Judgments

[2001] 1 F.C. 665

A-673-98

General Motors du Canada and Décarie Chevrolet Oldsmobile Ltée (Appellants)

v.

Décarie Motors Inc./Les Moteurs Décarie Inc. and Registrar of Trade-marks, Industry Canada, Canadian Intellectual Property Office, Trade-marks Office (Respondents)

Indexed as: General Motors of Canada v. Décarie Motors Inc. (C.A.)

Court of Appeal, Desjardins, Létourneau and Noël JJ.A.—Montréal, September 11; Ottawa, September 28, 2000.

Trade marks — Expungement — Appeal from F.C.T.D. decision trade mark “Décarie” should be expunged from register, compelling disclaimer of right to exclusive use of Décarie in trade mark — Respondent car dealership located on or near Décarie Boulevard, well-known artery in Montréal, since 1949 — In 1990 “Décarie Motors” registered as trade mark — In 1993 applied to register “Décarie” — In response to Registrar’s query whether “Décarie” primarily surname rendering mark not registrable under Trade-marks Act, s. 12(1)(a), respondent’s representative, Segal, swearing unaware of anyone having surname “Décarie” in business of selling, leasing, repairing, servicing motor vehicles — “Décarie” registered as trade mark in 1993, logo registered in 1997 — (1) Registration can be invalidated by fraudulent misstatement, or material innocent misstatement — Failure to mention awareness of corporation carrying on business under names “Passport Décarie Automobiles” and “Décarie Saturn Saab Isuzu” in response to Registrar’s limited question not fraudulent misrepresentation — As not establishing answer false no misrepresentation — No statutory duty to declare facts other than those related to question — Cannot require trade mark owner to foresee, answer potential hurdles to registration — Prima facie “Décarie” not registrable under s. 12(1)(b) due to geographic descriptiveness, but under s. 12(2) registrable if so used in Canada as to have become distinctive at date of filing of application for registration — Distinctiveness must also exist when expungement proceedings commenced: ss. 18(1)(b), 57 — Appropriate to deal with distinctiveness at time of s. 57 proceedings — F.C.T.D. Judge hearing expungement proceedings under s. 57 exercising original jurisdiction — In view of new evidence as to use of “Décarie” by respondent, appellants, others, Judge erred in relying on reasonableness of Registrar’s decision, not conducting independent analysis of evidence — (2) “Décarie” not distinctive at time of expungement proceedings given mark’s inherent weakness, limited use as self-standing mark, use of name “Décarie” in association with sale of automobiles by others.

This was an appeal from a Trial Division decision dismissing the appellants’ application to have the registration of the trade mark “Décarie” expunged from the register and to compel the respondent, Décarie Motors Inc., to disclaim the right to the exclusive use of the word Décarie in its trade mark “Décarie Logo Design”. Since 1949 the respondent Décarie Motors Inc. has operated a car dealership in Montréal. Initially, the business was located on Décarie Boulevard, and it is currently located near Décarie Boulevard. “Décarie Motors” was registered as a trade mark in 1990. The respondent applied for registration of the trade mark “Décarie” in 1993. In response to the Registrar’s query whether the proposed mark was primarily the surname of an individual, contrary to Trade-marks Act, paragraph 12(1)(a), Mr. Segal, a representative of the respondent, stated that he was not aware of anyone having the surname “Décarie” being in the business of selling, leasing, repairing or servicing motor vehicles. In 1995 “Décarie” was registered as a trade mark and in 1997 the logo was registered as a trade mark. In expungement proceedings under section 57 the Trial Division Judge held that the respondent had demonstrated before the Registrar the distinctive character of its mark related to car dealing since 1971 as required by subsection 12(2). He also held that the Registrar’s decision was not unreasonable. Subsection 12(2) provides that a trade mark that is not registrable by reason of paragraph 12(1)(a) (a word that is primarily the name of an individual) is registrable if it has been so used as to have become distinctive at the date of filing an application for registration. Subsection 18(1) provides that registration of a trade mark is invalid if it was (a) not registrable at the date of registration; (b) not distinctive at the time proceedings bringing the validity of the registration into question are commenced. Section 57 gives the Federal Court exclusive original jurisdiction to order any entry on the register struck on the ground that at the date of application the entry did not accurately express the existing rights of the registered owner.

