SECTION 45 PROCEEDINGS
TRADE-MARKS: FMC; FMC Design; FMC Design
REGISTRATION NOS.: 196,817, 221,518 and 216,807
On November 1, 2002, at the request of Financial Models Company Inc., the Registrar forwarded separate Section 45 notices to FMC Corporation, against each of the above-referenced trade-mark registrations.
The trade-mark FMC, Registration No., 196,817 is registered for use in association with the following wares:
(1) Vehicle mounted power shovels, power hoes, excavators, hoists, cranes, pile drivers, fire engines, smoke ejector units, squad and rescue units, hydraulic sewer cleaners, aircraft de‑icers; airliner drinking water, lavatory and jet engine water servicing units; crop harvesters, tree trimming machines; spraying, dusting and granular chemical distributing machines; bin handling machines, live poultry transporters, mowers, tillers, snow casters, stalk shreaders, and cutters; tractors.
(2) Swivel joints and ball joints for movably interconnecting conduits and parts and packing for such joints; couplers for interconnecting mechanical power transmitting members and for interconnecting fluid conducting lines and conduits, and parts for such couplers; mechanical valves for controlling the passage of fluid material; unions and parts and fittings therefor.
(3) Washing and cleaning machines and parts and fittings therefor; machines for emptying loosely contained material from containers such as boxes, bins, drums or rail road cars by tilting or inverting the containers or by flotation upon submerging such containers into liquid; machines, and apparatus for handling cases and cartons namely, erecting, opening, positioning, loading, filling, closing, and gluing and sealing cases and cartons, and parts therefor; machinery for feeding objects, articles, bulk material and packages, and the controls, fittings and parts therefor; machines for processing and treating material, objects and articles and the controls, fittings and parts therefor; material handling machines for the loading and/or unloading of pallets, ships, barges, railroad cars, aircraft and dehydrators, and the controls, fittings and parts of such machines; nailing machines and the controls, fittings and parts therefor, nailing machine systems; machines for making, filling and sealing bags and pouches of heat sealable material, and the controls, fittings and parts therefor; machines and equipment for operating mechanical valves.
(4) Pumps for handling fluent materials and pumping systems for such material. Controls for pumps and pumping systems.
(5) Conveyors and conveyor systems, and their controls, fittings and parts; elevators and elevator systems and the controls, fittings and parts therefor.
(6) Continuous and batch type cookers and coolers for cooking, sterilizing and/or cooling food products in sealed containers, and the controls, fittings and parts therefor.
(7) Wheels, rollers, sprockets, pulleys, sheaves and gears; driving chains, conveyor chains and chain cables.
(8) Fluid conducting hose.
(9) Seals and packings and parts therefor.
(10) Airliner servicing and ground support equipment namely, liquid servicing equipment, handling equipment for food, baggage and cargo, and washing and de‑icer equipment.
(11) Automotive servicing equipment namely, headlight alignment testers, wheel balance testers, wheel alignment testers, wheel aligning and balancing tools, brake shoe grinders, body and frame straighteners and tools, high pressure automobile washers, brake drum lathes, hydraulic brake system bleeders, brake cylinder honing equipment, brake servicing tools, vehicle jacks, tire changing apparatus, brake shoe riviters and reliners, brake shoe and drum gauges, wheel spinners, vibration detectors, steering wheel turners, brake shoe bonding equipment, brake testing equipment, unitary brake servicing shops, disc brake lathes and grinders, support racks and hoists for vehicle inspection and alignment purposes, vehicle steering linkage and wheel suspension parts and servicing tools, vehicle timing chains and sprockets, and dynamometers for testing automotive vehicles.
(12) Construction and mining equipment namely, forms for casting concrete, hydraulic excavators, excavating machinery and excavators namely, crab bucket excavators, clamshell excavators, orange peel excavators, dragline excavators, trench excavators, and attachments and parts therefor, power operated hoes, pile drivers, power operated cranes and shovels, bucket and dipper lips and teeth, dipper trips and parts therefor, power operated drills, sanders, grinders and hacksaws, and vibrators for vibrating the forms for casting concrete and controllers for such vibrators.
