A-684-97
Cinnabon, Inc. (Appellant)
v.
Yoo-Hoo of Florida Corp., also doing business under the trade name Orangina International Company (Respondent)
Indexed as: Austin Nichols & Co., Inc.v. Cinnabon Inc. (C.A.)
Court of Appeal, Desjardins, Décary and Noël JJ.A. "Montréal, September 15; Ottawa, September 24, 1998.
Trade marks — Practice — Appeal from Trial Judge's decision reversing Registrar's decision to expunge respondent's registration of trade-mark —Swirl Design— — Respondent not furnishing evidence of use in Canada to Registrar in response to s. 45 notice — S. 56(5) providing evidence —in addition to— that adduced before Registrar may be adduced on appeal to Federal Court — —In addition to— not implying must be prior evidence to which further evidence could be adduced — S. 56 of general application — Not permitting interpretation depriving anyone of meaningful right of appeal — Denial to registered owner of right to file evidence on appeal denial for all practical purposes of any chance of succeeding — Also leading to absurd result of allowing registered owner who files insignificant, irrelevant evidence to —add— evidence while those who do not file evidence not able to do so — Giving Court same discretion as —vested in Registrar— recognizing Court sitting in appeal able to decide issues as if tried for first time before Court — Suggesting registered owner having same opportunity to file evidence in appeal as before Registrar — Line of authority s. 56(5) should not be strictly construed against registered owner in appeals related to s. 45 proceedings — Court not interfering with finding differences between mark as used, registered not so significant as to mislead unaware purchaser.
This was an appeal from the Trial Judge's decision reversing the Registrar of Trade-marks' decision to expunge the 1986 registration by Austin Nichols of the trade-mark "Swirl Design". When Austin Nichols did not file any evidence in response to the Registrar's notice to furnish evidence of use of the trade-mark in Canada, the Registrar decided that the registration would be expunged. On appeal, Austin Nichols filed one affidavit. The appeal was allowed. Trade-marks Act , subsection 56(5) provides that evidence in addition to that adduced before the Registrar may be adduced before the Federal Court, and the Court may exercise any discretion vested in the Registrar. The appellant submitted that subsection 56(5) precluded a registered owner from filing any evidence upon appeal if it had not filed any evidence before the Registrar.
The issues were (1) whether Austin Nichols was entitled to file any affidavit evidence upon the appeal; and (2) if so, was the evidence sufficient to show use of the mark registered.
Held, the appeal should be dismissed.
(1) The words "in addition to" do not in themselves necessarily imply that there had to be prior evidence to which further evidence could be added. The appeal process established by section 56 applies to all appeals by whatever party from any proceeding before the Registrar. The terms of section 56 do not permit an interpretation whose practical effect would be to deprive anyone in any given case of a meaningful right of appeal. As the failure to file evidence is in itself a ground for expungement by the Registrar in a section 45 proceeding, to deny a registered owner the right to file evidence on appeal would be to deny him for all practical purposes any chance to succeed in his appeal. The literal interpretation suggested by the appellant would allow a registered owner who files insignificant or irrelevant evidence before the Registrar to "add" evidence on appeal. Parliament could not have intended to punish those who disregard the Registrar's notice and, at the same time, encourage the filing of insignificant or irrelevant evidence before the Registrar.
Subsection 56(4) empowers the Court to give public notice of the hearing of the appeal and of the "matters at issue therein". This leads to an assumption that Parliament's principal concern was to protect the integrity of the register of trade-marks. The Court's duty is not restricted to that of adjudicating on the claims of the parties; it is also to ensure that the register remains a reliable public document.
In giving the Court the same discretion as that "vested in the Registrar", Parliament recognized that the Court sitting in appeal is expected to be able to decide the issues as if they were tried for the first time before the Court. This suggests that a registered owner has, upon appeal, the same opportunity to file evidence as he had before the Registrar.
