T-5583-81
Keepsake, Inc. (Appellant)
v.
Prestons Limited (Respondent)
Trial Division, Cattanach J.—Ottawa, November
24, 1982 and January 17, 1983.
Trade marks — Evidence of use for purposes of s. 44 of the
Act — Appeal from Registrar's decision to expunge appel
lant's trade mark "Keepsake" from register — In response to
s. 44 inquiry, registered owner (appellant) filing affidavit
attached to which were two invoices of sales of rings to
retailers in Ottawa and Toronto predating s. 44 notice, hang-
tags of type attached to all rings sold in Canada and catalogue
of rings outlining order procedure by phone or mail — Regis
trar finding evidence of "use", but insufficient evidence to infer
such use in normal course of trade as required by s. 4 — On
appeal, appellant filing supplementary affidavit alleging
extensive sales in U.S.A. overflowing into neighbouring coun
tries, and extensive advertising in consumer magazines and in
trade journals — Purpose of s. 44 to rid register of unused
marks in respect of which owners showing no interest —
Appellant demonstrating interest in trade mark — Appellant
complying with s. 44 procedure by providing single affidavit of
registered owner to Registrar and on appeal — Original
affidavit read together with supplementary affidavit giving
rise to inference sales made in normal course of trade —
Appeal allowed — Trade Marks Act, R.S.C. 1970, c. T-10, ss.
2, 4, 44(1),(2).
Appeal from a decision of the Registrar of Trade Marks to
expunge appellant's registration of the trade mark "Keepsake"
for use in association with the sale of rings. In response to an
inquiry under section 44 of the Trade Marks Act, the appellant
filed an affidavit, attached to which were two invoices for rings
sold to retailers in Ottawa and Toronto prior to the date of the
request for evidence of user, hangtags featuring the trade mark
"Keepsake" which are attached to all rings sold by the appel
lant in Canada and a 1981 catalogue of the appellant's rings
outlining order procedures. Section 2 provides that "use" in
relation to a trade mark means any use that by section 4 is
deemed to be use in association with wares. Section 4 deems
that a trade mark is used in association with wares, if in the
normal course of trade, notice of the association is given to the
transferee at the time of transfer. The Registrar found that the
registrant showed "use" of its trade mark in Canada, but failed
to show that such use was in the normal course of trade which
would have involved more than two sales in the year preceding
the date of the section 44 notice. He concluded that there was
insufficient evidence to rebut the possibility that the two sales
recited were not "merely marginal, periodic sales". On appeal,
additional evidence of extensive sales of rings bearing the trade
mark "Keepsake" in the United States of America and else
where, and of extensive advertising in consumer magazines and
in trade journals was adduced. The issue is whether the affida
vit provided to the Registrar together with the supplementary
affidavit provided on appeal allege sufficient facts from which
the inference will follow that there has been use in the normal
course of trade.
Held, the appeal is allowed. The purpose of section 44 as set
out in the Noxzema Chemical case is to provide a summary
procedure whereby the registered owner of a trade mark is
required to provide some evidence that the mark is being used
in Canada or evidence of "special circumstances that excuse ...
absence of use". The evidence to be produced is limited to the
purpose of section 44. The registered owner is the only person
who may provide such evidence. The Parker-Knoll case was
authority for the proposition that the use of the trade mark
must be shown to have been prior to the dispatch of the notice
under section 44 of the Act. Evidence of a single sale can be
construed as evidence of use depending upon the surrounding
circumstances. As was stated in the Aerosol Fillers case, a
categorical statement that the trade mark is in "use" or has
been used in the normal course of trade does not meet the
requirements of section 44. An affiant must establish facts
from which a conclusion of "use" would follow as a logical
inference. Likewise a token use does not satisfy the require
ments of section 44. On an appeal from the Registrar's deci
sion, subsection 56(5) substitutes the Court's discretion for that
of the Registrar and provides for a trial de novo with additional
evidence allowed: Re Wolfville Holland Bakery Ltd. The lan
guage of subsections 44(1) and (2) limits the registered owner
to furnishing one affidavit to the Registrar. Any additional
evidence adduced on appeal must be likewise limited to an
affidavit or statutory declaration of the registered owner. The
Registrar's conclusion of use prior to the section 44 notice is
supported by the evidence. That conclusion rebuts token sales
or sales of convenience for an ulterior purpose. "Some evi
dence" of use need not be forthcoming in quantity, but rather it
should be forthcoming in quality. The registered owner has
provided evidence of use and has demonstrated a substantial
interest in the trade mark. Together the two affidavits provide
sufficient evidence from which it can be inferred that the rings
were sold in the normal course of trade and that the transac
tions were arm's length commercial transactions. In the affida
vit before the Registrar a simple allegation of facts should have
been made from which it could be inferred that the two sales in
question had been made in the normal course of trade as for
example in response to an order placed by telephone or in
writing by the purchasers citing the catalogue identification of
the merchandise. The affidavit did not do so and accordingly
the Registrar did not err in his decision. However when the
original affidavit and the supplementary affidavit are read
together, the inference can be made that the sales were in the
normal course of trade.
