JC Penney Co. Inc. v. Gaberdine Clothing Co. Inc.

JC Penney Co. Inc. v. Gaberdine Clothing Co. Inc.
Court (s) Database
Federal Court Decisions
Date
2001-12-04
Neutral citation
2001 FCT 1333
File numbers
T-282-00
Notes
Digest
Decision Content
Date: 20011204
Docket: T-282-00
Neutral citation: 2001 FCT 1333
BETWEEN:
J.C. PENNEY COMPANY, INC.
Applicant
and
GABERDINE CLOTHING CO. INC.
Respondent
REASONS FOR ORDER
NADON J.
[1] This is an application for the expungement of the trade-mark ARIZONA BLUES JEANSWEAR CO., registration no. TMA 439,567, registered in the name of the respondent. This application is brought pursuant to subsection 57(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), which states the following:
57. (1) The Federal Court has exclusive original jurisdiction, on the application of the Registrar or of any person interested, to order that any entry in the register be struck out or amended on the ground that at the date of the application the entry as it appears on the register does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark.
57. (1) La Cour fédérale a une compétence initiale exclusive, sur demande du registraire ou de toute personne intéressée, pour ordonner qu'une inscription dans le registre soit biffée ou modifiée, parce que, à la date de cette demande, l'inscription figurant au registre n'exprime ou ne définit pas exactement les droits existants de la personne paraissant être le propriétaire inscrit de la marque.
[2] The applicant requests that registration no. TMA 439,567 for the trade-mark ARIZONA BLUES JEANSWEAR CO., dated February 17, 1995, be declared invalid and that the registration be struck from the Register of Trade-marks. The applicant also requests costs.
[3] The respondent Gaberdine Clothing Company, Inc. is the current owner of registration no. TMA 439,567 for the trade-mark ARIZONA BLUES JEANSWEAR CO. The application to register the trade-mark was filed by the respondent's predecessor in title, 2779943 Canada Inc., on December 21, 1993, on the basis of proposed use in Canada. The application was advertised on July 13, 1994. The respondent's trade-mark was registered on February 17, 1995, in connection with the following wares:
Clothing for men, women and children, namely: outerwear, namely: jackets and coats; shirts, blouses, T-shirts, sweaters, vests, dresses, pants, jeans, skirts, shorts, underwear, boxers, lingerie, pyjamas, bathrobes, socks; shoes; accessories, namely: handbags, tote bags, purses, belts.
[4] The trade-mark ARIZONA BLUES JEANSWEAR CO. was assigned to the respondent on July 28, 1997.
[5] On December 1, 1995, the applicant J.C. Penney Company, Inc. applied to register the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY (application no. 798,730) on the basis of proposed use in Canada in connection with the following wares:
Clothing and clothing accessories.
[6] On January 30, 1998, the applicant applied to register the same trade-mark, THE ORIGINAL ARIZONA JEAN COMPANY (application no. 867,902), this time on the basis of use in Canada since at least as early as September 1990 in association with the following wares:
Trousers, shirts, sweaters, pants, shorts, shoes and accessories.
[7] By letter dated June 8, 1998, the Registrar of Trade-marks indicated to the applicant that its trade-mark did not appear registrable because it was confusing with the respondent's trade-mark.
[8] By letter dated February 15, 2000, the applicant advised the Registrar of Trade-marks that it was withdrawing its application. On that date, the applicant commenced the present proceedings to expunge the respondent's registration no. TMA 439,567. The applicant's application for expungement is based on the following grounds:
1. the registered mark is not distinctive of the respondent, in that the registered mark does not actually distinguish the wares in association with which it is used by the respondent from the wares of the applicant, nor is it adapted so to distinguish them;
2. the respondent was not the person entitled to secure the registration, pursuant to subsection 16(3) of the Act, in that:
(i) at the filing date of the respondent's application, the applied for mark was confusing with the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY, previously used or made known in Canada by the applicant.
[9] The issue for determination herein concerns only the second ground of attack. The applicant, in its Memorandum of Fact and Law, and before me, abandoned the first ground.
THE EVIDENCE
The Applicant's Evidence
[10] The applicant filed affidavits from the following six persons in support of its application for expungement: P. Claire Gordon, Brian MacPherson, Fern Gereg, Jerry Rogers, Addy Grasley and Barbara Reid.
The Affidavit of P. Claire Gordon
[11] The purpose of this affidavit is solely to introduce as evidence the official registration of the respondent's trade-mark ARIZONA BLUES JEANSWEAR CO. and the file history of the applicant's application no. 867,902 to register its trade-mark THE ORIGINAL ARIZONA JEAN COMPANY.
