T-59-82
Ports International Limited (Appellant)
v.
Registrar of Trade Marks and Alex E. MacRae &
Co. (Respondents)
Trial Division, Jerome A.C.J.—Toronto, March
15; Ottawa, December 15, 1983.
Trade marks — Appeal from Registrar's decision expunging
appellant's registration of trade mark "Ciao" — Affidavit
filed showing use in response to s. 44 application alleging
donation of clothing bearing trade mark to Toronto Symphony
for fund-raising sale — Appeal dismissed — Normal course
of trade being commercial sale of garments — Charitable
donations of garments normal course of trade, but not when
standing alone isolated from any proof of normal sales activity
— No evidence of trading in garments — Trade Marks Act,
R.S.C. 1970, c. T-10, ss. 44, 56.
COUNSEL:
D. R. Bereskin, Q.C. for appellant.
M. I. Thomas for respondent, Registrar of
Trade Marks.
S. Anissimoff and P. Salsbury for respond
ent, Alex E. MacRae & Co.
SOLICITORS:
Rogers, Bereskin & Parr, Toronto, for
appellant.
Deputy Attorney General of Canada for
respondent, Registrar of Trade Marks.
MacBeth & Johnson, Toronto, for respond
ent, Alex E. MacRae & Co.
The following are the reasons for judgment
rendered in English by
JEROME A.C.J.: This appeal under section 56 of
the Trade Marks Act' came on for hearing before
me at Toronto, Ontario, on March 15, 1983. The
appeal is taken from a decision of the Registrar of
Trade Marks dated November 9, 1981, upon an
application taken pursuant to section 44 of the
' R.S.C. 1970, c. T-10.
Trade Marks Act, expunging the appellant's
Canadian registration for the trade mark "Ciao".
The facts are quite simple and not in dispute.
The trade mark in issue was registered on Novem-
ber 28, 1975. The respondent, Alex E. MacRae &
Co. requested the Registrar of Trade Marks to
issue a notice under section 44, which he did on
March 2, 1980. In response to the notice, the
appellant filed the affidavit of Ephraim Harold
Shapiro. The relevant portions of the affidavit are
as follows:
The CIAO line of wearing apparel has continuously been on sale
in Canada by Ports International Limited since 1970.
The last use of the trade mark prior to the date of the Section
44 Notice occurred in about March, 1980... .
The document goes on to explain that a number of
garments with the label affixed were delivered to
The Toronto Symphony for the purpose of a fund-
raising sale. The Registrar was unsatisfied with
that response and so indicated in a letter dated
September 9, 1980. In response to that letter, the
appellant filed a second affidavit. Counsel for the
applicant referred to portions which confirm that
both the section 44 notice and the delivery of the
goods to The Toronto Symphony were in the same
month, that the donation was on the understanding
that the Symphony was going to sell all dresses
and more particularly in paragraph 4:
In the normal course of trade, the applicant donates various
items of ladies and mens clothing to charitable foundations for
resale. These donations have in the past proven to be very
effective in promoting the applicant's lines of men's and ladies'
clothing.
I also permitted the use of a second affidavit, that
of Claire M. King, the co-convenor of The Toronto
Symphony event, as clarification of the following
statement in the Shapiro affidavit:
I am informed by Claire M. King, co-convenor of The New
Shop of The Toronto Symphony Women's Committee, and
verily believe, that a quantity of women's clothing was received
by The Toronto Symphony Women's Committee within one
month of February 4, 1980 from Ports as a donation for resale
at said Committee's Rummage Sale.
During his submission, counsel for the appellant
conceded that these affidavits constituted the only
evidence of use and that in order to succeed upon
the appeal, he must persuade me in the language
of subsection 44(3) that this was a use in the
normal course of trade, for the purpose of distin
guishing the wares of the owner of the trade mark
from the goods of others. During the course of his
very able submission, I indicated from the bench
that he had not done so, but that I would give the
matter some consideration. These reasons confirm
that the appeal must fail.
There is no evidence of trading in these gar
ments. The Shapiro affidavit alleges that garments
under this label have been continuously on sale in
Canada since 1970 and yet there is not a scrap of
evidence either before the Registrar or before me
to support that contention. The normal course of
trade in this matter is commercial sale of dresses
either as manufacturer, wholesaler or retailer. It
is, of course, normal that those in the garment
business would give dresses to charity auctions in
the anticipation of engendering goodwill and wider
identification of the label. It is normal that such
things would be done in the hope of increasing
sales, the normal course of trade. That does not
make the charitable donation a transaction in the
normal course of trade when it stands alone and in
complete isolation from any proof of normal sales
activity. Since the only evidence that the appellant
could point to was the charitable donation, it
seems to me that it is not only not evidence of use
in the normal course of trade, it is evidence which
is more consistent with non-use in the commercial
sense.
There is nothing in the material or in the sub
mission of counsel before me that persuades me
that the conditions of subsection 44(3) have been
met. The appeal is therefore dismissed with costs.
You are being directed to the most recent version of the statute which may not be the version considered at the time of the judgment.