T-1738-86
Playboy Enterprises Inc. (Appellant)
v.
Michel "Mike" Germain (Respondent)
INDEXED AS: PLAYBOY ENTERPRISES INC. V. GERMAIN
Trial Division, Pinard J.—Ottawa, June 18 and
July 9, 1987.
Trade marks — Expungement — Non-user — "Playboy
Men's Hair Stylist" trade mark — Special circumstances
excusing absence of use — Quebec Charter of the French
Language imposing use of French only in commercial advertis
ing — Pressure by civic officials to use French — Contrary to
public policy to permit adherence to statute to imperil validity
of trade mark.
Following a section 44 request for evidence of use, by the
respondent, of the trade mark "Playboy Men's Hair Stylist",
the Chairman of the Opposition Board found that the trade
mark had not been used for the last three years before the
respondent received the notice from the Registrar. He also
found, however, that this absence of use could be explained and
excused by special circumstances and that the trade mark
should not be expunged from the register. This is an appeal
from that decision.
Held, the appeal should be dismissed.
There were special circumstances excusing the respondent's
absence of use of his trade mark. In the context of the Charter
of the French Language, there was pressure from civic officials
of the City of Hull to require the registrant to adopt a French
version of his trade mark. Thus external forces were brought to
bear against the respondent in respect of his use of the trade
mark and his adoption of a French translation for the operation
of his hair styling business.
It would be contrary to public policy to permit adherence to
one statute, under the circumstances of this particular case, to
imperil the validity of a trade mark. It is also quite clear that
the respondent always intended to use the trade mark, as
evidenced by the use of the key word "Playboy" in the French
translation.
STATUTES AND REGULATIONS JUDICIALLY
CONSIDERED
Charter of the French Language, R.S.Q. 1977, c. C-11, s.
58.
Regulations respecting the language of commerce and
business, c. C-11, r. 9, s. 16(b).
Trade Marks Act, R.S.C. 1970, c. T-10, ss. 2, 4(2), 44
(as am. by S.C. 1984, c. 40, s. 70).
CASES JUDICIALLY CONSIDERED
APPLIED:
Registrar of Trade Marks v. Harris Knitting Mills Ltd.
(1985), 4 C.P.R. (3d) 488 (F.C.A.); Labatt (John) Ltd. v.
The Cotton Club Bottling Co. (1976), 25 C.P.R. (2d) 115
(F.C.T.D.).
COUNSEL:
Nicholas H. Fyfe, Q.C. and Donald F. Phenix
for appellant.
Macey Schwartz for respondent.
SOLICITORS:
Smart & Biggar, Ottawa, for appellant.
Macey Schwartz for respondent.
The following are the reasons for order ren
dered in English by
PINARD J.: This is an appeal by the appellant
Playboy Enterprises Inc. from a decision rendered
May 30, 1986 on behalf of the Registrar of Trade
Marks pursuant to section 44 of the Trade Marks
Act, R.S.C. 1970, c. T-10 [as am. by S.C. 1984,
c. 40, s. 70], wherein the Chairman of the Opposi
tion Board decided that the trade mark "Playboy
Men's Hair Stylist" ought not to be amended or
expunged.
The respondent is recorded since December 14,
1979 as the owner in Canada of trade mark regis
tration number 238,157 for the trade mark "Play-
boy Men's Hair Stylist" in association with ser
vices identified as "un salon de coiffure pour
hommes". In response to a request from the appel
lant, the Registrar of Trade Marks, on January 30,
1985 issued a notice pursuant to section 44 of the
Trade Marks Act, addressed to the respondent. In
response to that notice, the respondent furnished
his own affidavit, dated April 30, 1985. Following
receipt of that affidavit, an oral hearing was held
at which both the appellant and respondent were
represented.
On the basis of the evidence contained in the
respondent's affidavit, the Chairman of the Oppo
sition Board, on behalf of the Registrar, decided
that the respondent had shown use of its registered
trade mark "Playboy Men's Hair Stylist" in
Canada prior to the end of 1980, but that the trade
mark had not been used by the respondent from
1981 to January 30, 1985, being the date of issu
ance of the section 44 notice.