CASES JUDICIALLY CONSIDERED
APPLIED:
Noxzema Chemical Company of Canada Limited v.
Sheran Manufacturing Limited et al., [1968] 2 Ex.C.R.
446; 55 C.P.R. 147; Parker-Knoll Ltd. v. Registrar of
Trade Marks (1978), 32 C.P.R. (2d) 148 (F.C.T.D.);
American Distilling Co. v. Canadian Schenley Distiller
ies Ltd. (1979), 38 C.P.R. (2d) 60 (F.C.T.D.); Aerosol
Fillers Inc. v. Plough (Canada) Limited, [1980] 2 F.C.
338; 45 C.P.R. (2d) 194 (T.D.); The Molson Companies
Ltd. v. Halter (1977), 28 C.P.R. (2d) 158 (F.C.T.D.); Re
Wolfville Holland Bakery Ltd. (1965), 42 C.P.R. 88 (Ex.
C.); Broderick & Bascom Rope Co. v. Registrar of Trade
Marks (1970), 62 C.P.R. 268 (Ex. C.); Porter v. Don the
Beachcomber, [1966] Ex.C.R. 982; 48 C.P.R. 280; Union
Electric Supply Co. Limited v. Registrar of Trade
Marks, [1982] 2 F.C. 263 (T.D.).
COUNSEL:
David Scott, Q.C. and K. Perrett for
appellant.
No one appearing on behalf of respondent.
SOLICITOR:
Scott & Aylen, Ottawa, for appellant.
The following are the reasons for judgment
rendered in English by
CATTANACH J.: This is an appeal from a deci
sion of the Registrar of Trade Marks dated Sep-
tember 17, 1981 whereby the Registrar expunged
the registration of the trade mark "Keepsake" for
use in association with the sale of rings of all kinds
standing in the name of the appellant.
The trade mark was first registered on June 13,
1939 in the name of Maurice J. Walsh Limited,
carrying on business in Toronto, Ontario.
The trade mark was assigned to Anthony H.
Marston of Toronto, Ontario on November 1,
1944.
The trade mark was further assigned to Keep
sake Jewellery Company Limited with Head
Office at 600 Bay Street, Toronto, Ontario on
December 7, 1944.
The Head Office address of the registrant in
Toronto was changed and recorded on April 12,
1954.
The trade mark was assigned by Keepsake Jew
ellery Company Limited, 12 Sheppard Street,
Toronto, Ontario to A.H. Pond Co. Inc., One
Lincoln Centre, Syracuse, New York, U.S.A. and
recorded on June 18, 1974.
The corporate name of A.H. Pond Co. Inc. was
changed to that of Keepsake, Inc. and recorded in
the Register of Trade Marks on August 19, 1980.
On November 25, 1980 the solicitors for the
respondent, Prestons Limited, initiated an inquiry
pursuant to subsection 44(1) requiring the regis
tered owner to furnish evidence within three
months by an affidavit or statutory declaration
showing with respect to the wares specified in the
registration "whether the trade mark is in use in
Canada" (the additional concluding language of
the subsection is omitted since it is not applicable
to the facts in this appeal).
By section 2 of the Act "use" in relation to a
trade mark means any use that by section 4 is
deemed to be use in association with wares (the
reference to "services" is omitted because it is not
applicable to the facts of this appeal).
Subsection 4(1) reads:
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.
In response to that inquiry from the Registrar
the appellant filed an affidavit sworn by Albert W.
