SECTION 45 PROCEEDINGS
TRADE-MARK: ICE CAP
REGISTRATION NO: TMA 615,792
At the request of Unilever Canada Inc. (the “requesting party”), the Registrar forwarded a notice under section 45 of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”) on November 27, 2007 to Brookfield Ice Cream Limited, the registered owner of the above referenced trade-mark (the “registrant”).
The trade-mark ICE CAP is registered for use in association with “ice cream, frozen novelties, frozen confections, frozen ice”.
Section 45 of the Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and/or services listed on the registration at any time within the three year period immediately preceding the date of the notice, and if not, the date when it was last in use and the reason for the absence of use since that date. In this case the relevant period for showing use is any time between November 27, 2004 and November 27, 2007.
Use in association with wares is set out in subsection 4(1) of the Act:
4(1) A trade-mark is deemed to have been 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.
In response to the Registrar’s notice, the trade-mark owner furnished the affidavit of Bernard Sparrow, Vice President of Administration for Brookfield Ice Cream Limited. Only the registrant filed written submissions; an oral hearing was not requested.
Mr. Sparrow states that he is responsible for the financial matters and management of the registrant. Mr. Sparrow provides that in the usual and ordinary course of business, the registrant maintains records relating to the conduct of its business with Mr. Sparrow having full access to these records.
Mr. Sparrow describes Brookfield Ice Cream Limited as being in the business of producing and selling dairy products, including ice cream and frozen confectionary products to customers in Canada. Mr. Sparrow states that during the relevant period, Frosty Friends Ice Cream – Crème Glacée de Frosty Friends was a trade name and trade-mark used by Brookfield Ice Cream Limited. The registrant also operated its business in Canada during that time under the trade name Brookfield Dairy Group.
In his affidavit, Mr. Sparrow states that during the relevant period, Brookfield Ice Cream Limited used the subject mark in Canada “in association with frozen novelties, frozen confections, and frozen ice”, which he defines as the “ICE CAP Wares”. He explains that the mark was displayed on the packaging of individual serving-sized portions of the “ICE CAP Wares”, a representative specimen of which is attached as Exhibit A. Mr. Sparrow adds that the individually wrapped serving-sized portions of the “ICE CAP Wares” were also packaged in boxes displaying the mark “for sale to retailers for resale to the Canadian public until late 2004”. To corroborate this statement, Mr. Sparrow attaches as Exhibit B a representative copy of said box. Finally, Mr. Sparrow states that “ICE CAP Wares” were distributed and sold in Canada during the relevant period for resale to Canadian consumers. To corroborate this, he attaches as Exhibit C copies of four invoices dated within the relevant period showing the sale of ICE CAP. Although Mr. Sparrow did not indicate that the invoices actually accompanied the wares at the time of transfer, in view that the invoices indicate the same entity as both the “bill to” and “ship to” entity, I am prepared to infer that the invoices accompanied the delivery of the ICE CAP wares at the time of transfer (see Riches, McKenzie & Herbert v. Kom Networks Inc., 51 C.P.R. (4th) at 69).
In my view, the remaining issues to be decided in this case are as follows: 1) Whether the registrant has demonstrated use of the mark as registered; and 2) Whether the registrant has demonstrated use in association with each of the wares.
Addressing first the issue of deviation, where the mark as used deviates from the mark as registered, the appropriate test to be applied is to compare the mark as registered and the mark as it is used and determine whether the differences between the two are so inconsequential that an unaware purchaser would likely infer that both, despite the differences, identify goods having the same origin (Canada (Registrar of Trade-marks) v. Cie Internationale pour l’informatique CII Honeywell Bull (1985), 4 C.P.R. (3d) 523 (F.C.A.) at 525. In deciding this, it is necessary to determine whether the “dominant features” of the mark have been preserved (Promafil Canada Ltée v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59 (F.C.A.).
In the packaging provided in the present case, the words ICE CAP appear in a curved designed format, beside which appears a dot followed by the word GLAÇON in the same curved design format. The lettering for both words is consistent in size and font, and the design of a layer of snow appears above both words. What appears to be the back of the representative packaging provided for Exhibit B, however, shows the mark ICE CAP alone, followed by a list of ingredients in English, and the word GLAÇON alone, preceded by a separate list of ingredients in French. Further, as noted earlier, the mark ICE CAP appears alone in the body of the invoices attached as Exhibit C.
In my view, the issue of whether or not the registrant has shown use of the mark as registered in the present case is borderline. While the front of the packaging of the wares may represent more than a minor deviation from the registered mark, in view that the term ICE CAP appears alone on the back of the packaging attached as Exhibit B, and the fact that the mark appears as registered on the invoices of sale, I am able to conclude that the requirements of s. 4(1) of the Act have been met. In reaching this conclusion, I am mindful that the purpose of Section 45 is to clear deadwood from the register.
The next issue to be decided is whether the registrant has demonstrated use in association with each of the wares. Section 45 makes it clear that use must be shown in association with each of the wares specified in the registration (John Labatt Ltd. v. Rainier Brewing Co. (1984), 80 C.P.R. (2d) 228 (F.C.A.)). Further, each of the wares is interpreted as being distinct from the others (see Sharp Kabushiki Kaisha v. 88766 Canada Inc. (1997), 72 C.P.R. (3d) 195 (F.C.T.D.) at 200). Therefore, where related items of the same general class are listed in the statement of wares, then it is not sufficient for the registrant to show use of only one of the wares to maintain registration of all of the items.
In the present case, while Mr. Sparrow asserts that the registrant has used the mark in association with frozen novelties, frozen confections and frozen ice (which he refers to as the “ICE CAP Wares”), he has only provided evidence of use of the mark in association with “ice pops”. The evidence of use of the mark in association with “ice pops” therefore cannot be used to maintain more than one of the registered wares.
The issue then becomes which registered ware should be maintained. The registrant is not clear as to what the ordinary commercial term is for an “ice pop”. Arguably, any of the registered wares (excluding ice cream) would be broad enough to include this product. It could also be inferred from Mr. Sparrow’s reference to frozen novelties, frozen confections and frozen ice collectively as “the ICE CAP wares” that the registrant also considered any of the registered wares broad enough to include ice pops. As noted above, however, in order for each of the wares to be maintained on the register, it was up to the registrant to have shown use of the mark with other products that could fall under each of the other listed registered wares. In view that Mr. Sparrow states at the beginning of his affidavit that the registrant is in the business of producing and selling dairy products, including ice cream and frozen confectionary products to customers in Canada, and in view that use of the mark has been shown in association with “ice pops”, I am prepared to conclude from the evidence as a whole that use of the mark has been shown in association with “frozen confections”. I would also add, however, that the term “frozen confections” is probably broad enough to also include frozen ice and frozen novelties.
With respect to the ware “ice cream”, given the absence of any evidence concerning “ice cream” and the fact that the registrant has not provided any special circumstances to excuse the absence of use, “ice cream” must be deleted from the statement of wares.
In view of the foregoing, I have concluded, but not without difficulty, that the evidence shows use of the mark in association with “frozen confections”. Accordingly, registration No.: TMA 615,792 for ICE CAP ought to be amended by deleting “frozen novelties, frozen ice, ice cream” in compliance with section 45(5) of the Act.
DATED AT GATINEAU, QUEBEC, THIS 13th DAY OF MAY, 2009.
C.R. Folz
Member,
Trade-marks Opposition Board