On the basis of evidence contained in the same
affidavit, it was further decided that the respon
dent's non-use of the trade mark could be
explained by unusual, uncommon or exceptional
circumstances, that these special circumstances
excused the absence of use by the respondent of its
registered trade mark and that registration No.
238,157 ought not be expunged from the register.
The appellant states that in both fact and law,
the Chairman of the Opposition Board erred in
concluding that the circumstances described by the
respondent in his affidavit constituted special cir
cumstances which excused non-use by the regis
trant of its registered trade mark "Playboy Men's
Hair Stylist" from 1981 to January 30, 1985.
Accordingly, the appellant states that "the Regis
trar erred in not ordering that trade mark registra
tion number 238,157 for the trade mark `Playboy
Men's Hair Stylist' be expunged." Therefore, the
appellant seeks an order allowing this appeal and
directing that "Playboy Men's Hair Stylist"
Registration No. 238,157 be expunged from the
register of trade marks.
In reply to the notice of appeal, the respondent
essentially states that on the basis of the evidence
contained in his affidavit dated April 30, 1985, the
Chairman of the Opposition Board was correct in
holding that special circumstances existed which
excused the absence of use by the registrant of his
trade mark as of the date of the section 44 notice.
Beyond that affidavit, further evidence was put
before me on appeal by way of an additional
affidavit by the respondent, dated September 25,
1986. On the basis of the evidence contained in the
latter affidavit, the respondent states that since
May of 1985 he has ensured that all advertising
used in relation to "un salon de coiffure pour
hommes" at 33 Gamelin Boulevard in the City of
Hull, Quebec, uses the English words "Men's Hair
Stylist" with the word "Playboy" as well as the
French words "coiffure pour hommes"; the
respondent also states that during the summer of
1986, he was warned by the Commission de Pro-
tection de la Langue Française of the Government
of Quebec not to use the English words; finally,
this last affidavit refers to section 58 of chapter
VII of the Charter of the French Language, a
statute of the Province of Quebec (Revised Stat
utes of Quebec, 1977, c. C-11) and to paragraph
16(b) of the Regulations respecting the language
of commerce and business [c. C-11, r. 9] passed
pursuant to various sections of the said chapter
VII of the Charter. Those provisions [as referred
to] state as follows:
S. 58
Except as may be provided under this act or the regulations
of the Office de la langue française, signs and posters and
commercial advertising shall be solely in the official language.
N.B. Section 1 states that French is the official language of
Quebec.
16. The following may appear exclusively in one or several
languages other than French on signs and posters, in commer
cial advertising and in inscriptions relating to a product as well
as in any other document:
(b) a trade mark recognized within the meaning of the Trade
Marks Act (R.S.C., 1970, c. T-10) before 26 August 1977;
Consequently, the sole issue in this appeal is
whether the registrant (the respondent) has satis
fied the requirements of section 44 of the Trade
Marks Act and has shown that special circum
stances existed excusing the absence of use of the
trade mark "Playboy Men's Hair Stylist" since
1981.
The relevant provisions of the Trade Marks Act
state as follows:
2. In this Act
"use" in relating to a trade mark, means any use that by
section 4 is deemed to be a use in association with wares or
services;
4....
(2) A trade mark is deemed to be used in association with
services if it is used or displayed in the performance or advertis
ing of such services.
44. (I) The Registrar may at any time and, at the written
request made after three years from the date of the registration
by any person who pays the prescribed fee shall, unless he sees
good reason to the contrary, give notice to the registered owner
requiring him to furnish within three months an affidavit or
statutory declaration showing with respect to each of the wares
or services specified in the registration, whether the trade mark
is in use in Canada and, if not, the date when it was last so in
use and the reason for the absence of such use since such date.
(2) The Registrar shall not receive any evidence other than
such affidavit or statutory declaration, but may hear represen
tations made by or on behalf of the registered owner of the
trade mark or by or on behalf of the person at whose request
the notice was given.
(3) Where, by reason of the evidence furnished to him or the
failure to furnish such evidence, it appears to the Registrar that
the trade mark, either with respect to all of the wares or
services specified in the registration or with respect to any of
such wares or services, is not in use in Canada and that the
absence of use has not been due to special circumstances that
excuse such absence of use, the registration of such trade mark
is liable to be expunged or amended accordingly.