(13) Electronic or electrical components and equipment namely, rectifiers, infra‑red heating elements, vibrators and their cases, parts for vibrators, electrical switches, solenoids and magnets.
(14) Agricultural and horticultural equipment namely, root crop digging, topping, cleaning, and bagging machines, legume hulling and separating machines, viners, tree trimming machines, sprinkler irrigation systems and fittings therefor, controls for sprinkler irrigation systems, lawn mowers, earth tilling machines, tractors and grounds maintenance vehicles, implements, attachments and fittings for tractors and grounds maintenance vehicles namely, wheel weights, head‑light kits, brake kits, power take‑off assemblies, rotary flails, rotary cutters, mowers, plows, cultivators, seeders, stalk shredders, snow plows and casters, harrows, disks, grader blades, drags, fertilizer distributors, hitches, utility carts, ditchers, wheel and tire assemblies, and planting bed shapers; wind machines for frost protection, power lawn mowers, snow casters, chemical dust applicators, sprayers for applying liquid chemical mixtures, fittings and attachments for sprayers and dust applicators, granular chemical applicators, tree supports, and augers.
(15) Fire fighting equipment namely, liquid spray projection and fog producing fire fighting units, extension ladders for fire trucks, fire monitors, nozzles and spray guns, smoke ejector units and squad and rescue units.
(16) Food preparation and processing equipment namely, juice extractors, machines for coring, and seed celling fruit, machines for coring and peeling fruit, trimming machines, finishers, pulpers, hot water, steam and hydraulic pressure blanchers, combined blanching and cooling machines, stemmers, pitters, mechanical, steam, and liquid chemical fruit and vegetable peelers, rotary brush type cleaners and polishers, dry cleaners, bean snipping machines, scalders, juice pasteurizers, fruit and vegetable sliver eliminators, steamers, dehydrators, pit separators, vegetable bunch typing machines, machines for declustering fruit and vegetables, fruit half turnover machines, tenderness testers, mixers, juice strainers, water and trash eliminators, container fillers, container labeling machines, machines for making and packaging frozen articles, machines for dry coating frozen articles, food mixer‑cookers, preheaters, exhaust boxes, container and produce drainers, syrupers and briners, supply tank and return water cleaners, heating medium circulating coils, ice crushing, slinging, salting and handling machines, juice processors, corn huskers, corn cutters, and corn silkers.
(17) Commercial kitchen equipment namely, waste disposers, serving portion food forming achines, and utensil washers.
(18) Material handling and container moving equipment namely, parts assembling machines, belt trippers, belt conveyor idlers and pulleys, cable winding drums, vibrating floats and compactors, winches and windlasses, haulage machines, car belt conveyor idlers and pulleys, power operated packers, shakers, joggers and jolters and their controls, reclaimers, stackers, unstackers, takeups, upenders, downenders, transfer devices, receivers, hoists, lifts, power operated cranes and derricks, hookblocks, slings, grapples and tongs and parts therefor, industrial tables including vibrators, hoppers, bins and containers, article accumulators, article aligners, powder handling container filling apparatus, continuous and batch mixers, weighing machines, bin handling systems, line dividers, weight checking and correcting apparatus, vibrators and their controls for use in equipment such as vibratory polishers, troughs, bins, hoppers, conveyors, elevators, industrial feeders, feeder conveyors, test sieves and screens and such vibratory equipment for use in performing such operationss as polishing and sieving of various materials, and the feeding, conveying, elevating, filling, batching, screening, and mixing various materials, and vibratory feeders, feeder conveyors, troughs and hoppers with vibrator attachments and their controls.
(19) Material processing equipment namely, apparatus for heating cooling or drying including agitation and conveying, machinery for cleaning, classifying, crushing and blending and handling, metal chip washing, de‑oiling and handling coal equipment, and revolving and vibrating screens.
