Judgments

[2001] 3 F.C. 102

A-356-00

2001 FCA 66

United Grain Growers Limited (Appellant)

v.

Lang Michener (Respondent)

Indexed as: United Grain Growers Ltd. v. Lang Michener (C.A.)

Court of Appeal, Rothstein, Sexton and Malone JJ.A. —Ottawa, February 20, 2001.

Trade-marks — Expungement — Appeal from F.C.T.D. decision upholding Registrar’s decision to expunge appellant’s trade-mark “Country Living” from register in Trade-marks Act, s. 45 proceedings — S. 45 permitting Registrar to require registered owner to provide evidence trade-mark used during previous three years — “Country Living” registered in association with printed periodicals — “Country Living” regular feature of magazine Country Guide — “Use” deemed to occur under s. 4(1) if, at time of transfer of property or possession in wares, trade-mark marked on wares — As “Country Living” marked on magazine in normal course of trade, appellant demonstrated use of registered trade-mark with respect to wares specified in registration in accordance with s. 4(1) — Construction of s. 45 outside Registrar’s expertise so decision reviewable on reasonableness simpliciter standard — Registrar erred in considering whether “Country Living” used to distinguish appellant’s magazine — Once determined registered trade-mark used in association with wares specified in registration, inquiry under s. 45 at end.

This was an appeal from a Trial Division decision upholding a decision of the Registrar of Trade-marks to expunge the appellant’s trade-mark “Country Living” from the trade-marks register. “Country Living” was registered for use in association with “printed periodicals, namely magazines”. “Country Living” is a regular feature of Country Guide, a magazine published by the appellant. The Registrar issued a notice pursuant to Trade-marks Act, section 45 requiring the appellant to provide evidence that the trade-mark had been used during the previous three years. In response, the appellant filed an affidavit containing excerpts from issues of the Country Guide magazine which listed “Country Living” as a separate section in the table of contents. The Registrar found that “Country Living” was not used to distinguish the appellant’s magazine from others, and therefore was not used as a trade-mark. On appeal, the appellant filed a further affidavit containing evidence that the appellant promoted “Country Living” as a distinct section of Country Guide in material distributed to potential subscribers and advertisers. The Trial Division Judge confirmed the Registrar’s order for the reasons given by the Registrar.

Held, the appeal should be allowed.

Decisions of the Registrar, whether of fact, law or discretion within his or her area of expertise, are to be reviewed on a standard of reasonableness simpliciter. Where additional evidence is adduced in the Trial Division that would materially affect the Registrar’s findings of fact or exercise of discretion, the Trial Division Judge must come to his or her own conclusion as to the correctness of the Registrar’s decision. The question was whether, on a proper construction of section 45, the Registrar was to take into account whether, with respect to the wares named in the registration, the use of a registered trade-mark distinguishes those wares. That question was not within the Registrar’s expertise, but was a question of the construction of section 45. Further, the Trial Judge made no mention of the additional evidence filed before him, which would have materially affected the Registrar’s findings. Accordingly, the standard of review was correctness.

Use of a trade-mark is deemed to occur under subsection 4(1) if, at the time of transfer of the property or possession in the wares, the trade-mark is marked on the wares. As “Country Living” was marked on the Country Guide magazine in the normal course of trade, the appellant demonstrated use of its registered trade-mark with respect to the wares specified in its registration.

The Registrar misinterpreted her function under section 45 and erred in law in embarking upon an inquiry as to whether “Country Living” was used to distinguish the appellant’s magazine. Section 45 does not direct the Registrar to re-examine whether the registered trade-mark is used for the purpose of distinguishing wares. Once it was determined that the registered trade-mark as it appears in the register was used in association with the wares specified in its registration, the inquiry under section 45 was at an end.

STATUTES AND REGULATIONS JUDICIALLY CONSIDERED

Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 “trade-mark”, 4(1), 45 (as am. by S.C. 1994, c. 47, s. 200), 57.

CASES JUDICIALLY CONSIDERED

APPLIED:

Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1991), 40 C.P.R. (3d) 409; 138 N.R. 379 (F.C.A.).

