SECTION
45 PROCEEDINGS
TRADE-MARK: NORTON
REGISTRATION NO.: TMDA 54550
On March 25, 1998 at the request of Messrs. Shapiro Cohen, the Registrar forwarded a Section
45 notice to Norton Villiers Limited, the registered owner of the above-referenced trade-mark
registration.
The trade-mark NORTON is registered for use in association with the following wares:
Motor cycles, side cars,
internal combustion engines and parts thereof, speed gears,
brakes, clutches, parts and accessories of motor cycles, side cars, and
stampings and
casting for same.
In response to the notice, the declaration of David Arthur Bennett together with exhibits has been
furnished. The requesting party alone filed a written argument. An oral hearing has not been
requested in this case.
In his affidavit, Mr. Bennett states that he is Director and Company Secretary of Andover Norton
International Limited and that his company has shipped "genuine Norton Motorcycle Parts" on
at least three occasions during the three years preceding the date of the notice. As Items 1, 2 and
3 he provides certificates of shipment and relating invoices concerning such supplies of parts.
The requesting party's main arguments are that the evidence has not been furnished by the
registered owner or a licensee on behalf of the registered owner; that, although Mr. Bennett has
stated that genuine Norton Motorcycle Parts were supplied on at least three occasions during the
relevant period, he has failed to indicate or show the manner the trade-mark was associated with
the wares at the time of transfer "as required by Section 4(1) of the Trade-marks Act".
First, I agree with the requesting party that if Andover Norton International Limited is now the
rightful owner of the trade-mark, the documents of transfer showing that Norton Villiers Limited
assigned all of its rights in and to the trade-mark to Andover Norton International Limited should
have been produced. Further, I agree with the requesting party that the evidence clearly fails to
show use of the trade-mark NORTON in the manner required by Section 4(1) of the Trade-marks
Act.
Section 4(1) reads as follows:
A trade-mark is deemed to be used in
association with wares if, at
the time of the transfer
of the property in or possession of the wares, in the normal course of trade, it is marked
on the wares themselves or on the packages in which they are distributed or it
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.
Mr. Bennett has failed to describe the normal course of trade with respect to the wares and the
trade-mark. Further, concerning the shipments that were made on three occasions during the
relevant three year period, although he has alleged that the goods delivered were "genuine Norton
Motorcycle Parts", such an allegation does not constitute an assertion that the trade-mark
NORTON was associated with the wares in the manner required by Section 4(1). We are not
informed if the trade-mark appeared on the wares themselves or on their packaging, or was
associated in any other manner with the wares so that the notice required by Section 4(1) was
given to person to whom the property or possession was transferred.
I note that at the top of each invoice several trade-marks are listed namely: AP RACING &
Design, NORTON & Design, MZ & Design and ROTAX. However, such marking at the top of
the invoices does not constitute use of any of these trade-marks or of the trade-mark NORTON in
the manner required by Section 4(1) of the Act as none of the trade-marks, including the trade-
mark NORTON, is so associated with a particular item as to provide the required association
between the trade-mark and any particular ware sold.
In view of the above, I conclude that the evidence fails to show use of the trade-mark in
association with the registered wares in the manner complying with Section 4(1) of the Trade-
marks Act and therefore the trade-mark registration ought to be expunged.
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Registration No. TMDA 54550 will be expunged in compliance with the provisions of Section
45(5) of the Act.
DATED AT HULL, QUEBEC, THIS
Senior Hearing Officer
Section 45 Division
17th DAY OF MAY 2001.
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