(20) Mechanical power transmission equipment namely, backstops, base plates, bearings, trolleys, bearing blocks, brakes, clutches, combination clutch‑brakes, shaft collars, eccentric drives, eccentric and crank discs, gear motors, shaft bearing seals, shafting, speed reducers, variable speed drives, fluid drives, gear drives, combined electric motor and hydraulic coupling driives, variable pressure hydraulic systems, electrohydraulic and electromechanical servo controls and parts therefor, and hydraulic control systems and parts therefor.
(21) Fluid handling and oil industry equipment namely, loading arms and loading arm systems, and parts and controls therefor, line blinds, casing hangers and parts, fittings and related tools therefor, casing heads and parts therefor, chokes and choke adapters and parts therefor, christmas trees and fittings and parts therefor, lubricants, thread and tool joint compound, underwater completion connectors and parts therefor, flow controls and parts therefor, mud‑mixing guns and parts therefor, circulating heads and parts therefor, pipe manifolding jumpers, tubing hangers and parts therefor, tubing heads and parts and fittings therefor, tubing head adaptors and fittings and parts therefor, well completion assemblies and parts therefor, quick connect and disconnect for conduits, emergency quick disconnect for conduits, dock risers, blowout preventers and parts therefor, bull plugs, wellheads, wellhead assemblies and systems and parts therefor, swing joints, swing joint manifolds, laterals, fuseable plugs, pumping heads and parts therefor, tubing wet boxes, bushings, flow beans, cage nipples, nipples, bottom hole test adapters and parts therefor, packoffs, packoff flanges and parts therefor, mud cross adapters, flange protectors, companion flanges, ring gaskets, bottom hole wash nipple adapters and parts therefor; test plugs for blowout preventers, bowl protectors for casing heads, wash nipple adapters and parts therefor, bottom hole test wash nipple adapters and parts therefor, fittings including crosses, tees and ells, back pressure valves and fittings, reinstallation nipples and parts therefor, adapter flanges and parts therefor, strippers, valve removal plugs and parts therefor, hanger couplings and parts therefor, braden heads and parts therefor, gauge cocks, and specialized hand tools.
(22) Packaging and box machinery namely, box forming and making machines, cylinder forming machines, set‑up box enders; flange benders, gluers, sealing machines, box shapers, box stayers, thumb‑hole cutters, vacuum packaging machines, and wrapping machines.
(23) Packing house and processing equipment namely, water absorbers and eliminators, washing, drying and polishing machines and parts therefor, baggers, box car load compacting machines, screw presses, box making machines, container and article driers, counting machines, citrus fruit polishers, egg loading, washing, drying, cracked shell detecting, weighing, counting, blood spot detecting and grade packaging and carton closing and dating apparatus, egg case filler flat washers, egg handling systems, lowering mechanisms, article marking machines, box filling and packing machines, work tables, packing stands, box stampers, label applying machines, box sterilizers, box lidding machines, box strapping machines, box presses, automatic and computerized material handling units for use in warehousing operations, their controls, fittings and parts, strapping material (non‑metallic), strapping tools and fittings, can unscramblers, color and protective coating applicators for fresh fruit and vegetables, sterilizing fluid applicators for sterilizing fresh fruit and vegetables, protective processes for treating fresh fruit and vegetables, solutions and materials for treating fresh fruit and vegetables to enhance their natural beauty and prolong their fresh condition, corn trimming and packaging machines, supply and processing tanks, clamp trucks, and platform trucks.
(24) Paper and film converting equipment namely, paper product cutters, embossers, laminators, waxers, sheeters, paper folding machines, printing presses, bag making machines, and winders.
(25) Equipment for processing and treating water, sewage and industrial waste namely, pumps, aeration equipment, aerators, digestion equipment, distributors, floculators, grit collectors and washers, mixer collectors, flash mixers, screen and screening apparatus, sludge bed cleaners, sludge collectors, sludge heaters, thickners, travelling water screens, sewage samplers, underground lift stations, water intake screens, settling tanks including apparatus for removing and collecting floating or settled material, packaged sewage treatment plants.
(26) Manually and power operated actuators and valve operators.
