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IN THE MATTER OF A SECTION 45 PROCEEDING
Respecting Registration No. 296.716 for the trade-mark "CAPTAIN CANADA"
At
the request of Messrs Barrigar & Oyen, the
Registrar forwarded a Section 45 notice
on November 5, 1990 to Apache Communications International Corporation Limited, the
registered owner of the above-referenced trade-mark at the time (hereafter,
"the trade-
mark"). The trade-mark was registered on November 2. 1984 for use in
association with
the following wares: "comic books and magazines".
On
August 31, 1990 Apache Communications International Corporation Limited
amalgamated
with other companies to form "GWS Holdings Inc.". "GWS
Holdings Inc." was registered
as the new owner of the trade-mark on January 17,
1992. Although it is not relevant
to the present proceedings, the trade-mark was subsequently assigned by
"GWS Holdings
Inc." to the current registrant. "The Sunday Herald L td." by a
nunc pro tunc assignment
of the trade-mark dated July 14, 1991 confirming an earlier assignment of June
6, 1991.
"The Sunday Herald Ltd."
was recorded on the register as the new owner of the trade-mark
on December 18, 1992.
The
registrant submitted the affidavit and related exhibits of Mr. Scott
Stirling
identified as "Director of Apache Communications International Corporation
Limited, now
called GWS Holdings Inc. (my
company)". Exhibits "B" and "0" were
missing from the file
when the proceedings advanced to the decision stage, hence, they were
re-submitted by
the agents for the registrant, Messrs. Gowling, Strathy &
Henderson on March 21, 1994.
The
registrant bears the burden of demonstrating use of its trade-mark in
association
with the wares mentioned in the registration, in the normal course of trade, and
during
the two years immediately preceding the date of the notice. "Use"
is defined by Section
4(1) of the Trade-marks Act as follows:
"4(1)
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 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."
Paragraph
4 of the affidavit contains a general statement of use of the trade-mark in
association with the registered wares, i.e. "comic
books and magazines". However, there
is nothing in the evidence that shows any use at any time in association with
"magazines".
When speaking of the registrant's wares, for the most part, Mr. Stirling refers to a
"publication"
or "work" entitled "Atlantis" (paragraphs 5, 6, 7, 8 and 9
of the
affidavit). Exhibits
"C" and "Cl" also refer to "Atlantis" and
"Legend of Atlantis".
Mr. Stirling states that the said ATLANTIS
work is a collector's edition and that part
2 of the said work is a "CAPTAIN CANADA" book.
Mr. Stirling
mentions a "book"
entitled "CAPTAIN NEWFOUNDLAND" (also a special
collector's
edition). He states
that it was offered to the general public in the same
manner as ATLANTIS was
offered, as described in paragraphs 7 and 8 of the affidavit,
i.e. as prize giveaways,
by a company called "The Newfoundland 8roadcasting Co. Ltd.".
He refers to a copy of this book
being submitted as Exhibit "D". However, Exhibit
"D"
does not refer to such work.
Concerning
both "works", the use as
"prize giveaways" is not a use pursuant to Section
4(1) of the Trade-marks Act since there were no
transfer of the wares in the normal
course of trade. In
this regard, I rely on the case Joseph E. Seagram &
Sons Ltd. v.
Corby Distilleries Ltd., 42
C.P.R.(2d) 264 and C8M
Kabushiki Kaisha v. Lin Trading Co.
Ltd., 5 C.P.R.(3d)
27. Furthermore, any use by a company other than the registrant or
its licensee is not
use that accrues to the registrant.
Exhibit
"8" which contains
a photocopy of certain parts of the "Atlantis" work, contains
specific references
to the trade-mark CAPTAIN CANADA. The first page
of Exhibit "8"
reads at the top:
"Welcome to the exciting worlds
of Captain Atlantis, Captain Canada
and Mademoiselle OM
is this special collector's edition of ATLANTIS (underlining is
mine)". The second
page of Exhibit "8" is marked "Part 11: CAPTAIN CANADA". As
mentioned earlier, Mr. Stirling
explains at paragraph 5 that
"Part 2 of the said work
(the "Atlantic"
work) is a CAPTAIN CANADA book".
However,
even if the "ATLANTIS" work
contains a comic book entitled CAPTAIN CANADA,
I
cannot conclude
on the basis of this evidence that for the purposes of Section 4(1) of
the Act, notice
of the association between the trade-mark
and the registrant's wares
is given to the person
to whom the property or possession
is being transferred. The
trade-mark is
represented in Exhibit
"8" on page 1 of said Exhibit and
on a page
entitled "Part II: CAPTAIN
CANADA" but the Registrar has not been
informed whether any
of these pages
of Exhibit "8" is visible
to the ordinary purchaser at the time
of
purchase of the wares.
Furthermore, the packaging
of the "Atlantis" work
may very well
prevent access to these
pages at the time of purchase. I
am left in doubt as to whether
notice of the
association between
the trade-mark and the
registrant's wares is given
at the time of transfer; consequently, this doubt must be resolved against the
registrant.
Furthermore, there
is no clear evidence of any sales of the registrant's wares having
occurred during the two years immediately preceding the date of the notice. At
paragraph 6 of the affidavit Mr. Stirling states that his company sent by
consignment
a selection of the "Atlantis" work to a number of customers including
to a specialty
comic book store in
January 1990. Mr. Stirling
states: "1 visited said store in early
June and noted that certain such ATLANTIS works were
available for sale at the time".
The affidavit was sworn on June 27, 1991: therefore, I
assume Mr. Stirling's reference
to early June is early June 1991 which
is subsequent to the notice date (November 5,
1990). He then states
that he was advised by the Manager thereof that the said work
was available for sale immediately prior to November 5,
1990: however, this statement
constitutes
hearsay evidence which is
inadmissible.
Consequently,
in view of the evidence filed, I conclude that the registrant
has failed
to show use
of its trade-mark
in association with the registered wares
pursuant to
Section 4(1)
and 45 of the Trade-marks Act. Accordingly,
its trade-mark registration
ought to be expunged
from the register.
Registration
No. 296.716 will be expunged
in compliance with the provisions of Section
45(5) of the Trade-marks
Act.