Subsection 56(5) can reasonably be interpreted as meaning that on appeal to the Trial Division a registered owner is given a second chance to save his mark from expungement or amendment. There is a clear line of authority to the effect that subsection 56(5) should not be strictly construed as against the registered owner in appeals related to section 45 proceedings. A court of appeal should not without compelling reasons disturb such a clearly established trend in as practical an area as that at issue.
(2) Since the test to be met under section 45 is not a heavy one, it was open to the Trial Judge to find evidence of a prima facie use by Austin Nichols of the trade-mark it had registered. The Trial Judge was not satisfied that the differences between the mark as used and the mark as registered were so significant with respect to some of its dominant features as to mislead an unaware purchaser, and the Court of Appeal was not prepared to interfere with this finding.
statutes and regulations judicially considered
Trade-marks Act, R.S.C., 1985, c. T-13, ss. 45(1) (as am. by S.C. 1994, c. 47, s. 200), (3) (as am. idem), (4), 56.
cases judicially considered
applied:
Re Wolfville Holland Bakery Ltd. (1964), 42 C.P.R. 88 (Ex. Ct.); Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1981] 1 F.C. 679; (1980), 53 C.P.R. (2d) 62; 34 N.R. 39 (C.A.); Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (F.C.T.D.); Nissei Plastics Industrial Co. v. Pascal & Associates (1994), 58 C.P.R. (3d) 395 (F.C.T.D.).
considered:
Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1991), 40 C.P.R. (3d) 409; 138 N.R. 379 (F.C.A.); Broderick & Bascom Rope Co. v. Registrar of Trade Marks (1970), 62 C.P.R. 268 (Ex. Ct.); Boutiques Progolf Inc. v. Marks & Clerk (1993), 54 C.P.R. (3d) 451; 164 N.R. 264 (F.C.A.).
referred to:
Cornerstone Securities Canada Inc. v. Canada (Registrar of Trade Marks) (1994), 58 C.P.R. (3d) 417 (F.C.T.D.); Lander Co. Canada Ltd. v. Alex E. Macrae & Co. (1993), 46 C.P.R. (3d) 417; 62 F.T.R. 71 (F.C.T.D.); Quarry Corp. v. Bacardi & Co. (1996), 72 C.P.R. (3d) 25; 124 F.T.R. 264 (F.C.T.D.); Roebuck et al. v. Registrar of Trade Marks et al. (1987), 13 C.I.P.R. 75; 15 C.P.R. (3d) 113 (F.C.T.D.); Gesco Industries Inc. v. Sim & McBurney (1997), 76 C.P.R. (3d) 289 (F.C.T.D.); Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340; 112 F.T.R. 39 (F.C.T.D.); Assurance-Vie Desjardins v. North American Life Assurance Co. (1995), 63 C.P.R. (3d) 225; 99 F.T.R. 254 (F.C.T.D.); SkyDome Corp. v. Toronto Heart Industries Ltd. (1997), 72 C.P.R. (3d) 546; 128 F.T.R. 71 (F.C.T.D.); Automaxi S.A. v. U.A.P. Inc. (1993), 47 C.P.R. (3d) 158; 61 F.T.R. 45 (F.C.T.D.); affd (1994), 59 C.P.R. (3d) 82; 178 N.R. 53 (F.C.A.); Primax Computer Corp. v. Primax Electronic (U.S.A.) Inc. (1995), 62 C.P.R. (3d) 75; 98 F.T.R. 63 (F.C.T.D.); Mantha & Associés/Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3d) 354 (F.C.A.).
APPEAL from Trial Judge's decision reversing the Registrar of Trade-marks' decision to expunge registration by Austin Nichols of the trade-mark "Swirl Design" (Austin Nichols & Co. v. Cinnabon, Inc. (1997), 76 C.P.R. (3d) 45; 135 F.T.R. 303 (F.C.T.D.)). Appeal dismissed.
appearances:
A. David Morrow for appellant.
Stéphane Létourneau for respondent.
solicitors of record:
Smart & Biggar, Ottawa, for appellant.
Martineau, Walker, Montréal, for respondent.
