T-3440-80
Herman Lindy (Appellant)
v.
Registrar of Trade Marks (Respondent)
Trial Division, Dubé J.—Montreal, March 17;
Ottawa, March 25, 1981.
Trade marks — Appeal from Registrar's decision to
expunge registration of trade mark "Friday's" for failure to
show use by appellant — Appellant was registered owner of
trade mark — Appellant filed affidavit of user in response to
application to expunge trade mark — Affidavit established
use in Canada in association with services performed at the
date of notice and it "showed" the use — Affidavit did not
establish use by the appellant — Whether affidavit fulfils
requirements of s. 44 of Trade Marks Act — Appeal dismissed
— Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 44.
Aerosol Fillers Inc. v. Plough (Canada) Ltd. [1980] 2 F.C.
338; confirmed [1981] 1 F.C. 679, distinguished. Ameri-
can Distilling Co. v. Canadian Schenley Distilleries Ltd.
(1979) 38 C.P.R. (2d) 60, referred to. Broderick &
Bascom Rope Co. v. Registrar of Trade Marks (1970) 62
C.P.R. 268, referred to. Re Wolfville Holland Bakery Ltd.
(1965) 42 C.P.R. 88, referred to. The Noxzema Chemical
Co. of Canada Ltd. v. Sheran Manufacturing Ltd. [1968]
2 Ex.C.R. 446, referred to.
APPEAL.
COUNSEL:
Mortimer G. Freiheit and James Woods for
appellant.
Robert W. Côté for respondent.
Terrance J. McManus for Ken Dolan Inc.
(requesting party).
SOLICITORS:
Stikeman, Elliott, Tamaki, Mercier & Robb,
Montreal, for appellant.
Deputy Attorney General of Canada for
respondent.
Scott & Aylen, Ottawa, for Ken Dolan Inc.
(requesting party).
The following are the reasons for judgment
rendered in English by
DuBÉ J.: This is an appeal from a decision of
the Registrar of Trade Marks expunging the regis-
tration of the appellant's trade mark "Friday's" at
the request of Ken Dolan Inc.
On May 4, 1973 Friday's Ltd., a company of
which the appellant is the president and the major
shareholder, obtained the registration of the trade
mark. On August 4, 1977 Friday's Ltd. assigned
its rights in the trade mark to the appellant and
the latter was inscribed in the Trade Marks Office
as the registered owner on November 25, 1977. On
October 30, 1978 a notice under section 44 of the
Trade Marks Act' was issued by the Registrar at
the written request of the above requesting party.
The appellant filed his affidavit and on May 21,
1980 the Registrar decided to expunge the regis
tration on the ground that the trade mark, on or
before the date of the section 44 notice, was used
by Friday's Ltd., the former registrant, and not by
the appellant. The Registrar concluded as follows:
The fact that Herman Lindy is the president and major share
holder of Friday's Ltd. in no way establishes use of the trade
mark by him .... According to section 44(1) it is the registrant
who must show that he is using the trade mark in association
with each of the services in the normal course of trade in
Canada at the date of the section 44 notice.
The relevant subsections read as follows:
44. (1) The Registrar may at any time and, at the written
request made after three years from the date of the registration
by any person who pays the prescribed fee shall, unless he sees
good reason to the contrary, give notice to the registered owner
requiring him to furnish within three months an affidavit or
statutory declaration showing with respect to each of the wares
or services specified in the registration, whether the trade mark
is in use in Canada and, if not, the date when it was last so in
use and the reason for the absence of such use since such date.
(3) Where, by reason of the evidence furnished to him or the
failure to furnish such evidence, it appears to the Registrar that
the trade mark, either with respect to all of the wares or
services specified in the registration or with respect to any of
such wares or services, is not in use in Canada and that the
absence of use has not been due to special circumstances that
excuse such absence of use, the registration of such trade mark
is liable to be expunged or amended accordingly.
' R.S.C. 1970, c. T-10.