Doolittle, the Executive Vice President of the
appellant, to which were attached as exhibits two
invoices dated August 28, 1980 and September 2,
1980 for rings sold in Canada by Keepsake, Inc. in
association with the trade mark "Keepsake".
The first invoice is to Don Thompson Jewellers
Ltd. of Ottawa, Canada, for four rings for a total
price of $180 in U.S. funds. In addition to being
marked as an exhibit to the affidavit there is a
certification by a notary public in the State of
New York reading: "This is to certify that this
invoice covers a shipment of four KEEPSAKE 14K
gold rings." Presumably the notary public was
satisfied that she could make that certification.
The second invoice dated some five days after
the first invoice is directed to Emesco Imports of
Canada Ltd. in Toronto, Ontario in the like quan
tity of wares and amount payable therefor and
endorsed in the same manner by a notary public,
all as in the first invoice.
Exhibit 3 to the affidavit of Doolittle are three
hangtags of the type attached to all rings sold by
the appellant into Canada. Obviously the rings are
exported to and imported into Canada. The hang-
tags so exhibited are attractively designed in
colour and shape indicative in their quality as
identifying quality merchandise and above all fea
ture the trade mark "Keepsake" in a subdued but
dignified manner.
Exhibit 5 to the affidavit is a 1981 catalogue of
the appellant's wedding rings in the various styles
and designs available. The prices are not disclosed
but the back page outlines ordering information by
toll-free telephone or by mail.
The catalogue numbers of the rings invoiced to
the two purchasers in Canada (both obviously
retail jewellers) are in the catalogue, Exhibit 5.
Each invoice identifies the salesman as "House"
which normally means that the order was placed
by phone, by mail or personal attendance at the
vendor's premises but I have no evidence to that
effect and the practice is not so well known that I
can take judicial notice of it.
In the reasons for the Registrar's decision dated
September 17, 1981, he said:
... I am satisfied that the two invoices show that two sales were
made to Canadian companies three to four months prior to the
date of the Section 44 notice.
I am in complete agreement with the Registrar's
finding to that effect. The sales being prior to the
section 44 notice of inquiry could not have been
inspired by that notice.
However upon the basis of the allegations in the
affidavit of Albert W. Doolittle and the exhibits
thereto the Registrar had this to say:
In my view, a normal course of trade for wares of this class
would have involved more than two sales in the year preceding
the date of the Section 44 notice. The registrant should have
been able to furnish more evidence with respect to its normal
course of trade during the period that it has been the registered
owner of the trade mark which commenced June 18, 1974.
Accordingly the Registrar concluded:
On the basis of the evidence furnished by the registrant, I am
satisfied that the registrant has shown use of its trade mark in
Canada but I am not able to conclude that such use was in the
normal course of trade. I have therefore decided to expunge
registration No. N.S. 44/11868.
What the Registrar deplores is the paucity in
the number of sales established by the appellant
and the failure of the registered owner to show
that these two sales represent a normal course of
trade.
The basic and limited purpose of section 44 of
the Act has been set forth by Jackett P. (as he
then was) in Noxzema Chemical Company of
Canada Limited v. Sheran Manufacturing Lim
ited et al. [[1968] 2 Ex.C.R. 446]; 55 C.P.R. 147,
when he said [at page 453 Exchequer Court
Reports] that:
... there will be on the Registry many trade marks that the
registered owners do not use and in respect of which the
registered owners make no pretence of having any interest.
He adds [at pages 452-453] that what section
44 provides is:
... a summary procedure 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 or evidence of
"special circumstances that excuse ... absence of use".
The penalty for failure to do so is that the trade
mark will be expunged.
The evidence to be produced is likewise limited
to the purpose of section 44.
The Registrar is prohibited by subsection 44(2)
from receiving any evidence other than that pro
vided by the registered owner. The registered
owner is the only person who may provide such
evidence. Failure by the registered owner to
respond to a notice of inquiry under subsection
44(1) is indicative of the fact that the registered
owner has no "interest" in the trade mark or if in
response to the notice he furnishes an affidavit or
statutory declaration (which is the only evidence
which may be accepted by the Registrar) that
shows neither user nor anything that could be
regarded as "special circumstances that excuse
such absence of use" is likewise indicative of a lack
of continuing interest in the trade mark.