The following are the reasons for judgment rendered in English by
Décary J.A.: This is an appeal from a decision of Rouleau J., dated September 5, 1997,1 reversing a decision of the Registrar of Trade-marks (the Registrar) to expunge trade-mark registration No. TMA 321,610 pursuant to subsection 45(4) of the Trade-marks Act, R.S.C., 1985, c. T-13, as amended (the Act).
The trade-mark at issue is "Swirl Design". It was registered in 1986 by the respondent Austin Nichols & Co., Incorporated (Austin Nichols). In May 1996, the appellant Cinnabon, Inc. (Cinnabon) requested that the Registrar issue a notice pursuant to subsection 45(1) [as am. by S.C. 1994, c. 47, s. 200] of the Act requesting Austin Nichols to furnish evidence of use of the trade-mark in Canada. The notice was issued by the Registrar. Austin Nichols did not file any evidence in response to the notice. On October 18, 1996, the Registrar advised Austin Nichols that the registration would be expunged from the register by reason of its failure to file evidence. On October 22, 1996, Austin Nichols requested a retroactive extension of time for filing its evidence showing use. This request was denied by the Registrar on the basis that as the decision to expunge had been rendered, he was now functus officio in respect of this matter.
Austin Nichols then filed a notice of appeal in the Trial Division pursuant to section 56 of the Act. In support of its appeal, it filed one affidavit with exhibits attached thereto.
In opposing the appeal, Cinnabon adopted the position that Austin Nichols was not entitled to file any affidavit in the appeal since it had adduced no evidence before the Registrar. According to counsel, the wording of subsection 56(5) of the Act precludes a registered owner from filing any evidence in appeal if he had not filed any evidence before the Registrar. Counsel added that in any event the evidence adduced was not sufficient to show use of the very mark registered within the meaning of the Act. Rouleau J. dismissed both contentions and allowed the appeal.
The same two issues are now before us. It will be useful to reproduce at the start the text of sections 45 and 56 of the Trade-marks Act:
45. (1) The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to each of the wares or services specified in the registration, 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 such use since that date.
(2) The Registrar shall not receive any evidence other than the affidavit or statutory declaration, but may hear representations made by or on behalf of the registered owner of the trade-mark or by or on behalf of the person at whose request the notice was given.
(3) Where, by reason of the evidence furnished to the Registrar or the failure to furnish any evidence, it appears to the Registrar that a trade-mark, either with respect to all of the wares or services specified in the registration or with respect to any of those wares or services, was not used in Canada at any time during the three year period immediately preceding the date of the notice and that the absence of use has not been due to special circumstances that excuse the absence of use, the registration of the trade-mark is liable to be expunged or amended accordingly.
. . .
56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months.
(2) An appeal under subsection (1) shall be made by way of notice of appeal filed with the Registrar and in the Federal Court.
(3) The appellant shall, within the time limited or allowed by subsection (1), send a copy of the notice by registered mail to the registered owner of any trade-mark that has been referred to by the Registrar in the decision complained of and to every other person who was entitled to notice of the decision.
(4) The Federal Court may direct that public notice of the hearing of an appeal under subsection (1) and of the matters at issue therein be given in such manner as it deems proper.
(5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar.
The first issue: The filing of evidence in the appeal in the Trial Division
The very literal interpretation of the words "in addition to" ("en plus de") in subsection 56(5) of the Act proposed by counsel for the appellant is quite attractive at first blush considering the particular regime set out in section 45. That section imposes an obligation on the registered owner to "furnish" to the Registrar "an affidavit or a statutory declaration" (subsection 45(1)). The Registrar is precluded from receiving "any evidence other than the affidavit or statutory declaration" of the registered owner (subsection 45(2)) and he is authorized, by reason of the mere failure of the registered owner to furnish any evidence, to expunge or amend the trade-mark (subsection 45(3)). In these circumstances, it could make sense to prevent a registered owner who has failed to adduce any evidence before the Registrar from using the appeal process as a means to circumvent the obligation imposed on him in the first place by subsection 45(1). Otherwise, one might well think, a registered owner can simply ignore the notice given to him by the Registrar and wait until the appeal process has begun before filing his evidence.