The Registrar placed considerable reliance on a
decision of my brother Cattanach in Aerosol Fill
ers Inc. v. Plough (Canada) Limited 2 where the
learned Judge says as follows [at page 344]:
These circumstances, in my view, place upon the Registrar a
special duty to insure that reliable evidence is received and that
a bare unsubstantiated statement of use is not acceptable and
an allegation which is ambiguitas patens in an affidavit renders
that affidavit equally unacceptable.
In the Aerosol case the only relevant material
adduced before the Registrar was a paragraph of
the affidavit which stated that Plough is "using
... the registered trade mark PHARMACO in the
normal course of trade in Canada in association
with pharmaceutical preparations."
The affidavit filed by Herman Lindy, however,
is not in my view a bare unsubstantiated statement
of use. It fulfils the requirements of section 44 in
that it establishes that the trade mark "Friday's"
was in use in Canada in association with the
services performed at the date of the notice (Octo-
ber 30, 1978). Far from being a bare assertion of
use, the affidavit "shows" the use. It describes the
type of use provided; it provides two press reviews
dealing with the quality of food and service at
Friday's, a T.V. listing, an advertisement for
American Express Credit Card, photocopies of
"Friday's" books of matches and napkins used in
the restaurant with the trade mark "Friday's"
printed thereon, a copy of pennants/distributed to
customers, and even a copy of "Friday's" menu.
The affidavit undoubtedly "shows" that the trade
mark "Friday's" was used in association with the
services provided during the relevant period.
But the affidavit does not establish that the
trade mark was in use in Canada by the appellant.
It establishes that it was in use in Canada by
Friday's Ltd.
I accept the appellant's proposition that the
purpose of proceedings under section 44 is not to
determine a proprietary interest in the trade mark,
but to discover whether or not the trade mark is in
use in Canada. Section 44's vocation is to remove
2 [1980] 2 F.C. 338, confirmed by the Court of Appeal
[1981] 1 F.C. 679.
"dead wood" from the register. That purpose has
been clearly defined by Thurlow A.C.J., as he then
was, in American Distilling Co. v. Canadian
Schenley Distilleries Ltd. 3 ; by Jackett P., as he
then was, in Broderick & Bascom Rope Co. v.
Registrar of Trade Marks 4 ; and also by Thorson
P. in Re Wolfville Holland Bakery Ltd.' wherein
the latter said at page 91:
It is clear that the purpose of s. 44 of the Act is to provide a
procedure for trimming the register of trade marks, so to speak,
by getting rid of "dead wood" in the sense of trade marks that
are no longer in use ....
It is also true that in order to satisfy the require
ments of section 44 it is sufficient for the regis
trant to provide "some evidence" of use of the
trade mark in Canada. Jackett P. in The Noxzema
Chemical Co. of Canada Ltd. v. Sheran Manufac
turing Ltd. 6 put it clearly at page 452:
What it does, as I understand it, is provide a summary proce
dure whereby the registered owner of a trade mark is required
to provide either some evidence that the registered trade mark
is being used in Canada ....
Section 44 is not to be considered a vehicle to
strike out a trade mark from the register on the
ground that it does not express existing rights.
That procedure is provided by section 57 of the
Act. As Thurlow A.C.J., as he then was, said in
American Distilling Co., (supra) at page 62:
The only subjects that arise under s. 44 and which are to be
dealt with in the affidavit or declaration are whether the trade
mark is in use and, if not, the date when it was last in use and
why it is not in use.
Neither is section 44 to be considered the proper
procedure to determine whether a trade mark has
been abandoned by its owner within the meaning
3 (1979) 38 C.P.R. (2d) 60.
4 (1970) 62 C.P.R. 268.
5 (1965) 42 C.P.R. 88.
6 [1968] 2 Ex.C.R. 446.
of section 18(1)(c) of the Act 7 . In the aforemen
tioned Noxzema case, Jackett P., as he then was,
said at pages 451-452:
This provision makes it clear, in my view, that section 44 does
not contemplate a determination of an issue as to whether a
trade mark has been abandoned but is merely a procedure for
clearing the Registry of registrations where there is no real
claim by the registered owner that he has not abandoned the
trade mark .... As I read section 44, it does not provide a
summary procedure for determining whether a registered trade
mark has been "abandoned" within the meaning of section
18(1)(c).