The trade-mark FMC Design, Registration No. 221,518 (shown below) covers the following wares:
(1) Chemical products used in industry, science, photography, agriculture, horticulture, forestry; namely; Alkalis, namely: soda ash and sodium sesquicarbonate barium chemicals, namely: barium carbonate, barium nitrate and barium sulfate, microcrystalline cellulose (for general use), chlorine containing products, namely: potassium dichloroisocyanurate, sodium dichloroisocyanurate, trichloroisocyanuric acid, and sodium dichloroisocyanuate dihydrate, organic intermediate chemicals, namely: methallyl chloride; magnesium chloride, peracids, namely: peracetic acid, perborates, namely: sodium perborate monohydrate and sodium perborate tetrahydrate, peroxides, namely: calcium peroxide, hydrogen peroxide and zinc peroxide, persulfate, namely: ammionium persulfate, potassium persulfate and sodium persulfate, phosphorous chemicals, namely: dipotassium phosphate (anhydrous), disodium phosphate (anhydrous), glassy phosphate, monopotassium phosphate (anhydrous), monosodium phosphate (anhydrous and anhydrous absorptive grade), phosphoric acid (75 percent, 80 percent, 85 percent, and super 105 percent and 115 percent), phosphorous oxychloride, potassium tripolyphosphate (anhydrous), sodium acid pyrophosphate (commercial and chemical grades), sodium hexametaphosphate, sodium tripolyphosphate (anhydrous), tripotassium pyrophosphate (anhydrous), tetrasodium phosphate (anhydrous), tripotassium phosphate (anhydrous), trisodium phosphate (anhydrous and crystals), plasticizers, namely: cresyl diphenyl phosphate triaryl phosphate, tributoxyethyl phosphate, tributyl phosphate, tricresyl phosphate, trixylenyl phosphate and epoxideized soybean oil, plastics materials, namely: diallyl isophthalate (monomer), diallyl phthalate (monomer), thermosetting resins, such as prepolymer of diallyl phthalate resin and prepolymer of diallyl isophthalate resin, rocket propellants, liquid, namely: hydrogen peroxide 90 percent, sodium sulfate, namely: anhydrous sodium sulfate and Glaubers salt (anhydrous), sodium sulfide, strontium chemicals, namely: strontium carbonate and stronium nitrate, leavening agents and formulations for baking powders and creams based upon sodium acid pyrophosphate, cyanuric acid, sheets and films of regenerated cellulose or cellulosic materials, such as cellulose ethers or cellulose esters and mixtures thereof, artificial and synthetic resins, plastic in the form of powders, liquids or pastes for industrial use, fertilizers, namely: phosphatic fertilizer solution.
(2) Bleaching preparations, namely: dry bleach chemicals.
(3) Pharmaceutical, veterinary and sanitary substances, namely: disinfectants, preparations for killing weeds and destroying vermin, namely: fungicides, herbicides (weed and brush killers), insecticides and pesticides (pest control agents), microcrystalline cellulose for use in pharmaceuticals and dietetic foods.
(4) Wrought and partly wrought common metals and their alloys, namely: buckles, ties or seals for securing strapping.
(5) Machines and machine tools, namely: portable dispenser for package strapping material, strapping machines.
(6) Hand tools, namely: manually operated tools for securing strapping about a package, carton, container, bale or the like.
(7) Plastics in the form of sheets, being for use in manufacture, namely: sheets and films of plastic material.
(8) Strapping made of fibrous or plastic materials or cominations thereof.
(9) Agricultural, horticultural and foresty products, namely: seeds.
|
|
The trade-mark FMC Design, Registration No. 216,807 (shown below) covers the following
wares:
(1) Tanks.
(2) Protective coatings for fruit and vegetables.
(3) Chemical decay inhibiting material for use on fresh fruit and vegetables to prolong their fresh condition.