Thus it follows that there must be "some evi
dence" of use within the meaning of section 4 of
the Trade Marks Act [R.S.C. 1970, c. T-10]
furnished by the registered owner.
The use of the trade mark must be shown to
have been prior to the dispatch of the notice under
section 44 of the Act. Walsh J. so stated in Park-
er-Knoll Ltd. v. Registrar of Trade Marks
(1978), 32 C.P.R. (2d) 148 [F.C.T.D.] at page
153.
He there said that the affidavit or statutory
declaration required to be furnished by the regis
tered owner to show whether the trade mark is in
use in Canada:
... should I believe be limited to evidence of use prior to the
giving of such notice ....
This the affidavit of Albert W. Doolittle, which
was before the Registrar, did.
Evidence of a single sale can be construed as
evidence of use depending upon the circumstances
surrounding the transaction.
In this instance the Registrar accepted that use
of the trade mark was established in Canada but
he was not satisfied that sufficient evidence was
forthcoming to rebut the possibility that the two
sales which were established, "were more than
marginal, periodic sales to protect the registrant's
trade mark registration" and that, "The registered
owner has not furnished detailed evidence to show
that these two sales represent a normal course of
trade for its particular business."
The Registrar went on to suggest that evidence
of sales in previous years should have been forth
coming to provide an "overview" of the situation
and giving an historical perspective of the regis
trant's use of its trade mark.
The Registrar cited the remarks made by Thur-
low A.C.J. (as he then was) in American Distilling
Co. v. Canadian Schenley Distilleries Ltd.
(1979), 38 C.P.R. (2d) 60 [F.C.T.D.] at pages 62
et seg. reading:
The affidavit is more remarkable for what is not in it than
for what is there. It does not say that the mark is or ever was in
use as a trade mark, or that it was ever used to distinguish
Schenley rum from the rum of others or that it was ever so used
in the normal course of trade. Nor does it relate facts from
which such user ought to be inferred. If it has said that the
trade mark was in use in the normal course of trade in
association with Schenley rum, the citation of one instance of a
sale, even though it was a sale after the date of the s. 44 notice,
and the exhibition of a copy of an invoice relating to such sale,
might have lent some support. By itself, however, the single sale
as described is not direct evidence of the material fact, that is,
use in association with rum in the normal course of trade, and
any evidentiary value it has depends on the inference to be
drawn from it. It is to be noted that it is 'not stated in the
affidavit that the single sale cited was a sale in the normal
course of trade. Having regard to this as well as to the fact that
the only transaction referred to occurred after the s. 44 notice,
in my view, it is to be inferred that the transaction was •
arranged solely for the purpose of having something to cite in
an affidavit in answer to the notice. That, it was arranged for
the purpose of making the affidavit, was conceded in the course
of argument. Moreover, the fact that the deponent did not say,
even after such a transaction had been made, that the trade
[sic] was in use, in my view, means that he could not conscien
tiously say so. The fact that no supplementary affidavit saying
so was offered on the appeal adds further support for this
conclusion. In the circumstances, if there had ever been a sale
in association with the trade mark in the normal course of trade
from the time of its registration, it is, as it seems to me, almost
inconceivable that the deponent would not have said so on the
one occasion or the other. I am accordingly of the opinion that
what was put before the Registrar and is before the Court was
not evidence that the trade mark is (or was at any material
time), in use as a trade mark and that the case should be dealt
with as one in which there has been a failure to furnish
evidence of use. On that basis, and having regard to the
inferences which I think should be drawn from the affidavit and
the failure to supplement it on appeal, it appears to me that
neither on November 9, 1976, nor subsequently was the trade
mark in use in Canada within the meaning of s-s. 44(3) and
that the Registrar's decision should not be sustained.
I have quoted the paragraph in its entirety
rather than extracting portions from the context to
better illustrate the principles laid down by Thur-
low A.C.J. that are apparent from the quotation.
The language used by him is not susceptible of
implying that the registered owner is required to
demonstrate a history of use by proof of use by a
multiplicity of transactions of sale which would be
required if it was being sought to negative "aban-
donment" in an expungement proceeding.
