3.
Consommation
et Corporations Canada
Marque s de commerce
Ot tawa-Hul l
K1A OC9
FE8 15 Y390
~
Smart & Biggar
P.O. Box 2999, Station D
Ottawa, Ontario
K1P 5Y6
Dear Sir/Madam:
Consumer and
Corporate Affai r s Canada
T'ra de-ma r k s
Votre reference Your file
63429-573
Notre reference OUr file
294,401
RE: SECTION 45 PROCEEDING
Registration No. TMA 161,269
Trade-ma
rk : LUNKENHEIMER
At the request of Messrs . Sim & McBurney, the Registrar issued a S. 45 Notice
dated March 19, 1986 to The Lunkenheimer Company of Cincinnati, Ohio, the
registered owner of the above referenced trade-mark registration.
The mark LUNKENHEIMER was registered on Februar y 21, 1969 for use in
association with the following wares:
"Wares: (1) Gauges, pressure regulators and water columns. (2) Ejectors,
injectors, lubricators, pumps, wh istles. (3) Cocks, nozzles, unions,
valves. (4) Grease cups, oil cups and wrenches."
In response to the Registrar ' s Notice , the registrant furnished the affidavit
of its President, Mr. William C. Meyer, along with exhibits A, B and C
thereto. Further to the filing of this evidence, the requesting party filed a
written submission dated November 12, 1986, to which the registrant responded
by requesting an oral hearing before the Registrar. A hearing
was scheduled
for May 5, 1987 which was subsequently postponed at the request of both
parties, on the basis that negociations were ongoing with a view to reaching
an amicable settlement. A hearing was r e-scheduled for October 18, 1988 and
again postponed at the request of both parties, on the basis that the parties
we r e close to reaching an agreement. A hearing was finally held on January
30, 1990 at which both parties were represented by counsel.
In his affidavit, Mr. Meyer asserts clearly that his company and its
predecessors in title have been using the trade-mark since at least as early
as February 21, 1969 in association with wares of the class covered by the
registration. He
further states that his company, The Lunkenheimer Company
-
an Ohio Corporation - has owned the mark since June 1984 and that since that
date has been using the mark in association with some of the registered wares
but not with all of them and lists both. He also declares that steps have
been taken to update the Registrar's records as to ownership of the mark. To
substantiate his assertion of use, he annexed to his affidavit several
exhibits comprising sales document s and advertising materials.
In his written submission and at the hearing, counsel for the requesting party
attacked this evidence essentially on two main grounds:
1 -
that the evidence is not admissible in these proceedings since it was not
furnished by the owner of record as of the notice date; nor does it show
use by that registered owner , as discussed in the Marcus case 1.
2 - that
the Meyer affidavit
consists of bare allegations of use only,
unsubstantiated by the exhibits annexed to the affidavit, and, that in
any event the affiant concedes non-use with a substantial list of wares.
. . . 2
1.
Marcus, carrying on business as Marcus and Associates V. Quaker Oats Co. of
Canada (1988) 20 C. P. R.. (3d) 46.
- 2 -
On the first issue, counsel for t he requesting party argues that it is clear
from the decision rendered by
the Federal Court of Appeal in Marcus supra,
that evidence of use in a S. 45 proceeding has to be furnished by the
registered owner of the mark, as of the notice date or by a duly r egistered
user and, that any use shown by such evidence, must be use by the registered
owner or a duly registered user and not be by an assignee, as in the instant
case. He c ons equently argues that the evidence filed in this case - by an
assignee – is inadmissible and a decision of expungement should follow.
I must agree with the main import of this argument, however, in my respectful
opinion, the Marcus case, supra, goes beyond this determination and
contemplates the nunc pro
tunc recordal of an assignment in similar
circumstances. 'I'he
Marcus case is an appeal on the Star-Kist case2, which in
turn is an appeal on a decision by the Registrar.
Prior to the Star-Ki st case: the Registrar had adopted the position that the
recordal of a transfer under S. 48 (previously 47) is a simple administrative
procedure and that as long as the proper documents are filed and the
prescribed fee satisfied, he had no other duty than to record the documents as
requested. In Star-Kist,
supra, the Registrar went on to rationalize that
once he had registered a transfer - nunc pro tunc where requested - he had no
authority to review that recordal in a subsequent S. 45 proceeding. At that
point in time, the Registrar had also adopted the policy that evidence: of use
furnished by an assignee and evidence showing use by an assignee (legal owner,
owner in fact, etc.) was admissible evidence in S. 45 proceedings. While the
Trial Division was satisfied with this position, the Court of Appeal was not.
