Tint King of California Inc. v. Registrar of Trademarks et al., 2006 FC 1440

• Judge: Russell, J.
• Court: Federal Court (Canada)
• Case Date: August 15, 2006
• Jurisdiction: Canada (Federal)
• Citations: 2006 FC 1440;(2006), 304 F.T.R. 174 (FC)

Tint King of California Inc. v. Reg. of TM (2006), 304 F.T.R. 174 (FC)

MLB headnote and full text

Temp. Cite: [2006] F.T.R. TBEd. DE.038

Tint King of California Inc. (applicant) v. The Registrar of Trade-marks and Attorney General of Canada (respondents)

(T-588-06; 2006 FC 1440)

Indexed As: Tint King of California Inc. v. Registrar of Trademarks et al.

Federal Court

Russell, J.

November 28, 2006.

Summary:

The trademark TINT KING was registered by the corporate applicant's sole officer and director (Starkman) in 1989. A notice dated June 14, 2005, requested the applicant to furnish an affidavit showing use of the mark in Canada in the previous three years. The notice was sent to Starkman's home. However, Starkman had died in December 2004 and during a period of bereavement after his death his widow did not read his business correspondence. As a result, she was not aware until November 2005 of an October 20, 2005, letter from the Registrar of Trademarks notifying Starkman that the mark had been expunged pursuant to s. 45 of the Trade-marks Act. The applicant then appealed the Registrar's decision pursuant to s. 56 of the Act, seeking to demonstrate use of the mark.

The Federal Court allowed the appeal in part. The Regisrar's decision with respect to the expungement of wares from the register was upheld, but the mark was restored with respect to the services on the register.

Practice - Topic 3604.6

Evidence - Affidavits - General - Supplementary or reply affidavits - [See both Trademarks, Names and Designs - Topic 986 ].

Trademarks, Names and Designs - Topic 889

Trademarks - Registration - Expungement of mark - Grounds - Lack of use or abandonment - The Federal Court stated that "The use of a trade-mark on an invoice may or may not be considered use in association with wares described in the invoice. The major consideration is whether the trade-mark is being used as a trade-mark in describing the wares contained in the invoice and, as such, whether appropriate notice of such use is being given to the transferee of the wares. The jurisprudence appears somewhat mixed in this regard. It appears that whether the use of a trade-mark on an invoice is use as a trade-mark in association with wares is most often decided on its position on the invoice. If a trade-mark is placed at the top of the invoice, with no use in the body of the invoice, the use will not generally be in association with the invoiced wares . ... Thus, the central consideration appears to be whether, in the case of invoices, the wares themselves are identified with the trade-mark, or whether the trade-mark seems to be associated on the invoice with the distributor, in which case it is more likely proof of use in relation to services" - See paragraphs 32 to 35.

Trademarks, Names and Designs - Topic 889

Trademarks - Registration - Expungement of mark - Grounds - Lack of use or abandonment - The applicant registered the trademark TINT KING in association with wares sold, which generally related to automobile accessories, including window tint - The mark was also registered in association with automobile services - The Registrar of Trademarks expunged the mark after the applicant failed to provide evidence of use of the mark in the three year period preceding a notice sent to the applicant under s. 45 of the Trade-marks Act - The applicant appealed the Registrar's decision pursuant to s. 56 of the Act, seeking to demonstrate use of the mark - The Federal Court held that the applicant had not demonstrated use with respect to any of the listed wares - The invoices submitted in evidence indicated the mark at the top of the invoice, directly above the address of the proprietor - Therefore, the use of the mark on the invoices was best considered evidence of use with respect to services and was not acceptable evidence of use in association with the applicant's wares - With regard to an advertisement submitted by the applicant, the court stated that, generally, evidence of advertisement in Canada of the wares with which a trademark was associated was not sufficient to constitute use of the trademark - See paragraphs 32 to 42.