That interpretation, however, does not withstand closer scrutiny.
The words themselves ("in addition to", "en plus de") are not as clear as the appellant says. They do not in themselves necessarily imply that there had to be prior evidence to which further evidence could be added. The fact is that if one is added to zero, the result will be one; there was an addition although technically speaking there was nothing to add it to. I would not readily give to the word "addition" a meaning that defies the basic rules of arithmetic.
Also, and perhaps more importantly, the proposed interpretation of the words "in addition to" does not resist an examination of the context"that of the appeal process set out in section 56"in which they are found nor does it resist an examination of the context"that of a proceeding under section 45"in which they are to be applied.
Section 56 is a provision of general application. The appeal process it establishes is not qualified in any way; it applies to all appeals by whatever party from any proceeding before the Registrar. It is not directed solely to decisions made under section 45 nor is it reserved to registered owners who have filed some evidence in the proceeding before the Registrar. The words used are meant to be wide enough to encompass any peculiarity associated with the particular type of proceeding at issue in the appeal.
The terms of section 56 do not permit an interpretation whose practical effect would be to deprive anyone in any given case of a meaningful right of appeal. As the failure to file evidence is in itself a ground for expungement by the Registrar in a section 45 proceeding, to deny a registered owner the right to file evidence in appeal is to deny him for all practical purposes any chance to succeed in his appeal. To retain the literal interpretation suggested by the appellant would also allow a registered owner who files insignificant or irrelevant evidence before the Registrar to "add" evidence in appeal. The intention of Parliament could not have been to punish those who disregard the Registrar's notice and, at the same time, to encourage the filing of insignificant or irrelevant evidence before the Registrar.
When interpreting subsection 56(5), one should be reminded that the appeal process is clearly directed at the public in general as much as at the parties. Subsection 56(4) is an unusual provision which empowers the Court to give public notice of the hearing of the appeal and "of the matters at issue therein". Such a provision cannot but lead to an assumption that a principal concern of Parliament was to protect the integrity of the register of trade-marks. The Court's duty is not restricted to that of adjudicating on the claims of the parties; it is also to ensure that the register remains a reliable public document.
The role of the Court sitting in appeal of a decision of the Registrar is made abundantly clear by the last words of subsection 56(5). In giving the Court the same discretion as that "vested in the Registrar", Parliament has recognized that the Court sitting in appeal is expected to be able to decide the issues as if they were tried for the first time before the Court. This, in my view, suggests that a registered owner has in appeal the same opportunity to file evidence as he had before the Registrar.
I now turn to the purpose and scope of the proceeding set out in section 45. They were described as follows by Hugessen J.A. in Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1991), 40 C.P.R. (3d) 409 (F.C.A.), at pages 412-413:
Section 45 provides a simple and expeditious method of removing from the register marks which have fallen into disuse. It is not intended to provide an alternative to the usual inter partes attack on a trade mark envisaged by s. 57. The fact that an applicant under s. 45 is not even required to have an interest in the matter (the respondent herein is a law firm) speaks eloquently to the public nature of the concerns the section is designed to protect.
Section 45(2) is clear: the Registrar may only receive evidence tendered by or on behalf of the registered owner. Clearly it is not intended that there should be any trial of a contested issue of fact, but simply an opportunity for the registered owner to show, if he can, that his mark is in use or if not, why not.