As I understand it, in the Ma r cu s case, the learned judges of The Feder al
Court of Appeal unanimously clarified the jurisprudence . They ruled that. in a
S. 45 proceeding where a transfer has been recorded nunc pro tunc, the
Registrar; and the Court in turn , had to review the transfer documents and
rule on their effective date.
In the Marcus/Star-Kist case, the transfer document was headed "ASSIGNMENT
NUNC PRO TUNC" and purported to transfer the rights in the mark retroactively.
The transfer document was dated subsequent to the notice
date and there was no
showing of a transfer having been made prior to that date'. The Court ruled
that such a recordal
did not establish a prior transfer as claimed, but one as
of the date of
the transfer document.
Simply stated, it is the r e c o r dal on
the register that can be effected nunc pro tunc, not the assignment and nunc
pro tunc recordals to be valid must be accompanied by cogent evidence of a
prior transfer, as claimcd.
In the instant case, I have reviewed the transfer documents - on the Trade-
marks Office file No. 294,402 -
filcd with our Assignment Section and I am
satisfied that they confirm a pertinent transfer of the mark with effective
date of October 30, 1984.
Therefore, for the purpose of this S. 45
proceeding, I am satisfied that the
evidence of use was furnished by the proper party and that
any use shown
thereby accrues to The Lunkenheimer Company (an Ohio Corporation).
On the second issue, as to whether the evidence is sufficient to satisfy the
requirements of the Act, I am satisfied that it does. The affidavit is
straightforward, contains a clear assertion of use in association with some of
the wares which it lists, it concedes non-use with some wares which it also
lists. The exhibits, while not overwhelming, do show commercial activities in
Canada. Like counsel for the requesting party, I am also curious as to the
reason why the rcgistrant did not furnish sales invoices to establish the
alleged sales in Canada; howcver as properly argued by counsel for the
registrant S. 4S does not require evidentiary overkill. The purchase
... 3
2, Star-Kist Foods Inc., V .Registrar of Trade-marks (1985) 3 C.P.R., (3d) 208.
4.
,/
"
/
/
~.
"
"
/
- 3 -
orders
and shipping documents provided
are in my
opinion sufficient
to
establish some
commercial activities in Canada.
It matters not that some
of
these documents
are stamped
F.O.B. Ohio, this argument,
as properly
argued by
counsel for
the registrant, was put to
rest in the Manhattan Case.
The
association
between the mark
and the wares is adequately adduced at paragraph
9 of the affidavit and the catalogue
filed in
exhibit substantiates
the
statement.
On the
question of whether the
commercial activities evidenced by the
exhibits, were performed
in the registrant's normal
course of trade, I can see
no reason to
conclude otherwise, the
registrant is a manufacturer
which sells
valves and
flow control accessories and
devices and sales in Canada have been
demonstrated. As previously stated, I would not
categorize
the showing
of
sales in Canada as
overwhelming, but
as properly argued the Philip
Morris
case has clearly
established that they
need not be.
Therefore, by reason of the
evidence filed in these
proceedings, and
mindful
of the
arguments presented by b o t.h partie s , I have
concluded
that the subject
trade-mark is in n use in Canada in association with some of its registered
wares, but not with all of them. Consequently its registration ought to be
amended by deleting
therefrom all wares on which use
has not been shown so its
statement of
wares will read as follows:
"Wares: gauges,
pressure regulators, and water columns; lubricators,
whistles,
cocks, valves, grease
cups and oil cups."
Registration TMA 161,269 will be
amended accordingly,
in compliance with the
provisions of s-s 45(5) of the Trade-marks Act.
Yours truly,
li
J.P. D'Aoust
Senior Hearing Officer
for Registrar of Trade-marks
/mc
c.c. Sim
& McBurney
Suite 701
330 University Avenue
Toronto, On tario
M5G 1R7
(SML 3746-6)
3. Manhattan Industries Inc V. Princeton Manufacturing Ltd (1971)
4 C.P.R.
(2d) 6.
4. Philip Morris Inc.V, Imperial Tobacco Ltd. (1987) 13 C.P.R. (3d) 289
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