The Affidavit of Brian MacPherson
[12] Mr. MacPherson is the Manager of the Catalogue Desk Expansion of the applicant. He has been employed by the applicant since 1974 and has held his present position since 1993. In his affidavit, Mr. MacPherson indicates the following:
- the applicant owns and operates over 1,000 department stores throughout the USA and Puerto Rico (a list of the stores is attached as Exhibit B)
- the applicant has enjoyed and continues to enjoy a substantial business in Canada by means of direct sales to Canadians
- many Canadian customers of the applicant regularly purchase merchandise by telephone order after having reviewed the applicant's catalogues
- thousands of the applicant's catalogues are mailed to Canadians each year
- the applicant's web site at www.jcpenney.com receives hundreds of hits daily from Internet users in Canada (a copy of the home page is attached as Exhibit C)
- the applicant started using the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY in 1989 in association with trousers and jeans for men, women and children; in 1990, use of the trade-mark expanded to shirts, sweaters, pants and shorts (attached as Exhibit E are examples of labels used on THE ORIGINAL ARIZONA JEAN COMPANY brand merchandise over the years)
- the applicant owns trade-marks in the United States and other countries for THE ORIGINAL ARIZONA JEAN COMPANY (a list of registrations for these trade-marks is attached as Exhibit D)
- merchandise bearing the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY are sold both in the applicant's department stores and through its catalogue (Exhibits F1 to F20 show pages from various J.C. Penney catalogues showing THE ORIGINAL ARIZONA JEAN COMPANY merchandise on sale)
- from launch in 1989 to 1999, worldwide annual sales of merchandise bearing the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY total $5,711,924,933
- advertising expenditures for THE ORIGINAL ARIZONA JEAN COMPANY brand merchandise for the period 1994-1999 were around $85 million
- the applicant's catalogue department was able to retrieve microfiche copies of invoices for sales of THE ORIGINAL ARIZONA JEAN COMPANY brand merchandise shipped to 19 Canadian customers prior to December 21, 1993 (Exhibit G)
- the applicant was also able to locate additional invoices evidencing sales of THE ORIGINAL ARIZONA JEAN COMPANY brand merchandise shipped to Canadians subsequent to December 21, 1993 (Exhibit H)
- sales of THE ORIGINAL ARIZONA JEAN COMPANY brand merchandise to Canadians continue today.
The Affidavit of Fern Gereg
[13] Ms. Gereg is Vice-President, Customer Service of PDS International Mail Service ("PDS"). She has worked for PDS, an international mailing and distributing company, since March 1987.
[14] In her affidavit, Ms. Gereg indicates that one of PDS's customers is the applicant, and that she has worked on the applicant's account since 1990, overseeing and co-ordinating the mailing of the applicant's catalogues to Canadian addresses.
[15] Ms. Gereg states that she has reviewed the applicant's records, including postal receipts and media tracking tables (Exhibit A). She mentions that from these records, she has determined that PDS has mailed over 550,000 Spring/Summer and Fall/Winter J.C. Penney catalogues to Canadian addresses since 1992.
The Affidavit of Jerry Rogers
[16] Ms. Rogers is a housewife residing in the Town of Fort St. John, British Columbia. She indicates in her affidavit that she has been shopping at J.C. Penney in Canada, through the mail order catalogue, since about 1989.
[17] Ms. Rogers states in her affidavit that she has received the applicant's catalogue at home for years and that she has purchased many clothing items from the catalogue which have been shipped directly to her home in Fort St. John.
[18] Finally, she indicates that she purchased in 1992 a pair of THE ORIGINAL ARIZONA JEAN COMPANY brand jeans through the applicant's catalogue which were shipped to her home. Attached as Exhibit A to her affidavit is a copy of an invoice dated November 29, 1992 containing information concerning this purchase.
The Affidavit of Addy Grasley
[19] Ms. Grasley is a self-employed resident of the Town of Stony Plain, Alberta. She indicates in her affidavit that she has been shopping at J.C. Penney in Canada, through the mail order catalogue, since about 1992.
[20] In addition, Ms. Grasley states that she has received the applicant's catalogue at home for years and that over the years she has purchased many clothing items from the catalogue which have been shipped directly to her home in Stony Plain.
