TRADE MARKS |
Expungement |
Cullman Ventures, Inc. v. Quo Vadis International Ltd.
T-1404-97, T-1406-97
Lemieux J.
26/10/00
22 pp.
Appeals from decisions rendered by Senior Hearing Officer concerning "use" of trade mark in association with designated wares in context of Trade-marks Act, s. 45--S. 45 enabling Registrar of Trade-marks to expunge registered trade mark if registered owner fails to provide evidence of use within relevant period--Cullman Ventures Inc. invoked s. 45 to attack two registered trade marks owned by Quo Vadis International Ltd. namely: (a) registered trade mark TMA 258,685, "Le planning horizontal de votre année d'un seul coup d'oeil" in association with "publications imprimées, notamment des agendas et des calendriers"; and (b) registered trade mark TMA 257,847, "Your Year's Horizontal Planning at a Single Glance" in association with agendas, calendars--Filing of fresh affidavit on appeal triggering standard of review set out recently by F.C.A. in Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145--Wares in connection with which two trade marks relate: "printed publications, namely, agendas and calendars"--Senior Hearing Officer wrong in deciding to maintain Quo Vadis' two registrations--Evidence adduced before Senior Hearing Officer, in record before Court not establishing use of registered trade marks by owner within meaning of Act, ss. 2, 4--Quo Vadis not using trade marks subject of appeal for purpose of distinguishing agendas--"Agenda Planning®" chosen mark for such purpose--Use of trade marks as registered on one or two pages inside two of five agendas of French language agendas exhibited, one English language agenda not sufficient to overcome dominance of "Agenda Planning®" as distinguishing mark notwithstanding fresh affidavit of Christian Froc--Affidavit speculative as to consumer behaviour, not establishing trade mark use--Evidence disclosing Quo Vadis never used either of two trade marks subject of appeal alone but always in association with trade mark, that is, "Diarizon®"--Senior Hearing Officer said word "Diarizon®", trade marks as registered did not appear so closely together that they would not be perceived as separate marks--Clearly wrong in analysis--Should have applied test set out by Pratte J. in Registrar of Trade Marks v. Compagnie Internationale pour l'Informatique Cll Honeywell Bull, [1985] 1 F.C. 406 (C.A.)--Differences between two trade marks not so unimportant that unaware purchaser would be likely to infer that both, in spite of differences, identify goods having same origin, namely goods originating with Quo Vadis--Appeals allowed--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 (as am. by S.C. 1993, c. 15, s. 57; idem, c. 44, ss. 225, 236(1)(b); 1994, c. 47, s. 190), 4, 45 (as am. by S.C. 1993, c. 44, s. 232; 1994, c. 47, s. 200).