The issues were: (1) whether the trade mark “Décarie” was registrable at the date of its registration; and (2) whether the mark was distinctive at the time of the expungement proceedings.

Held, the appeal should be allowed.

(1) A registration can be invalidated by fraudulent, intentional misstatement or by innocent misstatements material in the sense that without them the section 12 barriers to registration would have been insurmountable. The appellants alleged that the respondent had already stated in an infringement action in the Superior Court of Quebec that it had learned in 1991 that the defendant therein had commenced using the trade name “Passport Décarie Automobiles” and/or “Passport Décarie”. It was alleged that this omission to give pertinent information amounted to fraudulent misrepresentation. The Segal reply was a direct answer to the limited question put to him. It was not established that such answer was false. Therefore, there was no misrepresentation by the respondent.

The appellants also submitted that there was a statutory duty on the appellants to declare fully, not only the use of the surname in reference to paragraph 12(1)(a), but also the use by other dealers of the proposed mark in light of the requirement of distinctiveness under subsection 12(2), and that failure to do so rendered the mark null ab initio. To require the respondent to declare facts other than those related to the question put to him by the Registrar and to require him to answer a question related to a subsection 12(2) inquiry, when such inquiry is not made, would oblige the respondent to foresee all sorts of potential hurdles to the registration of a proposed mark and to address them in advance.

(2) The word “Décarie” may refer either to the family surname or to Décarie Boulevard which is an important artery in Montréal. Prima facie the mark “Décarie” was unregistrable under paragraph 12(1)(b) due to its geographic descriptiveness, but under subsection 12(2) a trade mark that is not registrable by reason of paragraphs 12(1)(a) or (b) is registrable if it has been so used in Canada as to have become distinctive at the date of filing of an application for registration. But read with paragraph 18(1)(b), and section 57, distinctiveness must be kept alive if it is to successfully face a court challenge. It was more appropriate herein to deal with distinctiveness at the time of the expungement proceedings under section 57.

A Trial Judge hearing expungement proceedings under section 57 exercises an original jurisdiction. The Trial Judge had before him new evidence of use of the registered trade mark by the respondent in the form of advertisement clippings, by the appellants and by Décarie Saturn Saab Isuzu and in association with numerous trades, but not exclusively with car sales. In view of this new evidence, the Trial Judge could not simply rely upon the reasonableness of the Registrar’s decision as he did. By not conducting an independent analysis of that evidence he made an error which required the setting aside of his decision.

That the word “Décarie” was not used by itself as a mark in any of the appellants’ advertising indicated that the use of the mark “Décarie” alone has been weak. In addition, the word “Décarie” referred to a well-known boulevard in Montréal and was being used by other merchants and traders operating in the vicinity. Either at the time of the registration of the mark “Décarie” or at the time of the expungement proceedings, there were at least two users of the name “Décarie” associated with the sale of automobiles. While exclusivity of use is not a requirement for distinctiveness, non-exclusive use of a mark is one of the circumstances to be taken into account in assessing distinctiveness, particularly where the mark is inherently weak. There was a lack of distinctiveness with respect to the respondent’s trade mark at the time of the expungement proceedings, stemming from the inherent weakness of the mark itself, and the limited use of the mark made by the respondent, as a self-standing mark, established unequivocally that it had not acquired a secondary meaning.

STATUTES AND REGULATIONS JUDICIALLY CONSIDERED

Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 “distinctive”, 12(1)(a),(b), (2), 18(1)(a),(b),(c), 57.

CASES JUDICIALLY CONSIDERED

DISTINGUISHED:

Unitel Communications Inc. v. Bell Canada (1995), 61 C.P.R. (3d) 12; 92 F.T.R. 161 (F.C.T.D.); Marchands Ro-Na Inc. v. Tefal S.A. (1981), 55 C.P.R. (2d) 27 (F.C.T.D.).

REFERRED TO:

E. & J. Gallo Winery v. Andres Wines Ltd., [1976] 2 F.C. 3 (1975), 25 C.P.R. (2d) 126; 11 N.R. 560 (C.A.); Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (2000), 5 C.P.R. (4th) 180; 252 N.R. 91 (C.A.).