An appeal to the court, under s. 56 does not have the effect of enlarging the scope of the inquiry or, consequentially, of the evidence relevant thereto. We cannot improve on the words of Thurlow C.J., speaking for this court, in Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 at p. 69, [1981] 1 F.C. 679, 34 N.R. 39, quoting with approval the words of Jackett P. in Broderick & Bascom Rope Co. v. Registrar of Trade Marks (1970), 62 C.P.R. 268:
In my view, evidence submitted by the party at whose instance the s-s. 44(1) (now 45(1)) notice was sent is not receivable on the appeal from the Registrar any more than it would have been receivable before the Registrar. On this point, I would adopt the view expressed by Jackett P. in Broderick Bascom Rope Co. v. Registrar of Trade Marks, supra, when he said at p. 279:
"What the applicant relies upon is the dictum that the Court can be `satisfied that the trade mark is in use'. In their context, I am satisfied that these words refer only to the Court being satisfied in the same way as the Registrar might have been satisfied at the earlier stage"that is, by evidence adduced by the registered owner. The learned President did not have to deal there with the question whether third parties could come in with evidence and there is nothing in what he said to suggest that he addressed his mind to this possibility.
"The applicant also relies on s. 55(5) [now 56(5)] which provides that `On the appeal evidence in addition to that adduced before the Registrar may be adduced'. This cannot, however, extend to authorizing evidence on issues that are not before the Court on the appeal. When, therefore, the sole question is whether the registered owner's evidence makes it `appear' to the Court that there is user, any other evidence on the question of user is obviously not relevant to that issue."
Section 45 was also examined in other cases worthy of mention. The procedure was described by President Jackett in Broderick & Bascom Rope Co. v. Registrar of Trade Marks (1970), 62 C.P.R. 268 (Ex. Ct.), at pages 276-277, as "a simple procedure for clearing out of the Register entries of trade marks which are not bona fide claimed by their owners as active trade marks", and by Desjardins J.A. in Boutiques Progolf Inc. v. Marks & Clerk (1993), 54 C.P.R. (3d) 451 (F.C.A.), at page 457 as "a summary procedure which is essentially designed to clear the register of registrations of trade marks that have fallen into disuse and that are to some extent dead wood".
The purpose of cleaning the dead wood is inconsistent, in my view, with an interpretation of the appeal process as described earlier which would prevent a registered owner from attempting to show the Court that he does in fact use his mark bona fide.
In the end, I am not prepared to hold that subsection 56(5) should be interpreted as a penalty clause in disguise meant to punish a registered owner for having ignored the request made by the Registrar pursuant to section 45. Quite to the contrary, the words spoken in subsection 56(5) can reasonably be interpreted as meaning that on appeal to the Trial Division, a registered owner is given a second chance to save his mark from expungement or amendment. This conclusion finds considerable support in the case law.
While the issue of "additional evidence" does not appear to have been previously addressed, as such, by the Exchequer Court or by the Federal Court of Appeal, it was in my view implicitly decided by President Thorson in Re Wolfville Holland Bakery Ltd. (1964), 42 C.P.R. 88 (Ex. Ct.). The situation there was remarkably similar to the present one. A registered owner had failed to file any evidence before the Registrar. The Registrar had expunged the registration from the register by reason of the failure of the registered owner to furnish any evidence. The registered owner had then sought from the Registrar an extension of time for the purpose of filing an affidavit. The Registrar had denied the extension on the basis that he was functus officio. The registered owner appealed both from the decision of the Registrar to expunge the registration and from his refusal to grant the extension of time. The registered owner then filed an affidavit in the Exchequer Court in support of his appeal.
President Thorson dismissed the appeal with respect to the dismissal of the extension of time but allowed the appeal with respect to the expungement on the basis of the affidavit evidence filed before him. He did so in the following terms at pages 91-92:
In my opinion, the Registrar was right in refusing to grant the requested extension. He could have granted it, if the period of three months fixed in the notices had expired, if he had not yet made his decision, but he had no authority to do so after he had made his decision. This left an appeal to this Court as the only course open to the appellant.
Although the Registrar decided on November 17, 1961, to expunge the registration of the trade marks referred to, the Act requires him to await the final judgment given in the appeal from his decision and to act accordingly.
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 but, at the same time, the Act provides safeguard for the protection of the registered owner of a trade mark against any unwarranted attempt to have it expunged.