Trademarks, Names and Designs - Topic 889

Trademarks - Registration - Expungement of mark - Grounds - Lack of use or abandonment - The applicant registered the trademark TINT KING in association with automobile services, including window tinting, leasing, maintenance and repairs, and cleaning - The Registrar of Trademarks expunged the mark after the applicant failed to provide evidence of use of the mark in the three year period preceding a notice sent to the applicant under s. 45 of the Trade-marks Act - The applicant appealed the Registrar's decision pursuant to s. 56 of the Act, seeking to demonstrate use of the mark - The Federal Court held that the applicant had demonstrated use with respect to the listed services - Two telephone directories provided some evidence of use during the requisite period - They also provided evidence that the services that were provided consisted of a wide variety of automobile-related accessories, including tinting - With respect to invoices submitted by the applicant, the court stated that displaying the mark on invoices, envelopes and business cards could constitute use of a mark in association with an automobile sales and servicing business - The court concluded that "the invoices, in conjunction with the descriptions in the telephone directories, do demonstrate use with respect to the provision of services relating to automobile tint and provision of automobile accessories. It is less certain that automotive leasing is evidenced by the documents provided, but, in my view, this can be construed as a part of the broad class of services" - See paragraphs 43 to 50.

Trademarks, Names and Designs - Topic 984

Trademarks - Registration - Appeals or judicial review - Parties to appeals to the courts - The trademark TINT KING was registered by the corporate applicant's sole officer and director (Starkman) in 1989 - A notice dated June 14, 2005, requested the applicant to furnish an affidavit showing use of the mark in Canada in the previous three years - The notice was sent to Starkman's home - However, Starkman had died in December 2004 and during a period of bereavement after his death his widow did not read his business correspondence - As a result, she was not aware until November 2005 of an October 20, 2005, letter from the Registrar of Trademarks notifying Starkman that the mark had been expunged pursuant to s. 45 of the Trade-marks Act - The applicant appealed the Registrar's decision pursuant to s. 56 of the Act, seeking to demonstrate use of the mark - The Federal Court stated that hurdles to hearing a s. 56 appeal in this case were that no reply was made to the Registrar's s. 45 letters, and the original affidavit submitted to the court was not in the name of the sole director and shareholder of the applicant, Mr. Starkman, but was sworn by Mrs. Starkman - The court concluded that the fact that Mrs. Starkman did not open her mail during a period of bereavement did not bar her from making a s. 56 appeal on behalf of the applicant - As Mr. Starkman's executor she was entitled to submit affidavit evidence in support of the s. 56 appeal - The applicant had also established that granting an extension of time was appropriate - See paragraphs 6 to 8.

Trademarks, Names and Designs - Topic 985

Trademarks - Registration - Appeals or judicial review - Admissibility of fresh evidence on appeal - [See Trademarks, Names and Designs - Topic 984 ].

Trademarks, Names and Designs - Topic 986

Trademarks - Registration - Appeals or judicial review - Admissibility of supplementary affidavits on appeal - The trademark TINT KING was registered by the corporate applicant's sole officer and director (Starkman) in 1989 - A notice dated June 14, 2005, requested the applicant to furnish an affidavit showing use of the mark in Canada in the previous three years - The notice was sent to Starkman's home - However, Starkman had died in December 2004 and during a period of bereavement after his death his widow did not read his business correspondence - As a result, she was not aware until November 2005 of an October 20, 2005, letter from the Registrar of Trademarks notifying Starkman that the mark had been expunged pursuant to s. 45 of the Trade-marks Act - The applicant appealed the Registrar's decision pursuant to s. 56 of the Act, seeking to demonstrate use of the mark - At the hearing of the matter, the applicant sought to file a supplemental affidavit of Mrs. Starkman - The Federal Court admitted the supplemental affidavit - The first three requirements for filing additional affidavits under rule 312 of the Federal Courts Rules were met - While an issue arose with respect to the additional requirement that the evidence must not have been available at an earlier date, the court stated that the circumstances of this case suggested there was no practical logic for rigidly enforcing that factor - There was no evidence that the applicant was attempting to split its case and there were situations where this requirement had been interpreted with flexibility - This was an appropriate case for the court to exercise its discretion to allow the supplemental affidavit - See paragraphs 14 to 26.