(4) Lubricants; link chains; metal forms for casting concrete; hoppers; work tables; joints; couplings and connectors for fluid conducting lines; fluid conducting hose of articulated sections of rigid conduit; loading arms; pipe unions; pipe fittings; casing hangers; casing heads; chokes and choke adapters; circulating heads; tubing hangers; tubing heads; anti‑friction bearings; agricultural implements of the larger kind; wind machines; conveyor belts; drying machines; bagging and sacking machines; bag making machines; hydraulic sewage cleaning apparatus; valves; vehicle body and frame straighteners; mechanical handling machines, comprised of conveyors, palletizers, depalletizers, dumpers, feeders, dispensers, elevators, sizers, parts assemblers, nailers, joggers, pile drivers, cranes, article orientators, fillers, vibrators, comminuters, screeners, can openers, screw presses and pulverizers; belt conveyor idlers; machinery for mechanical and hydraulic power transmission and power train parts for such machinery comprised of sprockets, pulleys, couplings, drive chains, timing chains and conveyor chains; automotive brake and tire servicing apparatus and machines and related hand tools; container filling and packaging machines, container making and container closing machines; container making machines namely stayers, box spotters and flange benders; packing machines, wrapping machines and paper and film converting machines; printing presses; machines for gluing cases and cartons; strapping machines and hand strapping tools; machines used in preparing, treating and processing agricultural products for packing and preservation; brake and clutch for streets, airport runways and industrial purposes; power operated machines comprising clamshells, draglines, shovels and hoes for excavating and/or rehandling materials; roof drilling machines for mining operations; earth working and earth moving machines; snow removal machines; power mowers; brush chipping and stump cutting machines; Christmas trees for oilwells; well completion assemblies; sprayers; agricultural implements of the smaller kind; vehicle wheel alignment testers; electric current rectifier components and assemblies; solenoids; combustion engine diagnostic instruments; flow controls; drying machines; portable machines for de‑icing and washing airplanes; liquid pumping units; pollution control apparatus and installations for treating gas, water, sewage and industrial waste; drying, cooking and cooling apparatus and installations; product freezing machines; baggage and cargo trailers; de‑icing and washing vehicles; motor coaches, logging vehicles; balancing devices for wheels; balancing weights for vehicle wheels; hydraulic sewage cleaning vehicles; joint packing; brooms, brushes and brush materials.
(5) Fire fighting and extinguishing machines; fire engines; motor fire engines; fire hose nozzles.
(6) Aircraft servicing vehicles, namely: de‑icers/‑washers, belt loaders, elevating platform cargo loaders, baggage carts, cargo carts, container transporters, stairs (manual and motorized), and tow tractors.
(7) Digital controllers incorporating microprocessors.
|
|
Section 45 of the Trade-marks Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and/or services listed on the registration at any time within the three-year period immediately preceding the date of the notice, and if not, the date when it was last in use and the reason for the absence of use since that date. The relevant period in this case is any time between November 1, 1999 and November 1, 2002.
In response to each of the notices, the affidavit of Marcia Pintzuk together with exhibits has been furnished. The affidavit clearly is in reference to the three trade-mark registrations. Each party filed a written argument and was represented at the oral hearing.
In her affidavit Ms. Pintzuk states that she is Associate General Counsel of the registrant company. She indicates that the registrant is a multi-national, multi-billion dollar company and, prior to January 1, 2002, was a manufacturer/supplier of a wide range of products and services. As Exhibit B she provides copies of the registrant’s Product Indexes for the years 1999 to 2002. As Exhibit C, she submits the registrant’s Annual Reports for the years 1999 to 2001.
She explains that the registrant’s operations are divided into three broad market segments: (1) specialty chemicals, (2) industrial chemicals and (3) agricultural products and she identifies the registrant’s key business units for these segments.
She then indicates that on December 31, 2001, FMC Technologies Inc. was created and that such entity is licensed to use the trade-mark. She points out that the registrant exercises control over the use of the trade-marks by FMC Technologies Inc. This latter company’s business group include “FMC Energy Systems; FMC Airport Systems, and FMC Foodtech”.
At paragraph 8 of the affidavit, she provides the registrant’s total worldwide sales for the year 2000 which were in the order of US$ 4 billion.
She states that the registrant has manufacturing facilities and/or sales offices around the world, and at paragraph 13 she clearly states that over the year the registrant (or its licensee) has had various regional headquarters, sales offices and/or manufacturing facilities in Canada and she identifies some that have been operating since at least the years 2000 and 2001.
