Digests

Clark O'Neill Inc. v. PharmaCommunications Group Inc.

T-2061-01

2004 FC 136, Harrington J.

28/1/04

12 pp.

Clark O'Neill Inc. (applicant) appealing decision by which Registrar expunged trade-mark for non-use--Clark O'Neill Inc. established in United States in 1950s as direct-mail marketing company--It expanded into pharmaceutical sample distribution business in 1980s--In connection with pharmaceutical side of business, it has used trade-mark "Single Source Sampling, with a design that incorporates a red checkmark over a blue square"--Trade-mark registered in United States in 1991 and accepted for registration in Canada as trade-mark in 1993--In accordance with Trade-marks Act (Act), trade-mark not used in Canada runs risk of expungement--Trade-mark used in association with "services"--S. 4(2) providing trade-mark deemed used in association with services if displayed in advertising of those services--Applicant asserted it advertised trade-mark in various medical journals, which although published in United States, had Canadian readership--One cannot simply advertise --Must be underlying service--Here, no service and Registrar correct in holding trade-mark not used in Canada--Special circumstances excusing non-use advanced by applicant fall into two broad categories: regulatory framework and corporate reorganizations--Threefold test for whether special circums-tances justifying non-use: (1) length of time trade-mark not used; (2) whether non-use beyond control of registered owner; and (3) whether serious intention to shortly resume use, or in this case, to use trade-mark in Canada--As to regulatory framework, nothing to suggest any significant changes in laws in either United States or Canada during three years in question--Regulations simply not facilitating American distributions centre for warehousing and shipping Canadian pharmaceutical samples to Canadian doctors--Nor does applicant's corporate history excuse non-use--In fact, reason for non-use appears voluntary--No evidence trade-mark would have been used in Canada had it not been for corporate reorganizations--No justification for non-use--As to serious intention to use, applicant merely going through motions in attempt to avoid expungement of trade-mark, rather than showing any serious intent of actual use--As to respondent's alleged bad faith, although may be cases in which behaviour of requesting party relevant and constitutes special circums-tance excusing non-use of trade-mark, this was not one of those cases--Applicant not using trade-mark in Canada from May, 27, 1996 to May 27, 1999, and no special circumstances excusing non-use--Appeal from decision expunging trade- mark dismissed--Trade-marks Act, R.S.C., 1985, c. T-10, s. 4(2).