He did say that the citation of a single sale, even
though it was a sale after the date of the section 44
notice, if it had been said that the trade mark was
in use in the normal course of trade would have
lent support to that allegation. But by itself the
single sale is not direct evidence of the material
fact left unsaid.
Neither can the remarks quoted be construed as
being permissive of the making of mere state
ments, assertions or conclusions such as "the trade
mark was in use in the normal course of trade".
As has been stated in Aerosol Fillers Inc. v.
Plough (Canada) Limited [[1980] 2 F.C. 338]; 45
C.P.R. (2d) 194 [T.D.], a categorical allegation
that a trade mark is in "use" or for that matter a
basic statement that there has been "use in the
normal course of trade", does not meet the
requirements of section 44 of the Act. What an
affiant must establish is facts from which a conclu
sion of "use" or "use in the normal course of
trade" would follow as a logical inference from the
facts established. That is what is meant by the
statutory obligation imposed upon a registered
owner of a trade mark by subsection 44(1) of
"showing" by an affidavit or statutory declaration.
In American Distilling Co. v. Canadian Schen-
ley Distilleries Ltd. (supra) Thurlow A.C.J. states
that the affidavit did not relate facts from which
user ought to be inferred.
On the contrary the inference was drawn that
since the only transactions occurred after the sec
tion 44 notice that the sale was arranged solely for
the purpose of having something to cite in the
affidavit in response to the notice.
Examples of a token use such as by a shipment
or sale to oneself has been determined in The
Molson Companies Ltd. v. Halter (1977), 28
C.P.R. (2d) 158 [F.C.T.D.] to be inadequate to
meet the requirements of section 44. Instances
were there given where brewers and distillers
affixed labels to the products specifically to the
order of the defendant who sought to show thereby
use of the trade mark registered in his name.
These circumstances were held not to establish use
of the trade mark in the normal course of trade.
In the present instance the Registrar concluded
that the evidence before him was not sufficient to
rebut the possibility that the two sales recited in
the affidavit both prior to the section 44 notice
were not "merely marginal, periodic sales" to pro
test [sic] the trade mark.
Having regard to the nature of the decision that
the Registrar has to make under section 44 of the
Act—that is to say "Where, by reason of the
evidence furnished to him" by the registered owner
it appears to him that the trade mark is not in
use—I should have been inclined to the view (in
the absence of authority to the contrary) that on
appeal (despite the provisions of subsection 56(5))
the issue would still remain whether the Registrar
was right or wrong in reaching the decision he did
upon the evidence before him. There is authority
to the contrary.
As I understand the decision of Thorson P. in
Re Wolfville Holland Bakery Ltd. (1965), 42
C.P.R. 88 [Ex. C.], it is to the effect that section
56, particularly subsection (5) thereof, does not
provide that the appeal shall merely decide wheth
er the Registrar was right or wrong. It substitutes
the Court's discretion for that of the Registrar and
provides for a trial de novo with evidence addition
al to that before the Registrar if adduced.
Thus the registered owner gets a second oppor
tunity and the opportunity to bolster the deficien-
cies in the affidavit or statutory declaration fur
nished to the Registrar.
By virtue of subsection 44(1) of the Act it is the
registered owner and only the registered owner
who may furnish an affidavit or statutory declara
tion in response to the notice despatched to him.
By subsection 44(2) the Registrar shall not
receive any other evidence "than such affidavit or
statutory declaration".
It is clear that in the context of subsections
44(1) and (2) the singular as used is intended and
the plural is excluded. Thus it follows that the
registered owner is limited to furnishing but one
affidavit.
The language used by Jackett P. (as he then
was) in the Noxzema case (supra) at page [454]
when in commenting on subsection 44(2) uses the
singular form thereby precluding a plethora of
affidavits being furnished to the Registrar by the
registered owner.
He made like comments in Broderick & Bascom
Rope Co. v. Registrar of Trade Marks (1970), 62
C.P.R. 268 [Ex. C.] at page 273 where he said:
The Registrar is prohibited, in a s. 44 proceeding, from receiv
ing any "evidence" other than an affidavit or statutory declara
tion from the registered owner pursuant to such notice ....
and at page 277 where he said:
The character of the matter before the Registrar is determined
by the prohibition against the Registrar receiving any evidence
other than the affidavit or statutory declaration from the
registered owner (s. 44(2)).