Ms. Pintzuk attests that products bearing the trade-mark have been manufactured either directly by or under license from FMC and sold in Canada for many years including during the relevant period. She explains that the trade-marks are permanently attached to the wares sold in Canada by affixing the trade-marks onto the labels and packaging of the goods as well as on invoices and other sales documents that accompany the purchase of the goods. As Exhibit M she provides representative photocopies showing product labels. She adds that the trade-mark FMC also functions as a house mark.
At paragraph 22 of the affidavit, she attests that the products as set out in category (1) in Registration No. 221,518 and displaying the trade-mark in the manner described in her affidavit have been continuously sold during the three-year relevant period and as Exhibit N she provides photocopies of representative invoices establishing the sale in Canada of, inter alia, soda ash, sodium sesquicarbonate, microcrystallene cellulose, peracetic acid, hydrogen peroxide, ammonium persulfate, potassium persulfate, and sodium persulfate.
At paragraph 23, she attests that the products as set out in category (3) in Registration No. 221, 518 and displaying the trade-mark have also been continuously sold in Canada in the normal course of trade during the relevant period and as Exhibit O she provides photocopies of representative invoices showing sales of, inter alia, pesticides.
At paragraph 24, she attests that the products as set out in category (21) in Registration No. 196,817 and displaying the trade-mark have also been continuously sold in Canada during the relevant period and as Exhibit P she encloses representative invoices as well as a breakdown of the oil industry products sold in respect of a large Canadian oil-drilling project known as the Terra-Nova, Capex II Sub-Sea Systems Project including, inter alia, wellheads and Christmas trees in association with the trade-mark during the relevant period.
At paragraph 25 she states that aircraft servicing vehicles as set out in category (6) in Registration No. 216,807 and displaying the trade-mark have also been continuously sold in Canada during the relevant period. As Exhibit Q she provides representative invoices establishing the sale of, inter alia, passenger boarding bridges, tow tractors, de-icers, container transporters, cargo loaders during the relevant period.
The requesting party in its written submissions raised several arguments concerning the evidence furnished. However, at the oral hearing, counsel for the requesting party submitted that the only argument the requesting party was now relying on is the argument that use of the trade-marks has not been shown in association with each of the respective registered wares.
Having considered the evidence and the submissions of the parties, I conclude that sufficient facts have been furnished to permit me to conclude that each of the trade-marks was in use in Canada during the relevant period in association with the wares referred to in paragraphs 22 to 25 of the affidavit that is the wares set out in category (1) and category (3) in Trade-mark Registration No. 221,518; the wares set out in category (21) and the wares aircraft de-icers set out in category (1) in Trade-mark Registration No. 196,817; and the wares “lubricants loading arms; casing hangers; casing heads; chokes and choke adapters; circulating heads; tubing hangers; tubing heads; Christmas trees for oilwells; and well completion assemblies” and the wares set out in category (6) in Trade-mark Registration No. 216,807.
As stated in Uvex Toko Canada Ltd. v. Performance Apparel Corp., 31 C.P.R. (4th) 270:
As numerous cases have made clear, the purpose of s. 45 of the Trade Marks Act is to provide a summary procedure that allows the register to be cleared of marks that have fallen into disuse. See, for example, Woods Canada, supra, at p. 480. It is also clear that s. 45 is not intended to be an adversarial process in the way that s. 57 of the Act is. As Hugessen J.A. put the matter for the Federal Court of Appeal in Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1991), 40 C.P.R. (3d) 409 at 412:
Section 45 provides a simple and expeditious method of removing from the register marks which have fallen into disuse. It is not intended to provide an alternative to the usual inter partes attack on a trade mark envisaged by s. 57. The fact that an applicant under s. 45 is not even required to have an interest in the matter (the respondent herein is a law firm) speaks eloquently to the public nature of the concerns the section is designed to protect.
