SECTION 45 PROCEEDINGS
TRADE-MARK: ENGINEERED CEMENTS
REGISTRATION NO.: TMA 428,238
On October 22, 1999 at the request of the Canadian Council of Professional Engineers, the Registrar forwarded a Section 45 notice to Ardex Inc., the registered owner of the above-referenced trade-mark registration.
The trade-mark ENGINEERED CEMENTS is registered for use in association with the following wares: modified cements used by contractors in interior commercial and retail construction to level, smooth and repair concrete surfaces such as floors, walls and columns.
In response to the notice, the affidavit of Lori Pietsch Angelo has been furnished. The requesting party alone filed a written argument. An oral hearing has not been requested in this case.
In her affidavit, Ms. Angelo states that the registrant manufactures cements for use by contractors to level, smooth and repair concrete surfaces such as floors, walls and columns and she attaches as Exhibit “A” two samples of the bags used to package the cement. She indicates that Durox Floor Accessories Limited of Downsview, Ontario, Canada, is a distributor for her company’s goods in Canada. As Exhibit B, she attaches 8 random samples of invoices for sales made in 1999 and submits that sales in Canada since 1998 have been approximately $314,000. (U.S.).
The requesting party has raised several arguments. It submits that there is no evidence that the products for which sample bags have been furnished are products listed in the invoices; nor is there evidence that any of the products listed in the invoices bore the mark ENGINEERED CEMENTS. Further it adds that the bags furnished do not satisfy Canada’s Consumer Packaging and Labelling Act. It adds that the evidence fails to show use of the mark ENGINEERED CEMENTS alone; that the mark displayed by the registered owner has always been ARDEX ENGINEERED CEMENTS, therefore a composite mark. It submits that the words ENGINEERED CEMENTS are used in a descriptive sense and the failure of the registrant to ever use the mark ENGINEERED CEMENTS separately from the word ARDEX and the lack of an independent commercial impression generated by ENGINEERED CEMENTS creates a composite mark, and as such the mark “per se” was never used in Canada. Further it adds that the manner the mark is displayed at the top of the invoices, it gives the impression that it is used as the company’s trade name and therefore cannot be evidence of use of the mark in association with the products.
Having considered the evidence and the arguments of the requesting party, and although I am of the view that the Angelo affidavit could have been more specific in some respects, I find it is sufficient to permit me to conclude that the trade-mark was being used in Canada during the relevant period.
Concerning the products listed on the invoices, although it would have been preferable if Ms. Angelo had clearly indicated which of the products therein had been sold in bags similar to those represented in Exhibit A, I am of the view that it can be inferred that the product “SD-F Feather Finish underlayment” listed on the invoices is a reference to the product sold in the bag marked “ARDEX SD-F Feather Finish”. Although the term “ARDEX” does not appear in the body of the invoice as part of the product description, it appears at the top of the invoices and therefore it provides the link with the product. Concerning the term “underlayment” as part of the description of the product, I note that on the side of the bag under “Notes”, it is indicated that the product is “intended for interior underlayment use only”. Consequently, the term “underlayment” merely describes the intended use of the product. In view of the above, I am prepared to accept that the bag marked “ARDEX SD-F Feather Finish” shows the manner the product “SD-F Feather Finish underlayment” was packaged when sold in Canada. The trade-mark ENGINEERED CEMENTS appears on the bag as follows:
It is clear that more than one trade-mark is being used by the registrant on the packaging for the wares. It is also clear from the jurisprudence that the Trade-marks Act does not preclude the use of more than one trade-mark on a packaging (see A.W. Allen Ltd. v. Warner-Lambert Canada Inc., 6 C.P.R. (3d) 270). The issue is whether the trade-mark ENGINEERED CEMENTS
“per se” is being used. The requesting party has submitted that any use shown is use of the composite mark ARDEX ENGINEERED CEMENTS and in support of its argument it relies on Registrar of Trade Marks v. Compagnie Internationale pour l’Informatique CII Honeywell Bull, 4 C.P.R. (3d) 523 at 525 (F.C.A.), and John Labatt Limited v. Molson Breweries a Partnership, unreported F.C.A., February 2, 2000, Docket A-428-98 at pages 26-27.
In my view, the present case can be distinguished from the cases cited by the requesting party. In CII Honeywell Bull, the registered trade mark was BULL and the owner was using the trade-mark CII HONEYWELL BULL all words in the same size and of the same appearance. The Court in that case concluded that the use of CII HONEYWELL BULL was not use of “BULL” per se. In the Molson case, the trade-mark that the owner was trying to register was “EXPORT” and the owner was relying on Section 12(2) of the Act to try and show that the trade-mark EXPORT had been so used as to have become distinctive. However, the court concluded that the word EXPORT never appeared alone but in conjunction with the words “Molson” or “Molson’s” and that all the words were of the same size and of the same appearance.
By contrast, in the present case, the words ENGINEERED CEMENTS as they appear on the bags, are in black letters and are followed by the ® symbol. The word ARDEX is in the colour red and is surrounded by a red outline. In my view, the words ENGINEERED CEMENTS in black do create a separate commercial impression from the word ARDEX in red, and would probably be perceived as a separate trade-mark from ARDEX. The different colours, the fact that the word ARDEX appears within a design and the placement of the ® symbol serve to make the words “ENGINEERED CEMENTS” as well as the word “ARDEX” stand out on their own. In my view the public would probably perceive the trade-mark ARDEX, the trade-mark ENGINEERED CEMENTS, as well as the composite mark ARDEX ENGINEERED CEMENTS as the trade-marks being used.
The requesting party argues that the expression “ENGINEERED CEMENTS” appearing thereon is descriptive and would not be perceived as a trade-mark. I find it arguable whether the expression “ENGINEERED CEMENTS” is descriptive of the wares, however, what the bag shows is that the registrant clearly identifies it as a trade-mark, the words being followed by
the ® symbol. In my view, the message provided to the public is that it is a trade-mark and therefore it would probably be perceived as such by the public.
The requesting party has also raised the arguments that the “bags” do not conform to the Consumer Packaging and Labelling Act, and this provides a strong indication that the bags displayed in “Exhibit A” were never used in Canada. In my view this argument is similar to that which was raised in the case Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr, 21 C.P.R. (3d) 483. In that case the Court stated that it was not open to the Registrar in this kind of proceeding to make a pronouncement as to whether a label conforms to other laws. In the present case, the Angelo affidavit must be taken at face value and although it lacks specificity, it seems to relate the facts concerning the manner the wares are packaged and sold in Canada. To conclude that the bags shown in evidence are not bags used to package the wares sold in Canada would be to conclude that the affiant was trying to mislead the Registrar and I can see no basis for reaching such a conclusion.
When the evidence is considered in its totality, and when it is given a fair reading, I find it sufficient, although barely, to permit me to conclude that the trade-mark was in use in Canada during the relevant period in association with the registered wares.
In view of the above, I conclude that the trade-mark registration ought to be maintained.
Registration No. TMA 428,238 will be maintained in compliance with the provisions of Section 45(5) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 30th DAY OF MARCH 2001.
D. Savard
Senior Hearing Officer
Section 45