Consommation
et Corporations Canada
Ottawa-Hull
K1A OC9
Mantha
& Associes/Associates
Suite 601
100
Gloucester Street
Ottawa, Ontario
K2P OA4
Dear Sir/Madam:
RE: SECTION 45 PROCEEDINGS
Registration No. TMA272,498
Trade-mark: REGINA
Consumer and
Corporate Affairs Canada
Votre
reference Your file
G-2328
Notre
reference Our file
474,319
At
the request of Messrs. Gowling , Strathy & Henderson
, the Registrar issued a
S.45 Notice dated April 27, 1988, to 121,369 Canada Inc., the registered owner
of the above referenced trade-mark registration.
The mark Regina was registered on October 8,
1982 for use in association with
the following wares:
"(1)
Breads of all sorts, cake, pastry, biscuits, bread
crumbs and pizza. (2)
Canned, frozen, processed and packaged spaghetti and
macaroni products, namely,
spaghetti dinner, pizza dinner, ready- to-serve macaroni
and ravioli, anti pasta,
pizza and ravioli; sausages; canned , f r oz e n , processed and bottled fish
products,
namely, tuna, anchovies. sardines, and salmon; edible oils; condiments, namely,
spices, herbs, vinegars, sauces, marinades , mustard , and mayonnaise; canned,
frozen, and processed fruit; canned fruit and vegetable juices; cheese; coffee,
tea and cocoa; salads; fresh , frozen , canned and packaged cakes, pies,
pastries,
puddings and de s e r t s ; canned , frozen, and processed vegetables."
Ownership
of this mark was transferred on several occasions, the last assignment
being the only one material to these proceedings. This last assignment,
recorded
on the register on October 21, 1988, indicates a change in title with an
effective date of March 19, 1986 and recognizes Les Aliments Da Vinci Ltee as
the new owner of the mark as of that d a t e.
I
have reviewed the assignment documents filed under Section S.48 of the
Act
and I am satisfied that the t r a ns f e r in title from
Les Aliments Regina Foods
Inc., to Les Al iments Da Vinci Ltee., was
properly recorded nunc pro tunc on
October 21, 1988 with effective
date of transfer as of March 19, 1986.
In
response to the Registrar's Notice, the registrant furnished the affidavit
of its controller, Mr. Richard Farran, along w ith exhibits A and B
thereto.
Fu r the r to the filing of
this evidence, the requesting party filed a written
submission to wh ich the registrant responded in like manner.
On
reviewing the evidence fi1ed and the arguments of both parties, I find the
Farran affidavit quite informative and to the point. I also find the written
arguments of both parties to be comprehensive and pertinent. Given that the
governing jurisprudence in S. 45 matters is in a constant state of
evolution,
since the famous Ae r o so l F'i l l e rs ' Inc., decision 1 in 1980, the
only problem to
be resolved in t h is instance is wher e the 1 aw stands at this point in time.
. . . /2
1 - Aerosol Fillers Inc'.,v. Plaugh-(Canada)
Ltd.(1480)
45 C.P.R.. (2nd) 194; .affirmed
53 C.P.R. (2d) 62.
I -
I
agree with counsel for the requesting party that the Marcus
decision 2 made
it clear that in s. 45 proceedings, the evidence of use must be furnished
by t he
registered owner of the mark by a duly register e d us e r , that the
evidence mu s t
show use of the mark by either of these parties and that the principle of
assignee, owner in f a c t or lega1 owne r, ac c e p t e d in previous
decisions, as
exemplified by the STAR-K1ST decision 3, was put to rest by the Ma r c us
decision,
supra. However, in the instant case and as indicated supra, an assignment of
the mark was r e c.o r ded nune pro tunc on Oc t.ob e r 2l, 1988 with
confirms an
effective date of March 19, 1986 again as d i s c u s s ed in the Marcus c a s
e . I am
therefore satisfied that the evidence in this case was properly furnished by
the
owner of the rna r k: and t h at any use shown by the evidence is use by this
new
owner.
0n the question of whether the trade-ma r k is in us with all and each of its
r e g i s t e r e d wares, the Farran affidavit is quite clear ; it is no t . The wares in
association
with which the mark was in use as of the notice date are c l ca r l v
listed on page 2 of the said affidavit.
The r e a sons adduced to excuse the absence of use with the remaining wares, in
My opinion, are not very convincing. While I would probably agree that a recent
assignment coupled with a constraining situation would excuse non-use for a
justifiable period of time. I do not believe that a not so recent assignment
coupled with a pious intention of resuming use oat a vague date in the future
would be compelling enough to deserve an exception to the general rule; see
Harris Knithing Mills4.
In
the instant c a s e , the new owner was already dealing in most of the
registered
wa r es, under different trade-marks, as of the notice date and the evidence does
not establish an acceptable reason why the REGINA ma r k was not put to
c omp r ehe n s i.ve use from inception, nor any serious plan to do so as soon
as
feasible.
In
my respectful opinion, the statement of paragraph 5 of the Far r an affidav it
which reads as to follows:
"A cause de l’acquisition récente de cette marque de commerce,
il a été impossible d’employer la marque en liaison avec toutes
les marchandises visées par l’enregistrement numéro 272,498.
Cependant, ma compagnie se propose d’employer cette marque de
commerce en liaison avec toutes ces marchandises dans les
meilleurs délais possibles."
Cannot be considered as special circumstances which could excuse the apparent
period of non-use of over two (2) years; that is, from the effective date of the
transfer March 19, 1986 in the notice date of April 27, 1988 or even to the date
of the Farran affidavit of July 4, 1988.
Therefore, by reason of the evidence filed in these proceedings, I have
Concluded that the subject trade-mark is in use in association with some of its
Registered wares, but not with all of them and, that the reasons adduce