It has also been often said that a corollary to these basic principles is that the registrar (and in this case, the Court) should be satisfied by a relatively low threshold of use. See, for example, Baume & Mercier S.A. v. Brown carrying on business as Circle Import (1985), 4 C.P.R. (3d) 96 (F.C.T.D.); Barrigar & Oyen v. Canada (Registrar of Trade Marks) (1994), 54 C.P.R. (3d) 509 (F.C.T.D.).
But what does "a relatively low threshold of use" mean? And therein lies the rub, at least as far as this case is concerned.
In Union Electric Supply Co. Ltd. v. Registrar of Trade-Marks (1982), 63 C.P.R. (2d) 56, Mahoney J., at page 57, felt that there "is absolutely no justification in putting a trade mark owner to the expense and trouble of showing his use of the trade mark by evidentiary overkill when it can be readily proved in a simple, straightforward, fashion." This means that, to quote Mahoney J. again in Union Electric, supra, "[u]se must be shown, not examples of all uses":
The type of evidence necessary to "show" use of a trade mark in Canada will doubtless vary from case to case depending, to some extent, on the nature of its owner's business, e.g. manufacturer, retailer or importer, and merchandising practices. Perhaps the sort of evidence the respondent would have accepted here is needed in some cases, however, he erred in rejecting the evidence he had here as insufficient and unreliable [page 60].
The Applicant argues that the affidavit of Mr. Wilson goes well beyond what was considered sufficient evidence of use in Union Electric, supra.
The same principles have been applied in more recent cases. See, for example, Re: Climatique International Inc., [1999] T.M.O.B. No. 153 and McCarthy Tétrault v. Hilary's Distribution Ltd. 67 C.P.R. (3d) 279 where the Senior Hearing Officer had the following to say at page 284:
Where the registration covered a long list of wares, in the case Saks and Co. v. Canada (Registrar of Trade Marks) (1989), 24 C.P.R. (3d) 49, 22 C.I.P.R. 146, 25 F.T.R. 65 (T.D.), the court was satisfied that where the wares have been properly categorized in the registration, documentary evidence is not required for each item under a category; however, it seems the affidavit must contain a clear statement of use within the relevant period in association with each of the wares and must provide sufficient facts to permit the Registrar to conclude that the trade mark is in use in association with each ware.
On the other hand, the Respondent correctly points to the words of Thurlow C.J., writing for the Federal Court of Appeal in Plough (Canada) Ltd., supra, at 66:
What s-s. 44(1) requires is an affidavit or statutory declaration not merely stating but "showing", that is to say, describing the use being made of the trade mark within the meaning of the definition of trade mark in s. 2 and of use in s.4 of the Act. The subsection makes this plain by requiring the declaration to show with respect to each of the wares and services specified in the registration whether the trade mark is in use in Canada and if not the date when it was last used and the reason for the absence of such use since that date. The purpose is not merely to tell the Registrar that the registered owner does not want to give up the registration but to inform the Registrar in detail of the situation prevailing with respect to the use of the trade mark so that he, and the Court on appeal, can form an opinion and apply the substantive rule set out in s-s. 44(3).
So what guidance can be gleaned from these authorities and statements of basic principle that can be applied in the present case? We know that the purpose of s. 45 proceedings is to clean up the "dead wood" on the register. We know that the mere assertion by the owner that the trade mark is in use is not sufficient and that the owner must "show" how, when and where it is being used. We need sufficient evidence to be able to form an opinion under s. 45 and apply that provision. At the same time, we need to maintain a sense of proportion and avoid evidentiary overkill. We also know that the type of evidence required will vary somewhat from case to case, depending upon a range of factors such as the trade mark owners' business and merchandising practices.
Here the only clear conclusion I can arrive at based on the evidence furnished is that the wares covered by paragraphs 22 to 25 of the affidavit are the wares that were sold in Canada during the relevant period. In this regard, Ms. Pintzuk has clearly stated that these wares have been continuously sold in Canada during the three-years preceding the issuance of the Section 45 notice and she has provided examples of the use made and of the manner the trade-marks were associated with the wares at the time of their transfer in the normal course of trade. I also accept that the trade-mark FMC also functions as a house mark in respect of these wares.