[21] Finally, she indicates that in 1993 she purchased three pairs of THE ORIGINAL ARIZONA JEAN COMPANY brand jeans through the applicant's catalogue which were shipped to her home. Attached as Exhibit A to her affidavit is a copy of an invoice dated November 5, 1993 containing information concerning this purchase. Attached as Exhibit B to her affidavit is a picture of one of the pairs of jeans.
The Affidavit of Barbara Reid
[22] Ms. Reid is the Director of Nursing at a long term care facility and resides in Timmins, Ontario. She indicates in her affidavit that she has been shopping at J.C. Penney in Canada, through the mail order catalogue, since about April 1991.
[23] Ms. Reid states in her affidavit that she has received the applicant's catalogue at home for years which she shares with her neighbours who refer to it as the "bible" on account of the many items offered for sale that are not available in Canada. She also indicates that she has purchased many items from the catalogue, including clothing, towels, jewellery, shoes, etc.
[24] In addition, attached as Exhibit A to her affidavit is a copy of excerpted pages from the 1990, 1992 and 1993 J.C. Penney catalogues. Ms. Reid indicates that on the excerpted pages there are shown listings for THE ORIGINAL ARIZONA JEAN COMPANY brand clothing. She mentions that she is familiar with this brand of clothing since over the years she has ordered THE ORIGINAL ARIZONA JEAN COMPANY brand jeans and shirts for her children from the applicant's catalogue, including, in April 1993, two pairs of THE ORIGINAL ARIZONA JEAN COMPANY brand jeans which she picked up at the J.C. Penney store in Las Vegas, Nevada.
[25] Finally, Ms. Reid indicates that due to her familiarity with the applicant's catalogue, she can state without a doubt that THE ORIGINAL ARIZONA JEAN COMPANY trade-mark was well known to her prior to December 1993.
The Respondent's Evidence
[26] The respondent filed the affidavits of Leonardo Scalera and of Christopher John Gauthier as evidence in these proceedings.
The Affidavit of Leonardo Scalera
[27] Mr. Scalera is the President and sole beneficial shareholder of the respondent. In his affidavit, he indicates the following:
- the respondent has its head office in the Town of Mount Royal, Quebec, and was incorporated on May 24, 1989 under the Canada Business Corporations Act (Exhibit A)
-- during the past 11 years, the respondent has been involved in designing, manufacturing, importing and selling of men's, ladies' and children's apparel
- the respondent sells denim pants (jeans), denim jackets, denim shirts, denim shorts, shirts, crewneck t-shirts, polo t-shirts, pants, shorts, sweaters, outerwear jackets, underwear, boxer shorts and bathrobes
- at the present time (May 2000), the respondent's sole customer, accounting for 100% of its total sales, is Price Costco Canada Inc. which has over 30 stores throughout Canada (attached as Exhibit C is a list of all of the Price Costco Stores in Canada)
- one of the most successful private label brands launched by the respondent and by its predecessor in title, 2779943 Canada Inc. is the trade-mark ARIZONA BLUES JEANSWEAR CO. registered on February 17, 1995 and the trade-mark ARIZONA BLUES
- since September 24, 1997, the respondent has owned Canadian trade-mark registration 439,567 for the trade-mark ARIZONA BLUES JEANSWEAR CO.
- the trade-mark ARIZONA BLUES JEANSWEAR CO. was conceived by Mr. Scalera as a special label for Price Costco Canada Inc. in association with wearing apparel
- the respondent and its predecessor have continuously used the trade-mark ARIZONA BLUES JEANSWEAR CO. and the unregistered trade-mark ARIZONA BLUES with respect to men's, ladies' and children's clothing imported and sold to the Price Costco retail outlets throughout Canada
- attached as Exhibit D are boards comprising actual labels, hang tags and jean patch logos which have been applied to denim pants (jeans), denim jackets, denim shirts, denim shorts, shirts, crewneck t-shirts, polo t-shirts, pants, shorts, sweaters, outerwear jackets, underwear, boxer shorts and bathrobes; those labels exemplify the use of the trade-marks ARIZONA BLUES JEANSWEAR CO. and ARIZONA BLUES in Canada from 1993 to date
- attached as Exhibit E is a compilation of fabrics, photographs, logos and sketches depicting the trade-marks as they have appeared on various garments as well as a variety of logos comprising the marks since 1993
- attached as Exhibit F are invoices and purchase orders to Price Costco Canada Inc. relating to the sale of various items of clothing bearing the trade-mark ARIZONA BLUES JEANSWEAR CO. or ARIZONA BLUES
- approximately 60% of the total sales made by the respondent or 2779943 Canada Inc. to Price Costco Canada comprise merchandise sold with labels and/or hang tags bearing the trade-mark ARIZONA BLUES JEANSWEAR CO. and/or ARIZONA BLUES; the approximate sales of such merchandise between 1994 and 1999 have been of $13 million
- at various intervals, Price Costco Canada Inc. published catalogues of its wares including the respondent's merchandise which depicted the trade-marks ARIZONA BLUES JEANSWEAR CO. and ARIZONA BLUES.