DISTINGUISHED:

Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 (2000), 5 C.P.R. (4th) 180; 252 N.R. 91 (C.A.).

REFERRED TO:

Filodoro Calze S.p.A. v. Doris Hosiery Mills Ltd. (1998), 85 C.P.R. (3d) 76; 160 F.T.R. 93 (F.C.T.D.); 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.).

APPEAL from a Trial Division decision upholding the decision of the Registrar of Trade-marks (United Grain Growers Ltd. (Re), [1998] T.M.O.B. No. 222 (QL)) pursuant to Trade-marks Act, section 45 to expunge the appellant’s trade-mark “Country Living”, registered for use in association with magazines, from the trade-marks register because it had not been used as a trade-mark in that it was not used to distinguish the appellant’s magazine from others. Appeal allowed.

APPEARANCES:

Robert A. Watchman for appellant.

Dale E. Schlosser for respondent.

SOLICITORS OF RECORD:

Pitblado Buchwald Asper, Winnipeg, for appellant.

Lang Michener, Toronto, for respondent.

The following are the reasons for judgment of the Court rendered in English by

[1]        Rothstein J.A.: This is an appeal from an order of the Trial Division upholding a decision of the Registrar of Trade-marks [United Grain Growers Ltd. (Re), [1998] T.M.O.B. No. 222 (QL)] that the appellant’s trade-mark “Country Living” be expunged from the trade-marks register under proceedings brought at the instance of the respondent under section 45 [as am. by S.C. 1994, c. 47, s. 200] of the Trade-marks Act [R.S.C., 1985, c. T-13].

FACTS

[2]        The appellant publishes a magazine entitled Country Guide. “Country Living” is a regular feature of the magazine. It is listed in the table of contents in every issue and is promoted in the magazine’s advertising. “Country Living” is a section devoted to issues related to running a farm household. The appellant registered the trade-mark “Country Living” in association with “printed periodicals, namely magazines”, on May 31, 1991.

[3]        According to the record, the respondent is agent for the Hearst Corporation which applied for the trade-mark “Country Living and Country Living Garden” to be used in association with magazines.

[4]        On March 4, 1997, the Registrar, at the request of the respondent, issued a notice pursuant to section 45 requiring the appellant to provide evidence that the trade-mark had been used during the previous three years. Subsections 45(1) and (3) 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.

…

(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.

The appellant filed an affidavit in response to the Registrar’s notice. The affidavit contained excerpts from issues of the Country Guide magazine which listed “Country Living” as a separate section in the table of contents. After reviewing the evidence, the Registrar issued an order expunging the trade-mark from the register.

[5]        The appellant appealed this decision to the Trial Division and filed a further affidavit. The second affidavit contained evidence showing that the appellant promoted “Country Living” as a distinct section of Country Guide in material distributed to potential subscribers and advertisers.

[6]        The Trial Division Judge confirmed the order of the Registrar for the reasons given by the Registrar and dismissed the appeal. The appellant appeals that decision to this Court.

REGISTRAR’S DECISION

[7]        As the Trial Judge did not issue separate reasons for his decision, it is necessary to consider the reasons of the Registrar. The Registrar found that the main issue was whether the evidence showed use of the words “Country Living” as a trade-mark for magazines. In answering this question in the negative, the Registrar found that the use of the words Country Living did not distinguish the appellant’s magazine from those of others. The title of the magazine Country Guide appeared on the cover and on each page of the magazine, including pages where the “Country Living” section was featured. “Country Living” was not listed in the table of contents in a manner that was any different from any of the other major sections. Although consumers might flip through the magazine before purchasing it and might buy the magazine specifically for the “Country Living” section, it was the use of the words Country Guide which distinguished the appellant’s magazine from those of others in the minds of consumers, not the use of the words “Country Living”.

