for use in association with the following wares:
Jackets, raincoats, pants, coats, overcoats, shorts, tights, shirts, caps, bathing costumes,
bikinis, trousers, overalls, sweatshirts, bermudas, belts, suspenders.
In response to the notice the affidavit of Alessandro Beretta together with exhibits has been
furnished. The registrant alone filed a written argument. An oral hearing has not been requested
in this case.
In his affidavit, Mr. Beretta states that Gordon 7 S.R.L. changed its name to Gordon S.p.A. on or
about April 30, 1999 and he encloses a copy of the change of name document. He then states that
Samas Italy S.p.A., the owner until May 18, 1998, was given permission by way of a license to
continue to sell and distribute the wares in Canada under the trade-mark OUTRAGE. As Exhibit
C, he encloses copies of invoices showing sales of various ski and sportswear such as jackets,
pants, coats, overcoats, tights, caps, trousers, overalls.
Concerning the use by Samas Italy S.p.A. although such company has been licensed to use the
trade-mark in association with the wares there is no statement in the affidavit that the registrant
has under the license direct or indirect control of the character and quality of the wares as
required pursuant to Section 50(1) of the Trade-marks Act. However, Samas Italy S.p.A. is the
registrant's predecessor-in-title, and it was the registered owner until May 18, 1998. As some of
the invoices bear dates in 1997 and 1998 (prior to May 18), I accept that these invoices show
sales by the rightful owner during such period.
I also conclude that use of the trade-mark has been shown but only in association with the wares
"jackets, pants, coats, overcoats, tights, caps, trousers, and overalls" the wares listed in paragraph
4 of the affidavit.
Concerning the manner the trade-mark was associated with the wares at the time of the transfer
in or possession of the wares, I note that each invoice bears the notation "linea (line)
OUTRAGE". Further, I note that all of the invoices are addressed to the same client. I am
prepared to accept that such notation would have been brought to the attention of the customer
when such customer received the invoices and compared the items it received with the items
listed on such invoices. In my view, upon receipt of the items and the invoices the customer
would be aware that the items it purchased were part of the OUTRAGE line of clothing sold by
Samas Italy S.p.A. Consequently, I conclude that the notice required pursuant to Section 4(1)
was given to the purchaser of the wares at the time of the transfer in or possession of the wares,
in the normal course of trade.
In view of the above, I conclude that the trade-mark registration ought to be amended so that the
statement of wares will read: "jackets, pants, coats, overcoats, tights, caps, trousers, and
overalls" .
Registration No. 424,267 will be amended accordingly in compliance with the provisions of
Section 45(5) of the Act.
DATED AT HULL, QUEBEC, THIS 17TH DAY OF MAY 2001.
\
Senior Hearing Officer
Section 45 Division
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