AUTHORS CITED

Fox, H. G. The Canadian Law of Trade Marks and Unfair Competition, 3rd ed. Toronto: Carswell, 1972.

Hughes, Roger T. Hughes on Trade Marks. Markham, Ont.: Butterworths, 1984.

Vaver, D. Intellectual Property Law: Copyright, Patents, Trade-marks. Concord, Ont.: Irwin Law, 1997.

APPEAL from a Trial Division decision dismissing an application to have the registration of the trade mark “Décarie” expunged from the register and to compel the respondent, Décarie Motors Inc., to disclaim the right to the exclusive use of the word Décarie in its trade mark “Décarie Logo Design” (General Motors of Canada et al. v. Décarie Motors Inc. et al. (1998), 160 F.T.R. 262 (F.C.T.D.)). Appeal allowed.

APPEARANCES:

Francis Rouleau for appellants.

Harold W. Ashenmil, Q.C. for respondents.

SOLICITORS OF RECORD:

Pinsonnault, Torralbo, Hudon, Montréal, for appellants.

Phillips, Friedman, Kotler, Montréal, for respondents.

The following are the reasons for judgment rendered in English by

[1]        Desjardins J.A.: This is an appeal from a decision of the Trial Division[1] which dismissed the appellants’ application to have the registration of the trade-mark “Décarie” expunged from the register and to compel the respondent Décarie Motors Inc. to disclaim the right to the exclusive use of the word “Décarie” in its trade-mark “Décarie Logo Design”.

The facts

[2]        The facts are the following:

[3]        Since 1949, the respondent, Décarie Motors Inc./Les Moteurs Décarie Inc. (Décarie Motors), operated a business in Montréal engaged in the sale, lease, and servicing of new and used motor vehicles. Initially, the business was located on Décarie Boulevard, a well-known thoroughfare in Montréal, and is currently located in the vicinity of the intersection between Décarie Boulevard and Highway 40.

[4]        On January 19, 1989, Décarie Motors filed an application to register the mark “Décarie Motors”. Pursuant to a request from the Registrar of Trade-marks (the Registrar), Décarie Motors filed an amended application for registration of “Décarie Motors”, waiving the rights to exclusive use of the words “Décarie” and “Motors” when used apart from the applied-for trade-marks. In 1990, the Registrar registered the trade-mark “Décarie Motors”. The validity of this trade-mark, registered under number TMA 365,045, is not contested in these proceedings.

[5]        In 1993, Décarie Motors filed a new application with the Registrar to register the trade-mark “Décarie”. The Registrar replied that the mark “Décarie” was primarily merely the name of an individual who was living or had died within the preceding 30 years and consequently did not appear to be registrable under paragraph 12(1)(a) of the Trade-marks Act[2] (the Act).

[6]        On February 18, 1994, counsel for Décarie Motors provided documentation, by means of an affidavit of Mr. Joel Segal to which a number of advertisements were attached, tending to show that the mark “Décarie” had become distinctive and could not be taken as the name of an individual when used in association with motor vehicles. The Registrar registered the name “Décarie” as a trade-mark as of February 17, 1995. This trade-mark bears the registration number TMA 439,504.

[7]        On April 24, 1996, Décarie Motors filed an application for the registration of a trade-mark, namely the graphical representation of “Les Moteurs Décarie Inc.”

[8]        The Registrar replied that the words “Moteurs” and “Motors” would have to be disclaimed because they described a character of the wares and services and, as a result, did not appear to be registrable under paragraph 12(1)(b) of the Act.

[9]        In September 1996, Décarie Motors filed a revised trade-mark registration application in which it waived the rights to the exclusive use of the words Moteurs and Motors except in the applied-for trade-mark. On February 28, 1997, the Registrar issued a notice that the logo was accepted as a trade-mark, hereinafter referred to as “Décarie Logo Design”. The mark bears the registration number TMA 474,485 and was registered on April 10, 1997.

[10]      The registrations for all three trade-marks “Décarie Motors”, “Décarie” and “Décarie Logo Design” state that the name “Décarie” has been used in Canada by Décarie Motors since at least June 10, 1971.

[11]      The respondent Décarie Motors filed an action in damages and for an injunction in the Quebec Superior Court, in May 1995, against the appellant Décarie Chevrolet Oldsmobile Ltée and against Décarie Saturn Saab Isuzu to prevent them from using the mark “Décarie”.

