Date: 19981202
Docket: T-537-98
BETWEEN:
FILODORDO CALZE S.p.A.
Appellant
- and -
MANUFACTURIER DE BAS DE NYLON DORIS LTÉE/
DORIS HOSIERY MILLS LTD.
Respondent
REASONS FOR JUDGMENT
(Delivered orally from the Bench at Ottawa, Ontario on
Wednesday, November 25, 1998, as edited)
ROTHSTEIN J.:
[1] This is an appeal under subsection 56(5) of the Trade-marks Act, R.S.C. 1985, c. T-10, from a decision of a senior hearing officer of the Registrar of Trade-marks. Appeals under subsection 56(5) are to be decided by means of a trial de novo and additional evidence to that before the senior hearing officer is permitted. Subsection 56(5) provides:
| (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, R.S., c. T-10, s. 56; R.S., c. 10(2nd Supp.), s. 64. |
[2] While a judge's decision is based upon the trial de novo, there is some deference to be shown to the senior hearing officer's decision. In Saks & Co. v. Canada (Registrar of Trade Marks) (1989), 24 C.P.R. (3d) 49, Addy J. at page 52 noted "that a registrar's decision should not be lightly interfered with".
[3] The issue here is whether there has been use by the respondent of the words "SECRET SUMMER COOL" in association with the sale of ladies' pantyhose and hosiery. The appellant had requested the Registrar to issue a notice under section 45 of the Trade-marks Act requiring the respondent to furnish an affidavit or statutory declaration as to whether, in respect of pantyhose and hosiery, the trade-mark SECRET SUMMER COOL was in use in Canada at any time during the three-year period prior to June 1996. Subsections 45(1) and (2) of the Trade-marks Act provide:
| 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. |
It appears the appellant was seeking expungement of the respondent's trade-mark SECRET SUMMER COOL because it has a pending application for a trade-mark for the words COOL SUMMER in respect of wares similar to those of the respondent. Subsection 45(3) provides:
| (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. |
[4] The respondent filed the affidavit of its President, Jack Hasen. Mr. Hasen averred that pantyhose and hosiery are placed in transparent plastic envelopes which are inserted in cardboard packaging to allow the ultimate purchaser to see the pantyhose or hosiery while protecting the wares from damage. An example of the packaging for pantyhose was attached as an exhibit to Mr. Hasen's affidavit.
[5] The senior hearing officer, on the basis of the use of the words SECRET SUMMER COOL on the back of the packaging of the respondent found there to be use for purposes of section 45. At page 4 of her decision she states:
| I am not convinced that the words SECRET and SUMMER COOL as they appear on the back of the packaging would not be perceived as use of the composite trade-mark SECRET SUMMER COOL. In my view, this is a close call, but my conclusion is based on the fact that the expression SUMMER COOL is not so distanced and is not separated from the word SECRET by additional matter. Consequently, the public may perceive the trade-mark SECRET SUMMER COOL per se as being used. In the circumstances, I conclude that the use of the words SECRET and SUMMER COOL on the back of the packaging constitutes use of the trade-mark SECRET SUMMER COOL per se. (Honey Dew Ltd. v. Rudd, [1929] Ex.C.R. 83; and Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59. |
[6] On the evidence before me and after hearing argument of counsel, I arrive at the same conclusion. It is true that the typeface of the word SECRET and the words SUMMER COOL on the front of the packaging are somewhat different. However, on the back of the packaging they are sufficiently close together without any other extraneous words interfering, that the trade-mark SECRET SUMMER COOL per se may be perceived by a purchaser as being used. I think this is enough to show use of the trade-mark for purposes of section 45.
[7] The appellant concedes that if the words are considered to be used for trade-mark purposes, that the evidence is they are used with respect to ladies' pantyhose and not hosiery. The appellant relies on Saks, supra, at page 50 for the proposition that it is not sufficient for an owner of a registration to merely state that the mark was in use at the relevant time. The exhibits to the affidavits demonstrate use of the words SECRET SUMMER COOL in association with ladies' pantyhose. The affidavit of the respondent is clear that similar packaging is applicable to ladies' pantyhose and other types of ladies' hosiery. I do not think the respondent is required, given the close association of ladies' pantyhose and hosiery, to bring forward samples of hosiery packaging in order to satisfy the requirement to prove use with respect to hosiery.
[8] The respondent has satisfied the requirement to demonstrate use of the words SECRET SUMMER COOL as a trade-mark in respect of both ladies' pantyhose and ladies' hosiery.
[9] The appeal is dismissed.
[10] The respondent is entitled to costs in the sum of $1,500.00 inclusive of disbursements.
"Marshall Rothstein"
Judge
Toronto, Ontario
December 2, 1998
FEDERAL COURT OF CANADA
Names of Counsel and Solicitors of Record
COURT NO: T-537-98
| STYLE OF CAUSE: FILODORDO CALZE S.p.A. |
- and -
| MANUFACTURIER DE BAS DE NYLON DORIS LTÉE/DORIS HOSIERY MILLS LTD. |
DATE OF HEARING: WEDNESDAY, NOVEMBER 25, 1998
PLACE OF HEARING: OTTAWA, ONTARIO
REASONS FOR JUDGMENT BY: ROTHSTEIN J.
DATED: WEDNESDAY, DECEMBER 2, 1998
APPEARANCES: Ms. Elizabeth G. Elliott
Mr. Barry Hutsel
For the Appellant
Mr. John H. Scott
Ms Genvieve Bergeron
For the Respondent
| SOLICITORS OF RECORD: Macera & Jarzyna |
| Barristers & Solicitors |
| P.O. Box 2088, Stn. D |
| Ottawa, Ontario |
K1P 5W3
| For the Appellant |
| McMaster Gervais |
Barristers & Solicitors
1000 delaGauchetière Ouest
# 900
Montréal, Québec
H3B 5H4
For the Respondent
FEDERAL COURT OF CANADA
Date: 19981202
Docket: T-537-98
Between:
FILODORDO CALZE S.p.A.
Appellant
- and -
MANUFACTURIER DE BAS DE NYLON
| DORIS LTÉE/DORIS HOSIERY MILLS LTD. |
Respondent
| REASONS FOR JUDGMENT |