Trademarks, Names and Designs - Topic 986

Trademarks - Registration - Appeals or judicial review - Admissibility of supplementary affidavits on appeal - The Registrar of Trademarks expunged the applicant's registered trademark TINT KING after the applicant failed to provide evidence of use of the mark in the three year period preceding a notice sent by the Registrar under s. 45 of the Trade-marks Act - The applicant appealed the Registrar's decision pursuant to s. 56 of the Act, seeking to demonstrate use of the mark - At the hearing of the matter, the applicant sought to file a supplemental affidavit - The Federal Court held that the supplemental affidavit was admissible under rule 312 of the Federal Courts Rules - The court further stated that "Rule 312, however, refers to filing supplemental affidavits, not legal argument. Some cases have held that reply memoranda or supplementary records, for instance, cannot contain legal argument ... In this instance, the only legal argument is contained in a letter that the court requested, providing information as to the applicant's right to file additional evidence, and clarifying the purpose of the evidence. Furthermore, the right to consider the additional submissions appears to be covered by rule 313" - See paragraphs 24 to 26.

Trademarks, Names and Designs - Topic 995

Trademarks - Registration - Appeals or judicial review - Extension of time to appeal - [See Trademarks, Names and Designs - Topic 984 ].

Cases Noticed:

Austin Nichols & Co. v. Cinnabon Inc., [1998] 4 F.C. 569; 231 N.R. 362; 82 C.P.R.(3d) 513 (F.C.A.), refd to. [para. 4].

Roebuck v. Registrar of Trade Marks et al. (1987), 15 C.P.R.(3d) 113 (F.C.T.D.), consd. [para. 6].

Registrar of Trademarks v. Harris Knitting Mills Ltd. (1985), 60 N.R. 380; 4 C.P.R.(3d) 488 (F.C.A.), refd to. [para. 7].

Centre Ice Ltd. v. National Hockey League (1995), 101 F.T.R. 303; 63 C.P.R.(3d) 498 (T.D.), refd to. [para. 8].

Footlocker Group Canada Inc. v. Steinberg et al. (2004), 253 F.T.R. 109; 35 C.P.R.(4th) 443; 2004 FC 717, refd to. [para. 11].

Swabey Ogilvy Renault v. Golden Brand Clothing (Canada) Ltd. (2002), 220 F.T.R. 73; 19 C.P.R.(4th) 516; 2002 FCT 458, refd to. [para. 12].

Mondavi (Robert) Winery v. Spagnol's Wine & Beer Making Supplies Ltd. (2001), 211 F.T.R. 80; 10 C.P.R.(4th) 331 (T.D.), refd to. [para. 17].

Atlantic Engraving Ltd. v. Rosenstein (2002), 299 N.R. 244; 2002 FCA 503, consd. [para. 18].

Mazhero v. Industrial Relations Board (Can.) et al. (2002), 292 N.R. 187; 2002 FCA 295, refd to. [para. 20].

Larson-Radok v. Minister of National Revenue, [2000] F.T.R. Uned. 605; [2000] 3 C.T.C. 163; 2000 DTC 6322 (T.D.), consd. [para. 22].

Vrabek v. Minister of National Revenue, [1997] N.R. Uned. 39; [1997] 2 C.T.C. 261 (F.C.A.), refd to. [para. 24].

Bayer AG et al. v. Apotex Inc. et al. (1998), 156 F.T.R. 303; 84 C.P.R.(3d) 23 (T.D.), affd. (2001), 278 N.R. 178; 2001 FCA 263, leave to appeal denied (2002), 294 N.R. 392 (S.C.C.), refd to. [para. 24].

Canadian Private Copying Collective v. Fuzion Technology Corp. et al., [2005] F.T.R. Uned. 928; 47 C.P.R.(4th) 265; 2005 FC 1557, refd to. [para. 25].