[12]      On September 2, 1997, the appellants took expungement proceedings before the Trial Division of this Court under section 57 of the Act. The appellants claim, under paragraphs 18(1)(a), (b) and (c) of the Act, that the mark “Décarie” was not registrable at the time of registration in 1995, that it was not distinctive at the time the expungement proceedings were commenced in 1997, and that the mark had been abandoned.

The judgment below

[13]      The Trial Judge declared obsolete the arguments advanced by the appellants based on paragraphs 12(1)(a) and (b) of the Act, to which paragraph 18(1)(a) of the Act refers, since he was satisfied that the respondent had demonstrated before the Registrar the distinctive character of its mark related to car dealing since 1971, as required by subsection 12(2) of the Act. He was also of the view, from the evidence before him, that the decision of the Registrar was not unreasonable.

The statutory framework

[14]      The statutory framework relevant to this case is reproduced for easy reference:

2. …

“distinctive”, in relation to a trade-mark, means a trade-mark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others or is adapted so to distinguish them;

…

12. (1) Subject to section 13, a trade-mark is registrable if it is not

(a) a word that is primarily merely the name or the surname of an individual who is living or has died within the preceding thirty years;

(b) whether depicted, written or sounded, either clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the wares or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin;

…

(2) A trade-mark that is not registrable by reason of paragraph (1)(a) or (b) is registrable if it has been so used in Canada by the applicant or his predecessor in title as to have become distinctive at the date of filing an application for its registration.

…

18. (1) The registration of a trade-mark is invalid if

(a) the trade-mark was not registrable at the date of registration,

(b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, or

(c) the trade-mark has been abandoned,

and subject to section 17, it is invalid if the applicant for registration was not the person entitled to secure the registration.

…

57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.

The issues

[15]      There are three issues before us: (1) whether the Trial Judge erred in concluding that the trade-mark “Décarie” was registrable at the date of its registration, (2) whether the mark had acquired distinctiveness at the time of the proceedings seeking expungement, and (3) whether the mark “Décarie” had been abandoned.

1. Whether the trade-mark “Décarie” was registrable at the date of its registration

[16]      The appellants claim that the Trial Judge failed to consider the incomplete and misleading nature of the Segal affidavit which, they claim, renders the registration invalid ab initio.

[17]      They rely on the case of Unitel Communications Inc. v. Bell Canada[3] and Marchands Ro-Na Inc. v. Tefal S.A.,[4] but more specifically on the following statement of Harold G. Fox[5] referred to with approval in these cases:

There is … no provision in the Act under which mis-statements in an application for registration … become grounds for invalidating the registration unless the mis-statements had the effect of making the trade mark not registrable under s. 12 of the Act or unless there was a fraudulent misrepresentation. [Emphasis added.]

[18]      A registration can be invalidated by two kinds of misstatements: (i) fraudulent, intentional misstatements, and (ii) those that may be innocent but that are material in the sense that, without them, the section 12 barriers to registration would have been insurmountable.

[19]      The appellants allege both. They say that there was a fraudulent misrepresentation. They also say the respondent omitted to give pertinent information to the Registrar and that this omission made the trade-mark not registrable under section 12 of the Act.

[20]      The respondent Décarie Motors applied for registration of the mark “Décarie” in July 1993 “in accordance with the provisions of the Trade-marks Act—[6] and without relying on any specific provisions of the Act. The Registrar queried whether the proposed mark was primarily the surname of an individual, contrary to the provisions of paragraph 12(1)(a) of the Act. The Registrar stated “Décarie has been found as the surname of living individuals in the following telephone directories: Ottawa: 27, Toronto: 6, Vancouver: 2, Winnipeg: 1, Québec: 10, Montréal: 3 [frac12] columns”.[7]

[21]      In response, Mr. Segal, executive for the respondent, stated:[8]

I am not aware of anyone having the surname “Décarie” being in the business of selling, leasing, repairing or servicing motor vehicles.

[22]      Here, say the appellants, is where the fraudulent misrepresentation lies. The appellants argue that the respondent had already stated, in an infringing action before the Superior Court of Quebec[9] against a corporation carrying on business under the names “Passport Décarie Automobiles” and “Décarie Saturn Saab Isuzu”, that it had learned during April 1991 that the named defendant had commenced using the trade name “Passport Décarie Automobiles” and/or “Passport Décarie". Mr. Segal, it is alleged, should not have been so restrictive in his answer to the Registrar at the time of registration. His omission amounts to a fraud.

