Trademark Opposition Board Decisions

IN THE MATTER OF A SECTION 45 PROCEEDING
regarding registration No. 240,840 for the trade-mark
SKOR standing in the name of

Maher Inc.

The trade-mark SKOR was registered under No. 240,840 in the name of

Maher Inc., on March 7, 1980, for its use in relation with "boots

and shoes". On October 26, 1992, at the request of the firm of
Smart & Biggar, a notice was issued pursuant to section 45 of the

Trade-marks Act to the registrant.

In response to the notice, Kevin Huckle Investments Inc. (hereafter

KHI Inc.) submitted the affidavit of its President, Mr. Kevin
Huckle, dated April 16, 1993. The requesting party alone filed a

written submission, while KHI Inc. submitted on March 11, 1994 a

supplementary affidavit of its President.

By letter dated April

5, 1994, I advised KHI Inc. that the second affidavit was to be

considered supplementary evidence and, as such, could only be filed
if a retroactive extension of time was requested and granted under

section 47(2) of the Act. By the same letter KHI Inc. was given

one month to present such a request.

KHI Inc. did not reply.

Consequently, the only evidence deemed to have been filed in
relation to the present proceedings consists of the April 16, 1993

affidavit. An oral hearing was not conducted.

An additionnal difficulty in the present case is that the evidence

of use is by a person other than the registered owner.

It is

admitted that in a section 45 proceedings, evidence of use by a
third party entitled to be registered as the owner is admissible
provided that it is established that this person was so entitled at
the date of the notice.

In his affidavit, Mr. Huckle states that on or about June 25, 1992,

KHI Inc. purchased the trade-mark from the registered owner.
However, the affidavit offers no evidence in support to that

statement. It appears instead from the trade-mark file that, on
the same date that it filed the affidavit, KHI Inc. tentatively

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filed with the Trade-marks Office copy of an assignment, along with

a request to be recorded as current owner of the trade-mark. By

letter dated June 1st, 1993, the Assignment section of the Office
informed KHI Inc. that the change in title could not be recorded
for the following reasons:

1) A search of the register revealed the existence of an
associated trade-mark which, in view of section 15(3) of the

Act, had to be assigned at the same time, and

2) the assignment document submitted was merely a photocopy
while the Office needed an original or a notaria11y certified

copy.

As of today, KHI Inc. has not filed with the Trade-marks Office

satisfactory evidence that would establish its title in the trade-

mark nor did it give any indication as to when it intended to do

so. As it also did not reply to the official letter of April 5,

1994, it would appear that the owner might have lost interest in
its trade-mark.

What ever the case is, I must proceed with the decision on the

finding that the sole evidence filed in the present case seeks to

show use of the trade-mark by a third party which did not establish

its right to be registered as the owner of the trade-mark. In

other words, no evidence of use by the registered owner of the

trade-mark, a licensee thereof, or a person entitled to be recorded

as the owner has been filed in response to the section 45 Notice.

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Moreover, since it is the alleged owner'~ own inaction that

prevented the change in title from being recognized and recorded,

I am of the view that this does not qualify as "special

circumstances" as found in Baume & Mercier S.A. v. Brown¹and

George Weston Ltd. v. Sterling & Affi1iates²•

1(1985) 4 C.P.R. (3d) 96 (F.C.T.D.).
2(1984) 3 C.P.R. (3d) 527 (F.C.T.D.).
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I would also point out that, had I been satisfied that KHI Inc.

were entitled to be registered as the owner of the trade-mark, I

would have been at trouble finding that the evidence showed use by

KHI Inc.

Indeed, Exhibit B contains one invoice for the sale of shoes dated

within the relevant time period. This invoice is made in the name

of International Footwear Management Inc. (thereafter IFM Inc.) to

Joggers/First Effort.

Mr. Huckle states in paragraph 7 of his

affidavit that KHI Inc. "contracted with IFM Inc. to market a line

of boots and shoes bearing the name SKOR". He further states in

paragraph 8 that "IFM Inc. has been providing this service since

July 1992 ••• ". However, is IFM Inc. acting as a mere distributor

for KHI Inc.? If it is a manufacturer, is it a licensee of RHI

Inc. in the meaning of Section 50(1) of the Act? The affiant does

not sufficiently explain what the relationship is between IFM Inc.
and KHI Inc. so that it can be said that use by the former amounts

to use by the latter pursuant to the Act.

In view of the above, Registration No. 240, 840 will be expunged in

accordance with section 45(5) of the Trade-marks Act.

DATED AT HULL, QUEBEC, THIS 25^th  DAY OF NOVEMBER 1994.

Senior Hearing Officer

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