Boutiques Progolf Inc. v. Marks & Clerk
A-584-92
Marceau, Desjardins and Létourneau JJ.A.
19/11/93
34 pp.
Appeal and cross-appeal from Trial Division judgment ((1992), 55 F.T.R. 221), allowing in part respondent's appeal from decision by Registrar of Trade Marks ordering trade mark "Progolf" be expunged pursuant to Trade-marks Act, s. 45 -- Registration of trade mark "Progolf" obtained on June 7, 1985 for golf items -- In 1988, appellant requested Registrar to send registered owner notice requiring proof of use in Canada -- Notice sent on July 6, 1988 -- Registrar expunged registration of respondent's trade mark without giving latter opportunity to make oral submissions -- Trial Judge concluded respondent's evidence showed use of its trade mark only for golf bags and covers for golf clubs -- Appeal allowed, cross-appeal dismissed (Desjardins J.A. dissenting) -- Per Marceau J.A.: Trade-marks Act, s. 45 requires owner to show mark used in Canada at time of notice -- Trial Judge made no mention in reasons for judgment of non-user for 23 months between proof of use accepted by him and date of notice -- Erred in concluding respondent provided sufficient evidence to maintain registration of trade mark "Progolf" in part -- Per Létourneau J.A.: Purpose of s. 45 not to determine party's rights to trade mark but to provide for purging Trade Marks Register to eliminate dead wood -- Under s. 45 respondent elected to reply to Registrar it was using trade mark and attempted to provide necessary evidence -- Question whether trade mark used in respect of golf bags and covers as it claimed and as held by Trial Judge -- S. 45 not requiring continuous user of trade mark, that is, user not subject to interruption in time-However, requiring proof of user at time Registrar's notice sent -- Some present or current use must therefore be shown-Proof of sales subsequent to Registrar's notice admissible not to establish use of trade mark at time of notice but to prove continuity of use of mark -- Respondent unable to establish continuity of use of its trade mark -- Trial Judge properly dismissed proof of use by sales catalogues with order forms published in year of notice and in 1989 and 1990 -- Mere advertising cannot of itself establish use of trade mark -- In view of nature of goods for which trade mark claimed, express wording of s. 45, and non-user for two out of three years, impossible to conclude respondent presented evidence of current or present use at time of notice -- Respondent's trade mark not in use at time of notice in 1988 and prior use of mark in 1986 not sufficiently current or recent to satisfy provisions of s. 45-Per Desjardins J.A. (dissenting): Act, s. 45 summary procedure essential purpose of which to remove from Register trade mark entries fallen into disuse and constituting dead wood -- Function not to determine substantive rights that may be subject of dispute between parties-Act, s. 4 requires mark be used "in the normal course of trade" -- Evidence of user of trade mark can only cover period from registration of mark to date of notice-Trial Judge properly did not consider evidence of user of trade mark after date of notice -- Findings of fact made by Trial Judge which are subject of appeal and cross-appeal should be upheld-He found two receipts prior to notice were authentic and those sales established use required by s. 45 -- S. 45 requires proof of use more or less at same time as date of notice, depending on circumstances of each case -- Any doubt as to proof should be construed in favour of registered owner -- Act not requiring registered owner to prove daily, monthly or even annual use of mark, merely that it be in use -- Non-user becomes question of fact in circumstances of each case -- Respondent established use of its mark for golf bags and golf club covers in three-month period in normal course of trade between it and golf clubs which are its shareholders -- In view of continuity and use of mark Trial Judge not dealing with dead wood in respect of use of mark for aforesaid wares -- Too strict interpretation of s. 45 goes beyond purpose intended by Act -- Trade-marks Act, R.S.C., 1985, c. T-13, ss. 4, 45.