[23]      A fraudulent misrepresentation is a serious allegation. In the case at bar, it must be recognized that the Segal affidavit was given in response to a specific query made by the Registrar with respect to the use of the name or surname of an individual as envisaged in paragraph 12(1)(a) of the Act. The reply made by Mr. Segal was a direct answer to the limited question put to him. It has not been established that such answer was false, i.e. that the respondent knew at the time that the word Décarie was used as the name or surname of an individual within the terms of paragraph 12(1)(a). Therefore, it is impossible in that context to conclude that there was misrepresentation on the part of the respondent. This case is obviously distinguishable from those of Unitel Communications Inc. v. Bell Canada[10] and Marchands Ro-Na Inc. v. Tefal S.A.[11] where the statements at issue were found to be false. The presumption of good faith, therefore, continues to apply in favour of the respondent.

[24]      The appellants, nevertheless, say there was a statutory duty on the part of the appellants to declare fully, not only the use of the surname in reference to paragraph 12(1)(a) of the Act, but also the use by other dealers of the proposed mark in light of the requirement of distinctiveness under subsection 12(2) of the Act. Failure to do so, they allege, renders the mark null ab initio.

[25]      To require the respondent to declare facts other than those related to the question put to him by the Registrar and to require him to answer a question related to a subsection 12(2) inquiry, when such inquiry is not made, would oblige the respondent to foresee all sorts of potential hurdles to the registration of a proposed mark and to address them in advance. There is nothing in the legislation and in the case law which requires such a standard of conduct.

[26]      The appellants’ first contention is unfounded.

2. Whether the mark “Décarie” had acquired distinctiveness at the time of the proceedings seeking expungement

[27]      The word Décarie, by itself, may refer either to the family surname or to Décarie Boulevard which is an important artery in Montréal.[12] The respondent claims it can also refer to its services. Décarie, they say, has gained a secondary meaning by the fact that the Segal family has been in the car-dealing business for 48 years. Moreover, through its advertising and, in particular, through its use of slogans such as “Come to Décarie” or “Drop by Décarie”, consumers have come to refer to the respondent’s business by the name “Décarie”.

[28]      It is certainly reasonable to say, as contended by the appellants, that prima facie the mark “Décarie” was unregistrable under paragraph 12(1)(b) of the Act due to its geographic descriptiveness (place of origin).

[29]      Subsection 12(2) of the Act states, however, that a trade-mark that is not registrable by reason of paragraphs 12(1)(a) or (b) of the Act is registrable if it has been so used in Canada as to have become distinctive at the date of filing of an application for registration. Coupled with paragraph 18(1)(b), which is relied on by the appellants, distinctiveness must also exist at the time the expungement proceedings were commenced in 1997. Section 57 of the Act also refers to the date of the application for expungement as being the relevant date for the appreciation of the rights of the parties.

[30]      Distinctiveness, recognized at the time of registration, must be kept alive if it is to successfully face a court challenge.[13] It is therefore more appropriate in the case at bar to deal with distinctiveness at the time of the section 57 proceedings.

[31]      The Trial Judge, hearing expungement proceedings under section 57 of the Act, exercises an original jurisdiction. He does not sit in appeal or in judicial review of the Registrar’s decision to register the trade-mark. He must approach the issues before him with a fresh mind. This makes sense as the proceedings before the Registrar are ex parte while expungement proceedings before the Trial Judge are adversarial. The onus lies on the party attacking the registration to show that it should be expunged. The registered mark is presumed valid.[14]

[32]      The Trial Judge in the case at bar correctly stated, at the beginning of his reasons, that he was sitting neither in appeal nor in review of the decision of the Registrar. He had before him evidence of use of the registered trade-mark by the respondent in the form of advertisement clippings attached to a second affidavit by Mr. Segal. He was also made aware of use of the mark “Décarie” by the appellants and by Décarie Saturn Saab Isuzu. Both are being sued by the appellants in proceedings before the Superior Court of Quebec. He also had two affidavits by two executives of the appellants, together with documents indicating the use of the mark “Décarie” in association with numerous trades, but not exclusively with car sales. In view of this new evidence, the Trial Judge could not simply rely upon the reasonableness of the Registrar’s decision as he did. He should have conducted an independent analysis of that evidence relating to the issues before him. In failing to do so, he made an error which calls for the setting aside of his decision.

