Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2016 TMOB 172

Date of Decision: 2016-10-24

IN THE MATTER OF A SECTION 45 PROCEEDING

[1]               At the request of Osler, Hoskin & Harcourt LLP (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on February 5, 2015 to JCorp Inc. (the Owner), the registered owner of registration No. TMA325,157 for the trade-mark EAGLE DESIGN (the Mark), shown below:

[2]               The Mark is registered for use in association with the following goods:

Jeans, shirts, underwear, socks, T-shirts, jackets, sweaters for men, ladies and children.

[3]               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 goods specified in 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 such use since that date.  In this case, the relevant period for showing use is February 5, 2012 and February 5, 2015.

[4]               The relevant definition of “use” in association with goods is set out in section 4(1) of the Act:

[5]               It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [see Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is quite low [see Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [see Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the goods specified in the registration during the relevant period.

[6]               In response to the Registrar’s notice, the Owner furnished the affidavit of Jack Wiltzer, Chief Operating Officer of the Owner, sworn on April 22, 2015 in Montreal, Quebec. Both parties filed written representations; a hearing was not requested.

The Evidence

[7]               In his affidavit, Mr. Wiltzer explains that the Owner imports, manufactures, sells and distributes men’s and women’s wearing apparel to retail customers across Canada. In particular, he states that the Owner sold men’s shirts, T-shirts and jackets in association with the Mark to retail outlets in Canada during the relevant period. In this respect, he attests that the Mark was displayed on hang tags attached to such clothing items sold to Walmart Canada.

[8]               In support, Mr. Wiltzer provides the following exhibits attached to his affidavit:

•         Exhibit 2 consists of six representative invoices showing sales of various clothing items from the Owner to Walmart Canada. The invoices are all dated within the relevant period. Each invoiced item is identified with a short description and a “style number”.  Although the Mark does not appear on the invoices, Mr. Wiltzer identifies particular items as being men’s shirts, T-shirts and jackets sold in association with the Mark.

•         Exhibit 3 consists of a sample hang tag which Mr. Wiltzer attests is representative of the hang tags attached to the shirts, T-shirts and jackets identified in Exhibit 2. The hang tag displays the Mark.

Analysis

[9]               In its representations, the Requesting Party notes that the Owner did not provide any evidence of use of the Mark in association with any ladies and children’s clothing, nor in association with men’s jeans, underwear, socks, and sweaters. Indeed, Mr. Wiltzer’s affidavit is silent with respect to such goods and, in its representations, the Owner acknowledges that it did not use the Mark in association with these clothing items during the relevant period.

[10]           Accordingly, I am not satisfied that the Owner has demonstrated use of the Mark in association with clothing for ladies and children, or in association with jeans, underwear, socks and sweaters for men within the meaning of sections 4 and 45 of the Act.  Furthermore, there is no evidence of special circumstances excusing such non-use before me. The registration will be amended accordingly.

[11]           The Requesting Party further argues that the registration should be expunged in its entirety because the evidence submitted does not satisfactorily establish use of the Mark with respect to the remaining registered goods, namely shirts, T-shirts and jackets for men.

[12]           First, the Requesting Party argues that Mr. Wiltzer’s affidavit fails to provide any evidence of the Owner’s normal course of trade. It notes that the Federal Court has held that “the Registrar cannot make assumptions and cannot be expected to know the nature of the business of the owners of any trade-mark” [citing SC Johnson Inc v Registrar of Trade-marks (1981), 55 CPR (2d) 34 (FCTD) at paragraph 5].

[13]           In response, the Owner submits in its written representations that its normal course of trade is sufficiently explained in the affidavit. Indeed, Mr. Wiltzer clearly explains that the Owner is in the business of selling clothing to retail customers in Canada. In addition, Mr. Wiltzer provides invoices evidencing sales of clothing to Walmart Canada. As such, I am satisfied that any demonstrated transfers were in the normal course of trade within the meaning of section 4(1) of the Act.

[14]           Second, the Requesting Party submits that the exhibited invoices do not constitute use of the Mark. As noted by the Owner, however, it did not furnish the invoices in an attempt to establish use of the Mark per se, but rather to demonstrate transfers and sales of the particular clothing items.

[15]           Finally, the Requesting Party argues that “clear and convincing evidence of how the Trade-mark is used in association with registered goods is conspicuously absent.” For example, it notes that the Owner did not furnish any photographs of clothing items bearing the exhibited hang tags.

[16]           In response, the Owner submits that the evidence provided is sufficient to establish use of the Mark. Indeed, all that is required is that a registered owner establish a prima facie case of use of its trade-mark [see Brouillette Kosie Prince v Great Harvest Franchising Inc, 2009 FC 48, 77 CPR (4th) 247]. No particular kind of evidence is required [see Lewis Thomson & Sons Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)]. While the Owner did not furnish photographs showing the hang tag attached to any particular clothing item, this was not a necessity. Here, in combination with Mr. Wiltzer’s sworn statements, the exhibited invoices and sample hang tag constitute sufficient evidence in this case.

[17]           Accordingly, I am satisfied that the Owner has demonstrated use of the Mark in association with shirts, T-shirts and jackets for men within the meaning of sections 4(1) and 45 of the Act.

Disposition

[18]           In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be amended to delete the following from the statement of goods: “Jeans, … underwear, socks, … sweaters …, ladies and children”.

[19]           The amended statement of goods will read as follows: “Shirts, T-shirts, jackets for men”.

______________________________

Andrew Bene

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

No Hearing Held

AGENTS OF RECORD

Robinson Sheppard Shapiro S.E.N.C.R.L. / L.L.P.                For the Registered Owner

Osler, Hoskin & Harcourt, LLP                                              For the Requesting Party