STANDARD OF REVIEW

[8]        In Molson Breweries v. John Labatt Ltd., [2000] 3 F.C. 145 this Court held that decisions of the Registrar, whether of fact, law or discretion within his or her area of expertise, are to be reviewed on a standard of reasonableness simpliciter. Where additional evidence is adduced in the Trial Division that would materially affect the Registrar’s findings of fact or exercise of discretion, the Trial Division Judge must come to his or her own conclusion as to the correctness of the Registrar’s decision.

[9]        In this case, the Registrar concluded that the words “Country Living” were not used to distinguish the appellant’s magazine and that therefore the words “Country Living” were not used as a trade-mark. The question is whether, on a proper construction of section 45, the Registrar is to take into account whether, with respect to the wares named in the registration, the use of a registered trade-mark distinguishes those wares. That is a question not within the expertise of the Registrar. Rather, it is a question of the construction of section 45.

[10]      Further, the Trial Judge made no mention of the additional evidence filed before him. The more specific evidence of long use, in every edition of the Country Guide magazine since January 1974, as well as evidence of “Country Living” being shown as a section of the magazine in promotional materials, is, we think, evidence that would have materially affected the Registrar’s findings in this case. Accordingly, the standard of review is correctness.

ANALYSIS

[11]      Section 45 is only invoked where a trade-mark has been registered. The only question is whether the registered trade-mark was, with respect to the wares specified in the registration, in use in Canada at any time during the three-year period immediately preceding the date of the notice under section 45. Use of a trade-mark in association with wares is deemed to occur under subsection 4(1), if, at the time of transfer of the property or possession in the wares, the trade-mark is marked on the wares. Subsection 4(1) provides:

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 the 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 is transferred.

[12]      In this case, there is no dispute that the words “Country Living” were marked on the Country Guide magazine at the time of the transfer of property or possession in the magazine in the normal course of trade. There is no suggestion that the trade-mark, which is the words “Country Living”, did not appear in the way in which they appear in the Register[1] and in association with the wares named in the registration, namely, a magazine. The appellant has demonstrated use of its registered trade-mark with respect to the wares specified in its registration, in accordance with subsection 4(1).

[13]      However, the Registrar was of the view that it was necessary to evaluate whether the words “Country Living” would be perceived as a trade-mark to distinguish the Country Guide magazine. In this, the Registrar had regard to section 2 which defines a “trade-mark” as:

2. …

(a)  a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others,

Citing a decision of this Court, Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1981] 1 F.C. 679 (C.A.), the Registrar concluded that the words “Country Living” were not used to distinguish the appellant’s magazine, and thus not used as a trade-mark. It was for this reason that she expunged “Country Living” from the Register.

[14]      In our respectful opinion, in embarking upon an inquiry as to whether the words “Country Living” were used to distinguish the appellant’s magazine, the Registrar misinterpreted her function under section 45 and erred in law. No words in section 45 direct the Registrar to re-examine whether the registered trade-mark is used for the purpose of distinguishing, or so as to distinguish, wares. Rather, the Registrar’s duty under section 45 is only to determine, with respect to the wares specified in the registration, whether the trade-mark, as it appears in the register, has been used in the three years prior to the request.

[15]      In this case, it is undisputed that the registered trade-mark “Country Living” was marked on the magazine Country Guide at the time of transfer of property in or possession of the magazine in the normal course of trade. We think once it was determined that the registered trade-mark, as it appears in the register, was used in association with the wares specified in its registration, the inquiry under section 45 was at an end.

[16]      As stated by Hugessen J.A. in Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1991), 40 C.P.R. (3d) 409, at page 412, with respect to section 45:

… 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 and if not, why not.

As noted by Hugessen J.A., section 45 is not intended to provide an alternative to the usual inter partes attack on a trade-mark. It is only a simple and expeditious method, for public purposes, of removing from the register, marks which have fallen into disuse. If the respondent’s purpose is to stop the appellant from using its registered trade-mark “Country Living” because of a potential conflict between the appellant and the respondent’s client, it may pursue that objective under section 57 of the Trade-marks Act.

CONCLUSION

[17]      The appeal will be allowed with costs here and in the Trial Division and the Registrar will be ordered to reinstate the appellant’s “Country Living” trade-mark to the trade-marks register.

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