Again in Aerosol Fillers Inc. v. Plough
(Canada) Limited [[1980] 2 F.C. 338]; 45 C.P.R.
(2d) 194 [T.D.] it was said at page [343]:
The allegations in an affidavit should be precise and more
particularly so with respect to an affidavit under section 44(2)
because that is the only affidavit to be received.
and later [at page 344]:
By section 44 the Registrar is not permitted to receive any
evidence other than the affidavit and his decision is to be made
on the material therein.
It is for that reason that the affidavit or a
statutory declaration must be prepared with
exceedingly great care. Accordingly I accept that
on an appeal from a decision of the Registrar in
section 44 proceedings the issue is not limited to
whether the Registrar was right or wrong in decid
ing as he did upon the evidence before him but
that the appeal is one by way of trial de novo. I
reach that conclusion not upon any principle of
stare decisis but upon my conviction that defer
ence must be paid to the decisions of judges of
coordinate jurisdiction, and more particularly to
those on the same court, in the interests of certain
ty and consistency.
I also accept that the response to a notice under
section 44 is limited to a single affidavit sworn by
the registered owner and no other person.
In my opinion in the event of an appeal it
follows from the object and purpose of the section
that any additional evidence adduced on appeal
must be likewise limited to an affidavit or statu
tory declaration of the registered owner to preserve
the objective of the section.
As stated at the outset of this appeal the regis
tered owner furnished additional affidavit evidence
which was accepted.
Counsel for the appellant adhered to what I
consider to be the proper course to adopt and
limited that supplementary evidence to a further
affidavit by the registered owner. Since the regis
tered owner is a fictitious entity it follows that the
affidavit must be taken by a natural person who is
an officer of the corporate entity.
The issue in this appeal is whether the affidavit
of Mr. Doolittle by which two sales of rings to two
different retail jewellers in different and widely
separated cities in Ontario are alleged, supple
mented as it now is by a further affidavit of Mr.
Wimmer together allege further facts from which
the inference will follow that there has been use of
the trade mark in the normal course of trade in
Canada.
In relying upon the affidavit of Mr. Doolittle as
the Registrar did he came to the conclusion that
there was evidence of use of the trade mark in
Canada prior to the section 44 notice.
I am in agreement with the Registrar's conclu
sion in this respect and that the conclusion fol
lowed upon ample evidence of use. That conclusion
would rebut token sales or sales of convenience for
an ulterior purpose.
However the Registrar's decision to expunge the
trade mark from the register was based upon his
conclusion that the evidence before him was defi
cient in that it did not allege facts from which it
could be inferred that the use established by the
two sales was in the normal course of trade.
In this respect the affidavit of Mr. Doolittle
established beyond any doubt that the sales had
been made prior to the subsection 44(1) notice.
That being so there could be no possibility that
those transactions were arranged for the purpose
of being cited in the affidavit in answer to the
notice as was the case in American Distilling Co.
v. Canadian Schenley Distilleries Ltd. (supra)
which led to the inference that the sale in that
instance was not made in the normal course of
trade.
Reverting to the remarks of Jackett P. made in
the Noxzema case already quoted to the effect
that in response to the section 44 notice the regis
tered owner is required to produce some evidence
of use it follows that such evidence need not be
forthcoming in quantity but rather it should be
forthcoming in quality.
That is precisely what was meant when it was
said in the decision of the Trial Division for the
Aerosol Fillers case that the Registrar is to act on
reliable evidence and not a bare, unsubstantiated
statement of use.
Jackett P. also said in the Noxzema case that
what section 44 seeks to accomplish is the removal
from the trade mark register of those many trade
marks that the registered owners do not use and in
respect of which they make no pretence of having
any interest.
In the present instance there has been evidence
of use and there is no question that the registered
owner exhibits a substantial interest in the trade
mark.
The history of the ownership of the trade mark
of the word "Keepsake" is illustrative of its appro-
priateness for use in association with wedding
rings and like wares. It is an appropriate, attrac
tive and compelling trade mark.
It was consistently renewed by its successive
owners until 1969.
It was acquired on June 18, 1974 by its present
owner, originally under the corporate name of
A.H. Pond Co. Inc. of Syracuse, New York State.
An extensive trade in the sale of rings bearing the
trade mark "Keepsake" was carried on, particular
ly in the United States, but elsewhere as well.