(4) When the Registrar reaches a decision as to whether or
not the registration of the trade mark ought to be expunged or
amended, he shall give notice of his decision with the reasons
therefor to the registered owner of the trade mark and to the
person at whose request the notice was given.
(5) The Registrar shall act in accordance with his decision if
no appeal therefrom is taken within the time limited by this Act
or, if an appeal is taken, shall act in accordance with the final
judgment given in such appeal.
At this stage, it is appropriate to recall that the
absence of use that must be excused is the absence
of use that occurred before the owner received the
section 44 notice; in Registrar of Trade Marks v.
Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d)
488 (F.C.A.), Pratte J. said, at pages 492-493:
[TRANSLATION] Under section 44, where it appears from the
evidence furnished to the Registrar that the trade mark is not
in use, the Registrar must order that the registration of the
mark be expunged unless the evidence shows that the absence
of use has been "due to special circumstances that excuse such
absence of use". The general rule is thus that absence of use of
a mark is penalized by expungement. For an exception to be
made to this rule, it is necessary, under subsection 44(3), for
the absence of use to be due to special circumstances that
excuse it. With regard to this provision, it should be noted first
that the circumstances it mentions must excuse the absence of
use in the sense that they must make it possible to conclude
that, in a particular case, the absence of use should not be
"punished" by expungement. These circumstances must be
"special" (see John Labatt v. The Cotton Club Bottling Co.
(1976), 25 C.P.R. (2d) 115) in that they must be circumstances
not found in most cases of absence of use of a mark. Finally,
these special circumstances that excuse the absence of use
must, under subsection 44(3), be circumstances to which the
absence of use is due. This means that in order to determine
whether the absence of use should be excused in a given case, it
is necessary to consider the reasons for the absence of use and
determine whether these reasons are such that an exception
should be made to the general rule that the registration of a
mark that is not in use should be expunged. I would add,
finally, that the absence of use that must thus be excused is the
absence of use before the owner receives the notice from the
Registrar.
In the present case, it appears that the Chair
man of the Opposition Board based his finding
that special circumstances existed excusing the
absence of use of the trade mark "Playboy Men's
Hair Stylist" since 1981 on paragraphs 18 to 21 of
the respondent's affidavit dated April 30, 1985.
The relevant part of his decision reads as follows:
Having regard to the registrant's evidence, 1 am satisfied that
the registrant has provided a sufficient showing of use of its
trade mark PLAYBOY MEN'S HAIR STYLIST in Canada in
association with "un salon de coiffure pour hommes" prior to
the end of 1980. Further, I do not consider that the use by the
registrant or his registered user of the trade marks PLAYBOY
POUR LUI or PLAYBOY COIFFURE POUR HOMMES constitute
use of the registered trade mark PLAYBOY MEN'S HAIR STY
LIST sufficient for me to conclude that the trade mark was in
use as of January 30, 1985, the date of the section 44 notice.
However, the trade mark agent for the registrant at the oral
hearing asserted that the registrant is relying upon special
circumstances to excuse the absence of use of the registered
trade mark as of the date of the section 44 notice.
The Germain affidavit establishes that the registrant has not
used his registered trade mark for a period of just in excess of
three years in association with the services specified in his
registration. Further, I am satisfied that the reasons given by
Mr. Germain explaining the absence of use of the trade mark
PLAYBOY MEN'S HAIR STYLIST in association with "un salon de
coiffure pour hommes" could be characterized as unusual,
uncommon or exceptional and arise from forces external to the
voluntary acts of the registrant. In particular, the misunder
standing by the registrant of the provisions of Bill 101 of the
Charter of the French Language and, more importantly, the
pressure from civil officials of the City of Hull to require the
registrant to adopt a French version of his trade mark in
association with his commercial advertising in the Province of
Quebec would point to external forces which were brought to
bear against the registrant in respect of his use of the trade
mark PLAYBOY MEN'S HAIR STYLIST and his adoption of a
French translation of the trade mark in respect of his operation
of "un salon de coiffure pour hommes" in the Province of
Quebec.