Haddad (D.) v. Canada (Ministre de la Citoyenneté et de l'Immigration), [2003] F.T.R. Uned. 743; 2003 FCT 690, refd to. [para. 25].

Havana House Cigar & Tobacco Merchants Ltd. et al. v. Skyway Cigar Store (1998), 147 F.T.R. 54; 81 C.P.R.(3d) 203 (T.D.), revd. (1999), 251 N.R. 215 (F.C.A.), refd to. [para. 50].

White Consolidated Industries Inc. v. Beam of Canada Inc. (1991), 47 F.T.R. 172; 39 C.P.R.(3d) 94 (T.D.), refd to. [para. 31].

Moffat & Co. v. Conagra Inc. (1993), 52 C.P.R.(3d) 564 (T.M.O.B.), refd to. [para. 32].

Sterling & Affiliates v. A.C.B. Dejac SA (1994), 58 C.P.R.(3d) 540 (T.M.O.B.), refd to. [para. 33].

MacEachern (Gordon A.) Ltd. v. National Rubber Co. (1963), 41 C.P.R. 149; 39 D.L.R.(2d) 668 (Ex. Ct.), refd to. [para. 33].

Goudreau Gage Dubuc & Martineau v. Niagara Mist Marketing Ltd. (1997), 78 C.P.R.(3d) 255 (T.M.O.B.), refd to. [para. 34].

Morris (Philip) Inc. v. Imperial Tobacco Ltd. (1987), 8 F.T.R. 310; 13 C.P.R.(3d) 289 (T.D.), refd to. [para. 36].

Westinghouse Air Brake Co. v. Moffat & Co., [2001] F.T.R. Uned. 653; 14 C.P.R.(4th) 257; 2001 FCT 1061, refd to. [para. 37].

Labatt (John) Ltd. v. Rainier Brewing Co. (1984), 54 N.R. 296; 80 C.P.R.(2d) 228 (F.C.A.), refd to. [para. 38].

J.C. Penney Co. v. Gaberdine Clothing Co. (2001), 213 F.T.R. 189; 2001 FCT 1333, refd to. [para. 40].

Ridout & Maybee LLP v. Omega SA (Omega AG) (Omega Ltd.) et al. (2005), 343 N.R. 226; 2005 FCA 306, refd to. [para. 41].

Cornerstone Securities Canada Inc. v. Registrar of Trademarks et al. (1994), 87 F.T.R. 300 (T.D.), refd to. [para. 44].

Sunshine Village Corp., Re, [1996] T.M.O.B. No. 219, refd to. [para. 44].

Foodcorp v. Chalet Bar B Q (Canada) Inc. et al. (1982), 47 N.R. 172; 66 C.P.R.(2d) 56 (F.C.A.), refd to. [para. 45].

The Bum Wrap Clothing Ltd., Re (1995), 63 C.P.R.(3d) 564 (T.M.O.B.), refd to. [para. 46].

El Toro Restuarant & Pizzeria Ltd, Re (1996), 70 C.P.R.(3d) 346 (T.M.O.B.), refd to. [para. 46].

Campbell Ford Sales Ltd., Re, [1996] T.M.O.B. No. 117, refd to. [para. 48].

Accesories d'Autos Nordiques Inc., Re, [2005] T.M.O.B. No. 163, refd to. [para. 49].

Statutes Noticed:

Federal Courts Rules, rule 312 [para. 14]; rule 313 [para. 24].

Trade-marks Act, R.S.C. 1985, c. T-13, sect. 45, sect. 56 [para. 3].

Counsel:

Michael R. Carey, for the applicant;

No one appearing for the respondents.

Solicitors of Record:

Macdonald Sager Manis LLP, Toronto, Ontario, for the applicant.

This appeal was heard on August 15, 2006, at Toronto, Ontario, before Russell, J., of the Federal Court, who delivered the following decision on November 28, 2006.