The volume of sales from 1975 was:
1975 $18,989,000
1976 23,304,000
1977 28,817,000
1978 33,253,000
1979 31,568,000
1980 30,216,000
On August 7, 1979, Lenox Inc. purchased all of
the issued and outstanding shares of A.H. Pond
Co. Inc. and installed a new board of directors
with the avowed intention of enlarging the market
ing and sales policies in effect. That simply means
to sell still more rings under the trade mark.
On January 31, 1980 the corporate name of
A.H. Pond Co. Inc. was changed to Keepsake, Inc.
for the express purpose of taking further advan
tage of the extensive goodwill attached to the trade
mark "Keepsake".
The trade mark "Keepsake" as used in asso
ciation with rings of all kinds has been advertised
for many , years I in , consumer magazines', widely
distributed in Canada such as Life, Esquire,
Time, Mademoiselle, Good Housekeeping, Look,
Glamour, Seventeen, Cosmopolitan, People,
Brides and Modern Brides amongst others.
While I fully appreciate that it is well estab
lished in Porter v. Don the Beachcomber [[1966]
Ex.C.R. 982]; 48 C.P.R. 280 followed in Parker-
Knoll Ltd. (supra) that advertising alone is not
sufficient to establish use in Canada it is neverthe
less permissible evidence indicative of the advertis-
er's willingness to enter into sales with consumers
in Canada in the normal course of trade.
In addition to advertising in magazines widely
read by the consuming public in Canada (and
likely in publications directed particularly to that
potential consuming public) the trade mark was
advertised in trade journals such as Jewellers Cir
cular Keystone, Modern Jeweller, National
Jeweller, The Goldsmith, Northwestern Jeweller
and Southern Jeweller, all of which are distributed
in Canada to the jewellery trade.
Counsel for the appellant deliberately refrained
from obtaining affidavit evidence from the retail
jewellers to whom sales were made in Canada on
August 28, 1980 and September 2, 1980. For the
reasons I have expressed it was proper that he so
refrained and it was likewise proper that the addi
tional evidence adduced by him on appeal was
deliberately limited to that of the registered owner.
There is no question that the appellant has
rebutted any implication that it has "little inter
est" in the trade mark in the context of the section
44 proceeding. On the contrary it has exhibited
great interest.
Not only that, the two sales were evidenced by
invoices accompanying the rings on each of which
the trade mark "Keepsake" was prominently dis
played and the rings were identified in the invoice
by their catalogue numbers.
Also on the invoice the sale was identified as
being a "House" sale.
While the affidavit before the Registrar and the
additional affidavit before the Court could have
been more explicit nevertheless on balance there is
evidence from which it can be inferred that the
rings were sold in the normal course of trade and
that the transactions in question were arm's length
commercial transactions.
In Union Electric Supply Co. Limited v. Regis
trar of Trade Marks [[1982] 2 F.C. 263 (T.D.)]
decided by Mahoney J. on April 15, 1982 he said
[at page 2641:
There is absolutely no justification in putting a trade mark
owner to the expense and trouble of showing his use of the
trade mark by evidentiary overkill when it can be readily
proved in a simple, straightforward fashion.
In the affidavit before the Registrar a simple
allegation of facts could and should have been
made from which it could be inferred that the two
sales in question had been made in the normal
course of trade as for example in response to an
order placed by telephone or in writing by the
purchasers citing the catalogue identification of
the merchandise ordered.
This information may or may not have been
available from the appellant's record. If it were,
then the facts given as illustrative would have
resolved the matter in the simple and straightfor
ward fashion contemplated by my brother
Mahoney.
The affidavit did not do so and accordingly the
Registrar cannot be said to be in error in deciding
as he did.
However, before the Court that evidence was
supplemented by a further affidavit showing an
active and continuing interest in the trade mark as
well as an extensive use in the United States
evidenced by annual sales in millions of dollars
with an extension of those sales into neighbouring
countries.
For the reasons expressed the inference can be
properly drawn from the original affidavit read in
conjunction with the second affidavit that the sales
in Canada were made in the normal course of
trade.
Accordingly the appeal is allowed.
Counsel for the appellant did not claim for costs
against the respondent for which reason solely
there shall be no award for costs against the
respondent.
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.