The Affidavit of Christopher John Gauthier
[28] Mr. Gauthier is an attorney employed by Gross, Pinsky, solicitors for the respondent.
[29] Attached as Exhibit A to his affidavit is a certified copy of file history for the applicant's application no. 798,730 for registration of the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY. Attached as Exhibit B to his affidavit is a certified copy of a search report of the Canadian Trade-Mark Register with respect to the trade-mark ARIZONA in association with wearing apparel. Attached as Exhibit C to his affidavit is a certified copy of a search report of the Canadian Trade-Mark Register with respect to the trade-mark BLUES in association with wearing apparel.
ISSUE
[30] This application raises the following issue:
­­1. Was the respondent entitled to secure the registration for the trade-mark ARIZONA BLUES JEANSWEAR CO.?
SUBMISSIONS
The Applicant's Submissions
[31] The applicant submits that the respondent was not entitled to secure the registration for the trade-mark ARIZONA BLUES JEANSWEAR CO. since, at the filing date of the respondent's application, the applied for mark was confusing with the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY, which was previously used and made known in Canada by the applicant.
[32] The applicant contends that in order to successfully expunge a registration on the grounds that the respondent was not entitled to secure the registration, the following must be considered:
1. Was the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY previously used in Canada by the applicant?
2. Was the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY previously made known in Canada by the applicant?
3. If the answer to either 1. or 2. is yes, was the respondent's trade-mark ARIZONA BLUES JEANSWEAR CO. confusing with the applicant's trade-mark THE ORIGINAL ARIZONA JEAN COMPANY on December 21, 1993?
I. Was the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY previously used in Canada by the applicant?
[33] The applicant submits that the affidavit of Brian MacPherson provides direct evidence of sales and shipments of THE ORIGINAL ARIZONA JEAN COMPANY brand clothing to Canadians in Canada prior to December 21, 1993. The applicant also contends that the affidavits of Jerry Rogers and Addy Grasley corroborate in part Mr. MacPherson's evidence, since both prove that they purchased clothing bearing the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY prior to December 21, 1993 which was shipped to their homes in Canada.
[34] Therefore, the applicant submits that it previously used in Canada the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY prior to December 21, 1993.
II. Was the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY previously made known in Canada by the applicant?
[35] The applicant argues that with regard to paragraph 5(a) of the Act, the affidavits of Brian MacPherson, Jerry Rogers and Addy Grasley establish the extent to which clothing bearing the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY was distributed in Canada prior to December 21, 1993.
[36] The applicant submits that with regard to sub-paragraph 5(b)(i) of the Act, the affidavit of Brian MacPherson establishes that merchandise showing THE ORIGINAL ARIZONA JEAN COMPANY brand clothing has been prominently featured in Spring/Summer and Fall/Winter J.C. Penney catalogues each year since 1990. The applicant also contends that the affidavit of Fern Gereg provides evidence that over 160,000 Spring/Summer and Fall/Winter J.C. Penney catalogues were mailed to Canadian addresses in 1992 and 1993.
[37] Furthermore, the applicant claims that the affidavits of Jerry Rogers, Addy Grasley and Barbara Reid prove that there are Canadians who received the J.C. Penney catalogue in Canada prior to December 21, 1993, and used the catalogue to purchase clothing merchandise bearing the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY.
[38] Consequently, the applicant submits that it has made known in Canada the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY prior to December 21, 1993.
III. Was the respondent's trade-mark ARIZONA BLUES JEANSWEAR CO. confusing with the applicant's trade-mark THE ORIGINAL ARIZONA JEAN COMPANY on December 21, 1993?
[39] Of the factors listed in subsection 6(5) of the Act, which must be considered to evaluate the likelihood of confusion, the applicant suggests that the most relevant as of December 21, 1993 are the length of time the trade-marks have been in use, the nature of the wares and the degree of resemblance between the trade-marks.
