LICENSEE MAY BE NAMED AS PREDECESSOR IN TITLE

LICENSEE MAY BE NAMED AS PREDECESSOR IN TITLE IN TRADE-MARK
APPLICATION, FEDERAL COURT RULES
by
Barry Gamache
LEGER ROBIC RICHARD, Lawyers
ROBIC, Patent & Trademark Agents
Centre CDP Capital
1001 Square-Victoria - Bloc E – 8th Floor
Montreal, Quebec, Canada H2Z 2B7
Tel.: (514) 987 6242 - Fax: (514) 845 7874
www.robic.ca - [email protected]
A recent decision of the Federal Court of Appeal of Canada has expanded
the pool of predecessors in title which must be named when filing a trademark application in Canada, by including licensees (Pernod Ricard, société
anonyme v. Molson Breweries, a partnership, No. A-1214-91, November 23,
1995).
Appellant Pernod Ricard filed an application on September 26, 1984 for
registration of a design trade-mark RICARD based on use of the trade-mark in
Canada since 1954 in association with wines, aniseed-based aperitifs, spirits,
and alcoholic beverages. Thereafter, Pernod Ricard filed an amended
application alleging use in Canada since 1954 by itself and its predecessors in
title, Ricard and S.E.G.M. Upon publication of Pernod Ricard's application,
Molson Breweries filed before the Opposition Board a statement of opposition
alleging, among other grounds, that the application did not conform to
paragraph 30(b) of Canada's Trade-Marks Act (R.S.C. 1985 c. T-13) in that
neither Pernod Ricard nor its alleged predecessors in title did use the trademark in Canada since 1954; furthermore, Molson Breweries specifically denied
that S.E.G.M. had been a predecessor in title of Pernod Ricard.
Section 30 of the Trade-Marks Act lists various requirements which an
applicant must respect when filing a trade-mark application; among others,
paragraph 30(b) states that an applicant for the registration of a trade-mark
shall file with the Registrar an application containing in the case of a trademark that has been used in Canada (such as the application filed by Pernod
Ricard), the date from which the applicant or his named predecessors in title,
if any, have so used the trade-mark in association with each of the general
classes of wares or services described in the application. The fact that an
application does not conform to Section 30 of the Act is a ground of
opposition provided for by Section 38 of the Act, which was alleged by
Molson Breweries in its statement of opposition.
Caselaw is clear that where an applicant's compliance with Section 30 of the
Act is in issue, there is a legal burden on the applicant to show compliance
and an evidenciary burden on the opponent to lead evidence in support of
the allegations of non-compliance pleaded by that party. The evidencial
burden is the burden of adducing sufficient evidence to persuade the trier of
fact that the alleged facts are true. However, as this is often the case for this
ground of opposition, an applicant obviously has more opportunities of
knowledge of the alleged grounds than the opponent has; consequently, the
evidencial burden on the opponent is less than in ordinary cases [John Labatt
Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D., McNair, J.)].
For various reasons, Molson Breweries did not file any evidence concerning its
ground of opposition based on Sections 38 and 30 of the Act before the
Opposition Board. Ultimately, for lack of evidence, the Registrar rejected
Molson Breweries's opposition [reported at (1990) 31 C.P.R. (3d) 42
(T.M.Opp.B.)].
Molson Breweries appealed the Registrar's decision and, as permitted by the
rules, it filed evidence before the Trial Division of the Federal Court regarding
the alleged non conformity of Pernod Ricard's application with regards to
paragraph 30(b) of the Act. This evidence consisted of various excerpts of
affidavits that had been filed by Pernod Ricard in other proceedings involving
Molson Breweries. In these affidavits, one could learn that S.E.G.M. is a French
corporation, constituted in 1975 and one hundred percent (100%) affiliated to
Pernod Ricard of which it is the exclusive worldwide licensee for the RICARD
trade-mark. It was Molson Breweries's argument before the Trial Division that
S.E.G.M., as licensee, could not be the applicant's predecessor in title as
claimed by Pernod Ricard in its application. In his decision, Mr. Justice Dubé
sided with Molson Breweries and concluded that Pernod Ricard's application
did not conform to paragraph 30(b) of the Trade-Marks Act (by naming an
entity that could not be predecessor in title), allowed the appeal and
rejected Pernod Ricard's application [reported at (1991) 40 C.P.R. (3d) 102
(F.C.T.D.)].
Pernod Ricard appealed the trial judge's findings and, in its decision of
November 23, 1995, the Federal Court of Appeal set aside the decision of the
trial division and restored the Registrar's decision. In the Court of Appeal's
opinion (Pratte J.A. with Décary and Chevalier JJ.A., concurring), an
application for the registration of a trade-mark cannot be said not to conform
to the requirements of paragraph 30(b) of the Trade-Marks Act for the sole
reason that the applicant has named, as one of his predecessors in title, a
person who has used the mark merely as a licensee of one the named
predecessors in title. Although the Court has stated that it is not an erroneous
affirmation to name as predecessor in title an entity who has used the mark
as a licensee (therefore expanding the pool of predecessors in title), it has not
specifically decided if a licensee must be named as predecessor in title.
In any event, the overcautious applicant who names as predecessor in title a
licensee who has simply used the applied for mark will not be penalized since
it might be argued that it is technically not required by paragraph 30(b), but
not forbidden either. Indeed, paragraph 30(b) does not require the listing of
licensees; however, providing this list will not jeopardize the application. The
Court of Appeal's decision signals that one must not adopt an overly
technical approach to refuse an application which otherwise conforms to all
other provisions of the Act.
Published at (1996), 10 W.I.P.R. 41under the title Licensee may be named
predecessor in title in trademark application.
© LEGER ROBIC RICHARD / ROBIC, 1996.
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