Any person who pays the prescribed fee has the right to request the sending of a notice under s. 44 of the Act and the Registrar must, unless he sees good reason to the contrary, comply with such request.
But the Act protects the rights of the registered owner of the trade mark. He has two courses open to him. He may comply with the requirement of the Registrar by furnishing an affidavit or statutory declaration showing that the mark referred to is still in use. If it is, then it is not "dead wood" and there is no need of getting rid of it.
The registered owner has also the protection of recourse to the Court by way of appeal to it if the Registrar has decided to expunge the registration. In such case it is within the competence of the Court if it is satisfied that the trade mark is in use, to allow the appeal from the Registrar's decision in which case he will not act on his decision to expunge it and the registration will remain on the register.
It is of particular interest to note that President Thorson expressed the view that in cases akin to the present one, the appeal to the Court was "the only course open to the appellant" and that the appeal to the Court was a "safeguard for the protection of the registered owner of a trade mark against any unwarranted attempt to have it expunged". Mr. Justice Rouleau, in the case at bar, relied precisely on these latter words.
This Court, in Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1981] 1 F.C. 679 (C.A.), at page 682, referred with approval to the decision in Wolfville Holland Bakery Ltd. as one of the cases that "clearly and adequately expound the law" with respect to the scope and purpose of section 45 (then section 44 [R.S.C. 1970, c. T-10]). I note in passing that in Plough , Chief Justice Thurlow, at page 686, expresses the view that "[t]he statute requires the facts to be shown and when that has been done the Registrar, and the Court in its turn , will determine whether the facts stated show use" (my emphasis). He further refers, at page 688, to comments by President Jackett in Broderick , supra, paragraph 15, at page 279, to the effect that the Court must be "satisfied in the same way as the Registrar might have been satisfied at the earlier stage"that is, by evidence adduced by the registered owner". Later on, at page 689, the Chief Justice refers to the lengthy period available to a registered owner to file evidence: "three months in the first instance before the Registrar and ample time within the Rules of this Court thereafter to file evidence".
In more recent years, judges of the Trial Division have consistently allowed a registered owner to file evidence in section 45 appeals even if he had not filed any before the Registrar. The issue was squarely addressed only twice, by Strayer J. (as he then was) in Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (F.C.T.D.) and Gibson J. in Nissei Plastics Industrial Co. v. Pascal & Associates (1994), 58 C.P.R. (3d) 395 (F.C.T.D.) and both ruled in favour of the registered owner.
In Lewis Thomson, supra, paragraph 22, at page 485, Strayer J. found as follows:
In any event, I am faced with the fact that there is an appeal. It appears to me, by virtue of s-s. 56(5) of the Trade Marks Act, that the court is obliged to entertain the appeal and to entertain further evidence, if the appellant wishes to submit that further evidence. There is no condition laid down in the Trade Marks Act which would limit the court in the evidence it receives: that is, the Act does not limit the court to receiving only such evidence as was not available at the time of the registrar's proceeding or that was not reasonably available to the appellant or not known about at that time. None of these criteria is prescribed, and it appears to be open to the appellant to bring in any new evidence. The fact that this evidence was not put before the registrar, it seems to me, is a proper matter for consideration with respect to costs but not otherwise.
In Nissei Plastics, supra, paragraph 22, at pages 401-402, Gibson J. would have adopted a literal interpretation similar to that proposed here by the appellant, but for the fact that "the objective of s. 45 and thus of related appeals under s. 56" mandated "that section 56(5) should not be interpreted strictly against the [registered owner]".