[40] With respect to the length of time (para. 6(5)(b) of the Act), the applicant contends that this factor favours the applicant as it first used its trade-mark THE ORIGINAL ARIZONA JEAN COMPANY in Canada since before December 21, 1993 and since the respondent had not used its trade-mark ARIZONA BLUES JEANSWEAR CO. as of that date.
[41] As to the nature of the wares (para. 6(5)(c) of the Act), the applicant argues that this factor favours the applicant since the wares are identical.
[42] With regard to the degree of resemblance between the trade-marks (para. 6(5)(e) of the Act), the applicant submits that, when consideration is given to the effect of the trade-marks as a whole, it is clear that the parties' marks look alike, sound alike and suggest the same idea. Therefore, according to the applicant, this factor is in its favour.
[43] Finally, the applicant also submits that a relevant surrounding circumstance that should be considered is the fact that the Registrar of Trade-marks did not allow the applicant's trade-mark THE ORIGINAL ARIZONA JEAN COMPANY to proceed to advertisement on the grounds that it was confusing with the respondent's trade-mark ARIZONA BLUES JEANSWEAR CO. The applicant contends that such a decision of the Registrar is entitled to substantial weight, having been made by an officer of the Department who was entrusted with the duty of making such decisions (Decision re: SOLAVOID Trade Mark, [1977] R.P.C. 1 at 28 (P.C.)).
[44] Consequently, the applicant submits that as of the date of the respondent's application (December 21, 1993), the use of the parties' trade-marks in the same area was likely to lead to the inference that the wares associated with those marks originate with the same person, and that, accordingly, the respondent's trade-mark ARIZONA BLUES JEANSWEAR CO. was confusing with the applicant's trade-mark THE ORIGINAL ARIZONA JEAN COMPANY.
[45] Therefore, the applicant contends that the respondent's trade-mark should be expunged pursuant to subsection 18(1) of the Act.
The Respondent's Submissions
[46] The respondent maintains that it was the person entitled to secure the registration in Canada for the trade-mark ARIZONA BLUES JEANSWEAR CO. within the meaning of subsection 18(1) of the Act, and that the applicant's application for expungement must be dismissed.
[47] The respondent contends that subsection 16(3) of the Act establishes a presumption that the respondent was entitled to secure registration in Canada of its trade-mark. The respondent also submits that the applicant has not met its burden of proving that at the date on which the respondent filed its application for registration, (1) the applicant's trade-mark was previously used in Canada within the meaning of section 16(3)(a) of the Act; (2) the applicant's trade-mark was made known in Canada within the meaning of section 16(3)(a) of the Act; and (3) the respondent's trade-mark was confusing with the applicant's trade-mark within the meaning of section 6 of the Act.
I. Did the applicant use the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY in Canada prior to December 21, 1993?
[48] The respondent submits that the applicant has failed to prove its use of the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY in Canada prior to December 21, 1993.
[49] The respondent points out that the applicant did not file its initial application to register its trade-mark in Canada until 1995, and that the applicant's initial application was made on the basis of proposed use only. The respondent argues that it is curious that it was not until January 30, 1998 that the applicant changed its position and filed its second application to register its trade-mark on the basis of a prior use thereof in connection with wares in Canada.
[50] The respondent also claims that the applicant's evidence of prior use of its trade-mark in Canada falls short of what is required. According to the respondent, the applicant has no original documentary evidence of any use of the applicant's trade-mark in Canada during the relevant period. The respondent submits that the microfiche evidence produced by the applicant as Exhibit G to the affidavit of Brian MacPherson, respecting the sale and shipment of clothing bearing the applicant's trade-mark into Canada prior to December 21, 1993, is insufficient and unpersuasive, in that these documents do not make proof of their contents.
[51] The respondent contends that none of the invoices produced as Exhibit G to the affidavit of Brian MacPherson make any reference in any manner to the applicant's trade-mark and that the applicant has provided no evidence that its trade-mark was affixed to any of the goods referred to in the invoices. The respondent submits that the mere reference to the applicant's trade-mark in the catalogues does not establish "use" thereof within the meaning of sections 2 and 4 of the Act (Clairol International Corporation and Clairol Inc. of Canada v. Thomas Supply & Equipment Co. Ltd., Fox's Canadian Patent Cases, Vol. 38, 176 (Ex. Ct.)).
[52] With respect to the affidavits of Jerry Rogers and Addy Grasley, the respondent states that the applicant purports to depend on their recollection as to the exact dates on which their purchases were made, and that their allegations to the effect that they were shown copies of the invoices in question which were provided to them by the applicant, and that they confirm that the sales were made, is arguably unreliable evidence as to the dates upon which said purchases were effected (Robert C. Wian Enterprises, Inc. v. Mady (1965), 2 Ex. C.R. 3).