[33]      Since the evidence is exclusively in terms of documents and no issue of credibility arises, this Court is in as favourable a position as the Trial Judge to determine what conclusions should be drawn from them.[15]

[34]      The advertisements and other documents filed by the respondent are of no effect since they are not specifically related to car dealings. On the other hand, one cannot escape the fact that in none of the respondents’ advertising can one find the word “Décarie” used by itself as a mark. The marks “Décarie Motors” or “Les Moteurs Décarie” appear at all times. The word “Décarie”, standing alone as “Come to Décarie” or “Drop by Décarie”, appears only in the text of the ads while “Décarie Motors” or “Les Moteurs Décarie” appears prominently in bold capital letters. This, in itself, is an indication that the use of the mark “Décarie”, standing alone, has been weak, if not absent. The word Décarie can only be found in the title of an article on the Segal family and their business which reads “Family Ties Keep Décarie Going Strong”.[16] Again, however, the text of the article makes it clear that what was being referred to in the title was Décarie Motors.

[35]      In addition, the evidence reveals that the word Décarie referred in the community to a well-known boulevard in Montréal, and that it was being used by other merchants and traders operating along or in the vicinity of that location. As a matter of fact, either at the time of the registration of the mark “Décarie” by the Registrar who was not aware of this or at the time of the expungement proceedings, there were at least two users of the name Décarie associated with the sale of automobiles: the appellant and Décarie Saturn Saab Isuzu. This is, in my view, a significant circumstance which, combined with the limited use of the mark “Décarie” by the respondent, militates against a finding that the word “Décarie”, standing alone, had acquired such a distinctiveness as to refer to the wares and services of the respondent.

[36]      Counsel for the respondent correctly pointed out that exclusivity of use is not a requirement for distinctiveness since the competitors who are using the trade-mark could be infringers. I note that there is no reference in the Act to exclusivity, neither in the definition of “distinctive” nor in the one of “trade-mark”.[17]

[37]      I believe, however, that the non-exclusive use of a mark is one of the circumstances to be taken into account in assessing distinctiveness, particularly where the mark is inherently weak. H. G. Fox expressed in the following terms the rule applicable in such matter:[18]

The extent to which a tribunal will be influenced by a claim of distinctiveness must depend upon all the circumstances including the area within which and the time during which such distinctiveness in fact can be predicated of the mark in question. [Emphasis added.]

[38]      In the present instance, we have seen that the word “Décarie” in Montréal refers to a well-known and important geographical location and that two other entities operating within that location have used the word “Décarie” as a part of their trade-name in relation to the same wares and services since at least the time of registration.

[39]      I am of the view that there is a lack of distinctiveness with respect to the respondent’s trade-mark at the time of the expungement proceedings. This lack of distinctiveness stems from the inherent weakness of the mark itself, and the limited use of the mark made by the respondent, as a self-standing mark, establishes unequivocally that it has not acquired a secondary meaning.

3. Whether the mark “Décarie” had been abandoned

[40]      In view of the above conclusion, I need not address the third issue, namely the possible abandonment of the mark “Décarie”.

Conclusion

[41]      I would allow this appeal and would set aside the judgment below. I would order the expungement from the Canadian Register of Trade-marks of the registration number TMA 439,504 dated February 17, 1995, for the trade-mark “Décarie”, and would ask the Registrar of Trade-marks to make the appropriate entries on the register. I would order the respondent to file, within 60 days of the present judgment, a disclaimer to the exclusive right to use the word “Décarie” outside the trade-mark “Décarie Logo Design”; following which I would request the Registrar of Trade-marks to amend accordingly the trade-mark “Décarie Logo Design”, number TMA 474,485, dated April 10, 1997. If the respondent does not comply with such order, within 60 days of the present judgment, the said trade-mark would be expunged in toto.

[42]      The whole with costs in appeal and in first instance.

Létourneau J.A.: I concur.

Noël J.A.: I agree.

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