And, as the appellant rightly points out,
section 44 does not expressly stipulate that the
trade mark must be in use in Canada by the
registered owner. There is no jurisprudence deal
ing precisely with the matter.
Counsel for the respondent and the requesting
party rely on a line of decisions 8 dealing with other
sections of the Act to show that "use" under the
Act means use by the registered owner, or a
registered user. On the other hand, counsel for the
appellant advances a number of decisions 9 , again
mostly about other aspects of the legislation, to
show that "use" might be by other persons, such as
legal entities, or commercial organizations con
trolled by the registered owner.
The requesting party has filed an originating notice of
motion in this Court (No. T-3415-78) to strike out the trade
mark "Friday's". The appellant has also commenced an action
in this Court (No. T-3418-78) alleging infringement by the
requesting party.
8 Marketing International Ltd. v. S.C. Johnson and Son,
Limited [1979] 1 F.C. 65; Wilkinson Sword (Canada) Limited
v. Arthur Juda, carrying on business as Continental Watch
Import Co. (1966) 34 Fox Pat. C. 77; The Molson Companies
Ltd. v. Halter (1977) 28 C.P.R. (2d) pp. 158-182; John Labatt
Ltd. v. The Cotton Club Bottling Co. (1976) 25 C.P.R. (2d) pp.
115-126; Gattuso v. Gattuso Corp. Ltd. [1968] 2 Ex.C.R. 609;
Noxzema Chemical Co. of Canada Ltd. v. Sheran Manufac
turing Ltd. (supra).
9 Gray Rocks Inn Ltd. v. Snowy Eagle Ski Club Inc.
(1972) 3 C.P.R. (2d) 9; Upjohn Co. v. Lino Aires de Oliveira
Valadas (1978) 33 C.P.R. (2d) 257; Good Humor Corp. of
America v. Good Humor Food Products Ltd. [1937] Ex.C.R.
61; Berg v. Segal Furniture Ltd. (1974) 14 C.P.R. (2d) 215;
Foodcorp Limited v. Chalet Bar B-Q (Canada) Inc. (1981) 55
C.P.R. (2d) 46.
Reading the Act as a whole, the conclusion is
inescapable, in my view, that "use in Canada"
means use by the registered owner or a registered
user.
The word "use" is defined under section 2 of the
Act:
2....
"use" in relation to a trade mark, means any use that by
section 4 is deemed to be a use in association with wares or
services;
Section 4 which stipulates when a trade mark is
deemed to be used reads 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 such 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 other 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.
(2) A trade mark is deemed to be used in association with
services if it is used or displayed in the performance or advertis
ing of such services.
"Trade mark" is defined under section 2:
2....
"trade mark" means
(a) a mark that is used by a person for the purpose of
distinguishing or so as to distinguish wares or services manu
factured, sold, leased, hired or performed by him from those
manufactured, sold, leased, hired or performed by others,
[Emphasis mine.]
The person in question has to be the registered
owner. Obviously, it cannot be a competitor, or a
stranger. If it were an assignee of the registered
owner, then such an assignee would have to regis
ter as a "registered user" under section 49 in order
to be allowed the "permitted use". Under subsec
tion 49(3), the permitted use of a trade mark has
the same effect for all purposes of this Act as to
use thereof by the registered owner 10 . Allowing
other persons the privileges of "permitted use",
without the benefit of registration as provided
under section 49, would render the latter section
redundant. And there are no provisions under the
Act which would permit an unregistered legal
10 Vide Pigeon J. in S.C. Johnson and Son, Limited v.
Marketing International Ltd. [1980] 1 S.C.R. 99.
entity controlled by the registered owner to use the
trade mark in Canada with the same effect, for
purposes under section 44 or any other purposes,
as a use thereof by the registered owner.
For those reasons the appeal must be dismissed
with costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.