SECTION 45 PROCEEDINGS
TRADE-MARK: DURA-KOTE
REGISTRATION NO.: TMA 155,820_
On June 9, 1999, at the request of Gowling, Strathy & Henderson, the Registrar forwarded a Section 45 notice to Multibond Inc., the registered owner of the above-referenced trade-mark registration. The trade-mark DURA-KOTE is registered for use in association with peintures, laques et vernis; driveway sealant services. However, the services were only added to the registration in 1997, which is less than three years prior to the issuance of the Section 45 notice. The registered owner is therefore required to furnish an affidavit or statutory declaration showing, only with respect to each of the wares, whether the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of use since that date.
In response to the Registrar’s notice, the affidavit of Mike Sales was furnished. Each party filed a written argument. An oral hearing was not requested.
Mr. Sales is the Managing Director and CEO of the registered owner. He states that the DURA-KOTE mark has been in use since 1968 in association with paints and that, in particular, it has been used in association with interior alkyd and latex paints, interior/exterior latex paints, concrete stains and floor enamels since 1997. He has provided the revenue and quantity of DURA-KOTE products sold in each of the years 1997 and 1998, as well as labels and advertisements.
The requesting party has made three submissions. First, it has pointed out that Mr. Sales has not stated that the registrant used the trade-mark, choosing instead to say that the mark has been in use. However, as the labels read “made in Canada by Multibond Inc.”, it is clear that use of the mark has been by the registrant. I am therefore satisfied that the registrant has used the trade-mark DURA-KOTE in association with “peintures” during the relevant three year period.
Next, the requesting party has submitted that “laques et vernis; driveway sealing services” should be deleted from the registration because the registrant has not furnished any evidence concerning them. I agree that “laques et vernis” should be deleted from the registration. However, as the registrant is not required to evidence use with the registered services, the services are not subject to these proceedings and cannot be deleted.
Finally, the requesting party has submitted that “peintures” should be restricted to the specific types of paints that have been sold because “paints” is no longer an acceptable ware in the current Wares and Services Manual. However, the Registrar has no authority to amend a registration under Section 45 when use has been shown [see the unreported decisions of the Registrar in Bernard Callebaut v. Callebaut N.V., November 30, 1998 and Lander Co. Canada Limited v. Scott Paper Company, June 12, 1997].
Pursuant to the authority delegated to me under Subsection 63(3) of the Act, the wares “laques et vernis” will deleted from Registration No. TMA 155,820 in compliance with the provisions of Subsection 45(5) of the Trade-marks Act.
DATED AT TORONTO, ONTARIO THIS 28th DAY OF SEPTEMBER, 2000.
Jill W. Bradbury
Hearing Officer