In all the other cases, the same result was reached after little if any discussion (see Cornerstone Securities Canada Inc. v. Canada (Registrar of Trade Marks) (1994), 58 C.P.R. (3d) 417 (F.C.T.D.), Wetston J.; Lander Co. Canada Ltd. v. Alex E. Macrae & Co. (1993), 46 C.P.R. (3d) 417 (F.C.T.D.), Rouleau J.; Quarry Corp. v. Bacardi & Co. (1996), 72 C.P.R. (3d) 25 (F.C.T.D.), Lutfy J. (in appeal, Court file A-11-97); Roebuck et al. v. Registrar of Trade Marks et al. (1987), 15 C.P.R. (3d) 113 (F.C.T.D.), Martin J.; and, Gesco Industries Inc. v. Sim & McBurney (1997), 76 C.P.R. (3d) 289 (F.C.T.D.), Wetston J. (in appeal, Court file A-866-97)).
There is, therefore, a clear line of authority to the effect that subsection 56(5) should not be strictly construed as against the registered owner in appeals related to section 45 proceedings. A court of appeal should not without compelling reasons disturb such a clearly established trend in as practical an area as the one at issue.
I note that a similarly consistent line of authority governs the interpretation of subsection 56(5) in the context of opposition proceedings (see Choice Hotels International Inc. v. Hotels Confortel Inc. (1996), 67 C.P.R. (3d) 340 (F.C.T.D.), Rouleau J. (in appeal, Court file A-284-96); Assurance-Vie Desjardins v. North American Life Assurance Co. (1995), 63 C.P.R. (3d) 225 (F.C.T.D.), Dubé J.; SkyDome Corp. v. Toronto Heart Industries Ltd. (1997), 72 C.P.R. (3d) 546 (F.C.T.D.), Lutfy J.; Automaxi S.A. v. U.A.P. Inc. (1993), 47 C.P.R. (3d) 158 (F.C.T.D.), Teitelbaum J.; affirmed (1994), 59 C.P.R. (3d) 82 (F.C.A.). The sole exception appears to be that of Denault, J. in Primax Computer Corp. v. Primax Electronic (U.S.A.) Inc. (1995), 62 C.P.R. (3d) 75 (F.C.T.D.).
The second issue: The evidence of use
Rouleau J. found that the affidavit filed before him [at page 47] "clearly shows that the mark has been actively used in Canada during the relevant time period" and was satisfied "that had the affidavit . . . been before the Registrar the . . . trade-mark would not have been expunged".
In view of the purpose and scope of section 45 which I have examined earlier, it should come as no surprise that the test that has to be met by the registered owner under that section is not a heavy one (see, for example, Mantha & Associés/Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3d) 354 (F.C.A.)).
It was very much open to Rouleau J., in the case at bar, to find evidence of a prima facie use by Austin Nichols of the very trade-mark it has registered. The mark shown in the evidence is undoubtedly a variation of the mark as registered. The appellant argues that the differences between the mark as used and the mark as registered are so significant with respect to some of its dominant features as to mislead an unaware purchaser. The Trial Judge was obviously not satisfied that the differences were such as claimed by the appellant and this is a finding with which we are not prepared to interfere in the context of a section 45 proceeding. Whether the evidence would meet the test in other types of proceedings taken under the Act is not for us to decide in the instant case.
A word, finally, on costs. Austin Nichols has asked for costs "here and below". It had not asked for costs in the Trial Division and Rouleau J. made no order as to costs. Clearly, even if there had been a cross-appeal filed in this Court by Austin Nichols, I would not have acceded to its request. Austin Nichols is fortunate enough, in my view, to have escaped an award of costs against it in the Trial Division, for one might well argue that costs in the Trial Division should normally be allowed against the registered owner in any event in cases where he has failed to file evidence before the Registrar. Such was indeed the approach taken by Strayer J. in Lewis Thomson , supra, paragraph 22.
The appeal should therefore be dismissed with costs in the appeal in favour of Austin Nichols.
Desjardins J.A.: I agree.
Noël J.A.: I agree.
1 Reported at (1997), 76 C.P.R. (3d) 45 (F.C.T.D.) as Austin Nichols & Co. v. Cinnabon, Inc. Yoo-Hoo of Florida Corp. has been substituted to Austin Nichols & Co. Incorporated prior to the hearing of the appeal. For ease of comprehension I have used the name of Austin Nichols throughout these reasons.