IN THE MATTER OF AN OPPOSITION by 114662 Canada
Inc. to application No. 520,985 for the trade-
mark PLACE DU PARC & Design filed by Societe
Immobiliere Place du Parc Inc.
On April 26, 1984, the applicant, Societe Immobiliere Place du Parc Inc., filed an application to register the trade-mark PLACE DU PARC & Design, a representation of which appears below, based upon proposed use of the trade-mark in Canada in association with "operating, managing and/or renting commercial space for offices, retail outlets, restaurants and bars".
The opponent, 114662 Canada Inc., filed a statement of opposition on December 13, 1984, and an amended statement of opposition on February 25, 1985, in the latter of which the opponent alleged that the applicant's trade-mark is not distinctive and the applicant is not the person entitled to registration in view of the use by the opponent of its trade-name Place du Parc since 1976 in association with "des services de gestion, operation et location de locaux commerciaux". The opponent further alleged that the applicant's trade-mark is not registrable in that it is not distinctive.
The applicant served and filed a counter statement in which it in effect denied the opponent's grounds of opposition.
The opponent filed as its evidence the affidavit of Maurice Proulx while the applicant submitted the affidavits of Mildred Joan Lusk, Suzanne Tessier, Salvatore M. Fratino and Paul Anthony Laberge. Leave was also granted to the applicant pursuant to Rule 46(1) of the Trade-marks Regulations to file the affidavits of E. Emilio Sanchez, George C. Woolley and a second affidavit of Salvatore M. Fratino and leave was also granted to the opponent to file the affidavit of Denis Bessette. At the oral hearing, the agent for the opponent made reference to an affidavit of Eric Bruce Moidel although there is no record of any such affidavit having been filed as evidence on behalf of the opponent in this opposition proceeding. Both parties submitted written arguments and both were represented at an oral hearing.
With respect to its first ground of opposition, there is a burden on the opponent in view of Section 16(5) of the Trade-marks Act to establish its prior use of the trade-name Place du Parc, as well as non-abandonment of the trade-name as of the date of advertisement for opposition purposes of the applicant's trade-mark application in the Trade-marks Journal (November 14, 1984). In this regard, the Sanchez affidavit establishes that the opponent was incorporated March 23, 1982 and the opponent therefore could not have used the trade-name Place du Parc prior to that date. Additionally, the opponent in its statement of opposition did not rely upon prior use of the trade-name by its predecessor(s)-in-title and therefore cannot rely upon use of the trade-name prior to its date of incorporation in respect of the Section 16(3) ground of opposition.
With respect to use of the trade-name by the opponent subsequent to its incorporation and prior to the applicant's filing date (April 26, 1984), the opponent relied upon the affidavit of Maurice Proulx. In his affidavit, M. Proulx states:
d) Le nom commercial "PLACE DU PARC" est utilise par
l'opposante, 114662 Canada Inc., depuis le 19 mars 1982
en regard avecc l'exploitation, la gestion et/ou la location d'espaces commerciaux pour bureaux et commerces
divers au 5253, Avenue du Parc, Montreal, Province du Quebec;
e) L'opposante a acquis l'edifice commercial "PLACE DU PARC" le 19 mars 1982 de son predecesseur, GREAT-WEST CIE
D'ASSURANCE LTEE' qui exploitait cet edifice commercial sous le nom commercial "PLACE DU PARC" depuis le 25 avril 1979;
g) Depuis 1974, l'opposante et ses predecesseurs en titre
mentionnes au paragraphe precedent ont adopte le nom
commercial "PLACE DU PARC" sur toute leur papeterie,
enseigne publicitaire, etiquettes, baux, annonces et
reclames publicitaires, tel qu'il appert des pamphlets,
factures et photos annexes aux presentes;
h) Depuis 1982, l'opposante a consacre la somme d'environ
$10,000.00 a la publicite de son nom commercial "PLACE
DU PARC" en liaison avec les services d'exploitation,
gestion et/ou location d'espace commercial pour bureaux
et commerces divers;
i) Par suite de son utilisation continue et tres substantielle, de meme que par suite de leur publicite
importante du nom commercial "PLACE DU PARC" au Canada,
l'opposante et ses predecesseurs ont cree un achalandage
tres important relativement a cette marque de commerce;
j) Depuis a tout le moins l'annee 1974, la demandresse
et ses predecesseurs en titre font des affaires au Canada
sous la raison sociale "PLACE DU PARC" de facon continue et sans l'avoir abandonnee, en liaison avec l'exploitation, la gestion et/ou la location d'espace commercial pour bureaux et commerces divers;