In concluding that external forces exist in the present situation,
I am mindful of the fact that the registrant is not a large
company or organization which might have been in a position
to resist the pressure brought to bear against it by municipal
officials. In view of the above, I have concluded that special
circumstances exist in the present instance which excuse the
absence of use by the registrant of its registered trade mark
PLAYBOY MEN'S HAIR STYLIST as of the date of the section 44
notice and that the registration ought therefore to be
maintained.
I agree with the Chairman of the Opposition
Board when he finds that the pressure from civil
officials of the City of Hull to require the regis
trant to adopt a French version of his trade mark,
in the context of the Charter of the French Lan
guage, "would point to external forces which were
brought to bear against the registrant in respect of
his use of the trade mark PLAYBOY MEN'S HAIR
STYLIST and his adoption of a French translation
of the trade mark in respect of his operation of `un
salon de coiffure pour hommes' in the Province of
Quebec." That conclusion is entirely based on the
evidence contained in the respondent's affidavit
dated April 30, 1985, and clearly excuses absence
of use prior to the section 44 notice by the
Registrar.
Furthermore, such finding is in accordance with
the meaning given to the words "special circum
stances", in subsection 44 of the Trade Marks Act,
by Pratte J., in the Harris Knitting Mills case,
supra, at page 492 where he refers to Labatt
(John) Ltd. v. The Cotton Club Bottling Co.
(1976), 25 C.P.R. (2d) 115 (F.C.T.D.). In the
latter case, Cattanach J. considered specifically
the meaning to be given to "special circumstances"
and said, at pages 123, 124 and 125:
The word "special" in the language of s. 44(3) "that the
absence of use has not been due to special circumstances that
excuse such absence of use" is an adjective modifying the word
"circumstances" and the word "special" as an adjective is
defined in the Shorter Oxford English Dictionary, 3rd ed., as
meaning "Of such a kind as to exceed in some way that is not
usual or common; exceptional in character, quality or degree."
Put another way "special circumstances" means circumstances
that are unusual, uncommon or exceptional.
Jackett, C.J., specifically decided in the Noxzema case,
supra, (Noxzema Chemical Co. of Canada Ltd. v. Sheran
Manufacturing Ltd. et al., [1968] 2 Ex.C.R. 446; 55 C.P.R.
147) that s. 44 of the Trade Marks Act is not the proper
procedure to determine if a trade mark has been abandoned
and the proper procedure to raise the question of abandonment
is by way of express proceedings for expungement.
However the remarks made by Evershed, L.J., (Aktiebolaget
Manus v. R. J. Fullwood & Bland, Ltd. (1948), 66 R.P.C. 71
(C.A.) (in relation to U.K. Statute.)) with respect to the
meaning of "special circumstances" are particularly apt in the
circumstances of this appeal because it is these words that are
used in s. 44(3) and in so saying I have not overlooked that the
same words appear in different statutes enacted by different
jurisdictions. But the subject-matter of both statutes is substan
tially the same and in each instance the words "special circum
stances" are to be given meaning in their common acceptance
and that is what Lord Evershed did when he said (which for
emphasis I repeat):
In that context it seems to me (without attempting any
precise defintion) that the words must be taken to refer to
circumstances which are "special" in the sense of being
peculiar or abnormal and which are experienced by persons
engaged in a particular trade as the result of the working of
some external forces as distinct from the voluntary acts of
any individual trader.
Finally, it would be contrary to public policy to
permit adherence to one statute, under the circum
stances of this particular case, to imperil the valid
ity of a trade mark. Indeed, it was well known, at
the time, that the relevant part of the Charter of
the French Language and the Regulations
respecting the language of commerce and business
were the subject of legal and constitutional chal
lenge in Court; we now know that this matter has
yet to be finally decided by the Supreme Court of
Canada. I am therefore satisfied that the respon
dent always intended to use the trade mark; the
fact that he used the key word "Playboy" with the
French translation of the remainder of the mark is
a clear indication of such an intent.
For all these reasons, I am in agreement with
the conclusion of the Chairman of the Opposition
Board from which it follows that the appeal from
his decision must be 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.