[53] Moreover, according to the respondent, pursuant to subsection 4(1) of the Act, a trade-mark is deemed to be used in association with wares only if the property or possession of the wares is transferred "in the normal course of trade". The respondent claims that the affidavits of two individual purchasers attesting to two individual transactions in Canada are, at best, evidence of a few token sales and are insufficient to establish an inference that the sales were made in Canada within the normal course of the applicant's business (Sim & McBurney v. Majdell Manufacturing Co. Ltd. (1986), 11 C.P.R. (3d) 306 (F.C.T.D.); United Color and Chemicals Ltd. v. Sequa Chemicals, Inc. (1993), 53 C.P.R. (3d) 216 (F.C.A.)).
[54] Finally, the respondent submits that the applicant has failed to demonstrate actual use of its trade-mark in respect of each of the wares with which it is allegedly associated.
II. Was the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY made known in Canada by the applicant prior to December 21, 1993?
[55] The respondent submits that the applicant has failed to prove that its trade-mark THE ORIGINAL ARIZONA JEAN COMPANY was made known in Canada prior to December 21, 1993.
[56] The respondent submits that section 5 of the Act imposes the requirement that the applicant's trade-mark was "well-known" in Canada by reason of the distribution or advertising of wares in association with it. The respondent argues that the phrase "well-known" implies an immediate recognition of the trade-mark in connection with certain wares in more than one locality by more than a handful of people, and that for the trade-mark to be considered as "well-known", knowledge of the trade-mark must pervade the country to a substantial extent (Robert C. Wian Enterprises, Inc. v. Mady (1965), 2 Ex. C.R. 3; Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 (F.C.T.D.); United States Shoe Corp. v. Première Vision Inc. (1990), 33 C.P.R. (3d) 353 (T.M.O.B.)).
[57] The respondent contends that the invoices produced by the applicant of direct sale to 19 Canadian purchasers of 31 items of clothing bearing the applicant's trade-mark (Exhibit G, MacPherson) constitute insufficient and unpersuasive evidence. The respondent also submits that the distribution of this insignificant number of articles to a small number of individuals is insufficient to establish that the applicant's trade-mark became "well-known" in Canada.
[58] In addition, the respondent contends that the statement in Brian MacPherson's affidavit to the effect that merchandise showing the applicant's trade-mark was featured in the applicant's catalogue since 1990 does not in any way substantiate the applicant's claim that its trade-mark was well known in Canada prior to December 21, 1993 by reason of the circulation of its catalogue in Canada.
[59] The respondent also submits that while the affidavits of three recipients of the applicant's catalogue (Jerry Rogers, Addy Grasley and Barbara Reid) may indicate that a small number of Canadians may have been made aware of the applicant's trade-mark at the relevant time, this evidence is insufficient to demonstrate that the applicant's trade-mark was "well-known" in Canada, either in a significant area of Canada or by a significant population, as a result of the mailing of catalogues (Casual Corner of America v. Casual Corner Ltd. (1985), 5 C.P.R. (3d) 503 (T.M.O.B.); Proctor & Gamble Co. v. Kiwi Polish Co. (Canada) Ltd. (1985), 5 C.I.P.R. 177 (T.M.O.B.); Brown Group, Inc. v. St. Thomas Marketing Inc. (1996), 72 C.P.R. (3d) 259 (T.M.O.B.)).
III. Subsidiarily, was the respondent's trade-mark ARIZONA BLUES JEANSWEAR CO. confusing with the applicant's trade-mark THE ORIGINAL ARIZONA JEAN COMPANY?
[60] The respondent submits that its trade-mark was not confusing with the applicant's trade-mark at the relevant time within the meaning of section 6 of the Act, and that the applicant failed to produce any evidence of confusion in the mind of the public. The respondent maintains that the applicant failed to provide any evidence from witnesses who may have been confused by the trade-mark in question. The respondent submits that the absence of evidence of any instances of mistake or confusion by Canadian consumers is a relevant factor for the consideration of this Court (S.C. Johnson & Son, Inc. v. Esprit de Corp (1986), 13 C.P.R. (3d) 235 (F.C.T.D.); Saks & Co. v. Alphi Apparel Group Inc. (1997), 82 C.P.R. (3d) 100 (T.M.O.B.)).