n) L'opposante allegue egalement qu'a l'epoque de sa
demande d'enregistrement de la marque de commerce "PLACE
DU PARC", le 22 fevrier 1983 ainsi qu'a l'epoque de sa
publication, soit le 27 juillet 1983, la defendresse etait au courant de l'utilisation anterieure de la marque
"PLACE DU PARC" par la demandresse puisque, entre autres motifs, l'edifice commercial exploite par cette derniere est affiche clairement sous le nom "PLACE DU PARC", et est situe a seulement deux (2) kilometres de l'edifice
commercial exploite sous le meme nom "PLACE DU PARC" par
la defendresse et de plus, les deux edifices sont situes
sur la meme artere principale, soit l'avenue du Parc, a
Montreal;
In paragraph (g), the affiant refers to documents annexed to his affidavit without any attempt to specifically identify the documents referred to as to dates when they were used and the extent of such use. For example, a photocopy of what appears to be an advertising pamphlet in which reference is made to "NOW RENTING FOR MAY '75 OCCUPANCY" bears the name of Diversified Development Corporation and appears to have been an advertising pamphlet used when the building owned by the opponent was first opened. As such, there is no evidence that this pamphlet was ever distributed by the opponent and I consider it to be of no relevance to the entitlement and distinctiveness issues in this opposition.
Apart from the above, the photocopies annexed to the Proulx affidavit are not sworn to nor are they otherwise identified as exhibits to the Proulx affidavit and this deficiency in the opponent's evidence was noted in the applicant's written argument. The Registrar does not adhere strictly to the rules of practice of the Federal Court and, where no objection is raised to unnotarized or incorrectly notarized exhibits when the affidavit is filed or at least at a point in time where the party has no opportunity to correct the deficiency, the Registrar will not allow the opposite party to subsequently take advantage of such a technical objection. In the present case, however, the opponent had from June 22, 1987, the date upon which the applicant's written argument was forwarded to it by the Opposition Board, to the date of the hearing on December 8, 1989, to attempt to correct this deficiency.
At the oral hearing, the agent for the opponent sought to produce a set of notarized exhibits which were in the file of the trade-mark agents for the opponent. Apart from the late attempt to file the notarized exhibits, I pointed out that the functionary whose name appears with the exhibits differs from that of the functionary who swore the affidavit even though the exhibits appear to have been identified as having been sworn to on the same date as the affidavit. When questioned on this inconsistency, the agent noted that the commissioner who swore the original affidavit was no longer available. As a result, I refused to permit the filing of the further exhibits at the hearing and have concluded that the exhibits annexed to the Proulx affidavit are inadmissible.
In view of the above, there is no admissible evidence as to the manner of use by the opponent of the trade-name PLACE DU PARC. Further, even if the documents had been admissible, there is only one invoice dated prior to the applicant's filing date (April 26, 1984) which provides any indication of the manner in which the opponent was using Place du Parc in association with its advertising of the availability of commercial space to rent. However, it is not clear from that invoice as to when the advertisement may have appeared in le Journal d'Outrement.
Apart from the issue as to the admissibility of the exhibits annexed to the Proulx affidavit, I am not convinced that the opponent has met the burden upon it in respect of its grounds of opposition of establishing that it has used Place du Parc as a trade-name. In this regard, the fact that the building situated at 5253 Park Avenue is identified as Place du Parc and is owned by the opponent does not itself establish that it has been used as a trade-name, that is, the name under which the opponent has carried on its business of operating, managing and /or leasing commercial space for offices or businesses. Rather, the documents filed by the opponent tend to demonstrate the the words Place du Parc identify the opponent's building and not the opponent and, in my view, the identification of the building per se does not constitute a trade-name use.
In view of the above, I reject the opponent's opposition pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 31ST DAY OF JANUARY, 1990.
G.W.Partington,
Chairman,
Trade-marks Opposition Board.