It is true that invoices have not been furnished for each of the items covered by paragraphs 22 to 25 of the affidavit, however, as stated in Union Electric, supra, the registrant must show use not examples of all its uses. Consequently, although direct evidence or documentary proof regarding each of the items covered by paragraphs 22 to 25 have not been submitted, I am satisfied based on the evidence as a whole and particularly the sworn statements that these wares have been continuously sold in Canada during the relevant period and that the trade-marks were associated with these wares in the manner described in paragraph 21 of the affidavit, that there was use of the trade-marks with each of the wares referred to in paragraphs 22 to 25 during the relevant period. Consequently, for these wares we have a clear statement that sales of the above-mentioned wares have been made during the relevant period, we have representative invoices, and we have a description and examples of the manner the trade-marks were associated with such wares at the time of their transfer. This is sufficient to permit me to conclude that the trade-marks were in use in Canada during the three-year relevant period in association with the above-mentioned wares and that the trade-mark was associated with the wares in a manner satisfying the requirements of s-s. 4(1) of the Act.
Further having regard to the evidence as a whole I accept that the use was by the registered owner or accrued to the registered owner pursuant to Section 50 of the Act.
Concerning the remaining registered wares, I totally agree with the requesting party that the evidence furnished is insufficient to permit the Registrar to arrive at a conclusion of use in association with such wares. Although it is clear from the evidence that a wide range of products are manufactured by the registrant or under license for the registrant, such products are sold worldwide. The only references to specific categories of wares sold in Canada during the relevant period appear in paragraphs 22 to 25 of the affidavit. Concerning the other wares I note that there is not even a clear statement in the affidavit to the effect that all of the registered wares were sold in Canada during the relevant period which distinguishes this case from Smart & Biggar v. Time Warner Entertainment Co. L.P., 17 C.P.R. (4th) 564, where the affiant had clearly stated: “to ensure that there is no ambiguity, the wares and services listed in the registrations ... have been distributed and sold in association with the trade-mark ... in the past including the period May 11, 1996 to May 11, 1999 (i.e. the relevant period)”. Concerning the Canadian annual sales figures submitted for the period 1997 to 2002, Ms. Pintzuk has not provided a breakdown by wares and therefore without more I cannot conclude that the sales figures represent sales of each of the wares covered by trade-mark registrations. Further, although the Product Indexes for the years 1999 to 2002 refer to numerous products, as the registrant sells worldwide and as there is no clear statement and no evidence that each of the items listed therein has been sold in Canada during the relevant period, I cannot conclude that the Product Indexes represent the wares that have been sold in Canada during the relevant period.
Consequently, although I agree that evidentiary overkill is not required in a Section 45 proceeding, still there must be sufficient facts to permit the Registrar to arrive at a conclusion of use with each of the wares (Uvex Toko, supra). Here, I find that if the trade-marks had been in use in Canada in association with each of their respective registered wares during the relevant period, it would have been a simple matter for Ms. Pintzuk to have clearly stated so. However, she has failed to do so and I find the evidence is insufficient to permit me to arrive at such a conclusion.
As I have found that use has been shown but not in association with each of the registered wares, I conclude that the trade-mark registrations ought to be amended as follows:
With respect to Registration No. 196,817, only the following wares will be maintained:
(1) aircraft de-icers
(21) all wares in that category
With respect to Registration No. 221,518, only the following wares will be maintained:
(1) all wares in that category
(3) all wares in that category
With respect to Registration No. 216,807, only the following wares will be maintained:
(4) lubricants; loading arms; casing hangers; casing heads; chokes and choke adapters; circulating heads; tubing hangers; tubing heads; Christmas tree for oilwells; well completion assemblies.
(6) all wares in that category.
Trade-mark Registration Nos.196,817, 221,518 and 216,807 will be amended accordingly in compliance with the provisions of ss. 45(5) of the Act.
DATED AT GATINEAU, QUEBEC, THIS 11TH DAY OF MAY 2006.
D. Savard
Senior Hearing Officer
Section 45 Division