[61] With respect to the factors set out in subsection 6(5) of the Act, the respondent first submits that, with respect to distinctiveness, the applicant's trade-mark is not distinctive. According to the respondent, the applicant's trade-mark contains only the word ARIZONA which may be the object of the confusion. However, the respondent claims that the word ARIZONA is merely descriptive of a western style of apparel, and is not distinctive of the applicant's wares. The respondent submits that a trade-mark that is merely descriptive of a party's wares is considered to be inherently weak and will not justify an application to expunge a trade-mark registration (S.C. Johnson & Son, Inc. v. Esprit de Corp (1986), 13 C.P.R. (3d) 235 (F.C.T.D.)).
[62] Moreover, the respondent contends that there are several companies which have been making use of a trade-mark or trade-name bearing the word ARIZONA, without confusion, and that the more often the word ARIZONA is used in the marketplace, the less the protection the applicant may be afforded (Kraft General Foods Canada Inc. v. Treetop Food Broker (1999), 86 C.P.R. (3d) 197 (F.C.T.D.); Restaurant Bar-B Inc. v. Bernard Matthews P.L.C. (1996), 69 C.P.R. (3d) 540 (T.M.O.B.); Molson Cos. Ltd. v. Corby Distilleries Ltd. (1987), 18 C.P.R. (3d) 55 (T.M.O.B.)); 80761 Canada Ltd. v. Reitman's (Canada) Ltd. (1994), 55 C.P.R. (3d) 529 (T.M.O.B.)).
[63] The respondent also contends that while the applicant's trade-mark does not contain any clearly distinctive elements, the respondent's trade-mark contains the additional modifying element BLUES which clearly distinguishes its wares from those of the applicant.
[64] As to the length of time in use, the respondent submits that little importance should be attributed to this consideration, as there is no evidence that the applicant's trade-mark had been in use in Canada prior to December 21, 1993 within the requirements of the Act, or, subsidiarily, that it had been used for a considerable period of time (Laurentide Chemicals Inc. v. Marchands Deco Inc. (1985), 7 C.P.R. (3d) 357 (F.C.T.D.)).
[65] With regard to the nature of the wares and of the trade, the respondent submits that while the nature of the wares may be similar, the nature of the trades at the relevant time was not. The respondent's wares are sold exclusively to Costco Canada Inc., and, at the retail level, exclusively in stores owned by Costco Canada Inc. in Canada. On the other hand, the applicant's wares were marketed and sold in Canada exclusively by means of mail order catalogues. The respondent contends that it is unlikely that the Canadian public would have confused the respondent's wares with those of the applicant, which would have been associated solely with the applicant, and which were advertised and marketed as being available in Canada only by way of catalogue sales by the applicant, a United States company (Saks & Co. v. Alphi Apparel Group Inc. (1997), 82 C.P.R. (3d) 100 (T.M.O.B.)).
ANALYSIS
[66] The applicant alleges that the respondent's trade-mark registration is invalid. Subsection 18(1) of the Act provides that the registration of a trade-mark is invalid if the applicant for registration was not the person entitled to secure the registration. The sub-section reads as follows:
18. (1) The registration of a trade-mark is invalid if
(a) the trade-mark was not registrable at the date of registration,
(b) the trade-mark is not distinctive at the time proceedings bringing the validity of the registration into question are commenced, or
(c) the trade-mark has been abandoned,
and subject to section 17, it is invalid if the applicant for registration was not the person entitled to secure the registration.
18. (1) L'enregistrement d'une marque de commerce est invalide dans les cas suivants :
a) la marque de commerce n'était pas enregistrable à la date de l'enregistrement;
b) la marque de commerce n'est pas distinctive à l'époque où sont entamées les procédures contestant la validité de l'enregistrement;
c) la marque de commerce a été abandonnée.
Sous réserve de l'article 17, l'enregistrement est invalide si l'auteur de la demande n'était pas la personne ayant droit de l'obtenir.
[67] It must be noted that under subsection 18(1) of the Act, the onus of proof is on the person seeking expungement to establish the invalidity of the registration, since a registered trade-mark is presumed to be valid (see Unitel Communications Inc. v. Bell Canada (1995), 61 C.P.R. (3d) 12 (F.C.T.D.) at 27).
[68] In order to apply subsection 18(1) of the Act and determine whether a person was entitled to secure a registration, reference must be made to paragraph 16(3)(a) of the Act which provides the following:
16. (3) Any applicant who has filed an application in accordance with section 30 for registration of a proposed trade-mark that is registrable is entitled, subject to sections 38 and 40, to secure its registration in respect of the wares or services specified in the application, unless at the date of filing of the application it was confusing with
(a) a trade-mark that had been previously used in Canada or made known in Canada by any other person; ...
16. (3) Tout requérant qui a produit une demande selon l'article 30 en vue de l'enregistrement d'une marque de commerce projetée et enregistrable, a droit, sous réserve des articles 38 et 40, d'en obtenir l'enregistrement à l'égard des marchandises ou services spécifiés dans la demande, à moins que, à la date de production de la demande, elle n'ait créé de la confusion_:
a) soit avec une marque de commerce antérieurement employée ou révélée au Canada par une autre personne; ...
[69] Thus, a person is entitled to secure registration if its proposed trade-mark is not confusing with a trade-mark previously used or made known in Canada by another person. In the case at bar, the relevant date to assess confusion is the date on which the respondent filed its application, which is December 21, 1993.
[70] However, before this Court can consider whether the respondent's trade-mark was confusing with the applicant's trade-mark on December 21, 1993, the applicant must establish that its trade-mark was previously used or made known in Canada.
I. Was the trade-mark THE ORIGINAL ARIZONA JEAN COMPANY used in Canada by the applicant prior to December 21, 1993?
[71] Use of a trade-mark in association with wares is defined in subsection 4(1) of the Act, which reads as follows:
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 or possession is transferred.
4. (1) Une marque de commerce est réputée employée en liaison avec des marchandises si, lors du transfert de la propriété ou de la possession de ces marchandises, dans la pratique normale du commerce, elle est apposée sur les marchandises mêmes ou sur les colis dans lesquels ces marchandises sont distribuées, ou si elle est, de toute autre manière, liée aux marchandises à tel point qu'avis de liaison est alors donné à la personne à qui la propriété ou possession est transférée.
[72] As I have already indicated, the onus is on the applicant to establish that it used its trade-mark in Canada prior to December 21, 1993. In Havana House Cigar & Tobacco Merchants Ltd. v. Skyway Cigar Store (1998), 81 C.P.R. (3d) 203 (F.C.T.D.), Teitelbaum J. reviewed the conditions which must exist in order to establish use of a trade-mark with respect to wares, at page 218:
As stated above, "use" is defined in section 2 and subsection 4(1) of the Trade-marks Act wherein 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 or possession is transferred. Thus, in White Consolidated Industries Inc. v. Beam of Canada Inc. (1991), 39 C.P.R. (3d) 94 (F.C.T.D.) at pages 108-9, I wrote that:
[i]n order to establish use of a trade mark with respect to wares, the following conditions must exist at the date of transfer of the property in or possession of the wares:
1. the mark must be a trade mark as defined in s. 2 [of the Trade-marks Act], that is, used for the purpose of distinguishing wares;
2. the mark must be associated with the wares so that notice of the association is given; and
3. the transfer of the property or possession therein must occur in the normal course of trade.
[73] Teitelbaum J. also discussed the meaning of the "normal course of trade" in circumstances where the trade-mark owner is not Canadian, again at page 218:
Concerning the "normal course of trade", Heald J. noted in Manhattan Industries Inc. v. Princeton Mfg. Ltd. (1971), 4 C.P.R. (2d) 6 (F.C.T.D.) at pages 16-17 that with respect to the chain of sale from manufacturer to consumer:
if any part of the chain takes place in Canada, this is "use" in Canada within the meaning of s. 4.
[74] Therefore, the evidence which is relevant in the case at bar is evidence of use in Canada before December 21, 1993. Evidence of use of the applicant's trade-mark in other jurisdictions is not relevant, nor is evidence of use of the applicant's trade-mark subsequent to December 21, 1993.
[75] In addition, since there must be a transfer of the property in or possession of the wares in order for there to be use of the trade-mark, the applicant must adduce evidence of sales made to Canadians of wares bearing its trade-mark. Evidence of advertisement in Canada of the wares with which the trade-mark is associated is not sufficient to constitute use of the trade-mark, as held by Walsh J. in Parker-Knoll Ltd. v. Registrar of Trade Marks (1977), 32 C.P.R. (2d) 148 (F.C.T.D.) at pages 150 and 151:
The word "use" in theTrade Marks Act is defined in s. 2 thereof as " ‘use' in relation to a trade mark, means any use that by s. 4 is deemed to be a use in association with wares or services". Section 4(1) reads as follows: [...]
It has been established by the jurisprudence that advertising the trade mark in publications whi