TRADUCTION/TRANSLATION

SECTION 45 PROCEEDINGS

TRADE-MARK: SLEEVER

REGISTRATION NO. TMA275692______

On September 1, 2006, at the request of Aesus Systems Inc. (the “requester”), the Registrar sent a notice pursuant to section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), to Sleever International Company (the “owner”), the owner of the trade-mark covered by the above-referenced registration.

The SLEEVER trade-mark (the “Mark”) is registered on the basis of use in association with thermo-shrink plastic film for wrapping and decorating receptacles, and machines and equipment for placing and removing thermo-shrink plastic film around receptacles (the “Wares”).

Section 45 of the Act requires the registered owner of the Mark to show whether the trade-mark was in use in Canada in association with each of the Wares and/or services listed on the registration at any time during the three-year period immediately preceding the date of the notice, and if not, to provide the date when it was last in use and the reason for the absence of use since that date. The relevant period in this case is between September 1, 2003, and September 1, 2006.

In response to the notice, the owner provided the affidavit of Eric Fresnel together with exhibits EF-1 and EF-5. Both parties filed written submissions. An oral hearing was not requested.

The case law tells us that there is no need to show use of the Mark by evidentiary overkill and that the purpose of section 45 proceedings is to remove the “deadwood” from the register. [See Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980) 53 C.P.R. (4th) 62.]

In his affidavit, Mr. Fresnel described himself as the chairman of the owner’s board of directors since 2003. He is also president of Sleever International Inc. (Sleever Canada), a Canadian affiliate wholly owned by the owner since 2005.

He alleged that the owner of the Mark manufactures the thermo-shrink plastic film for wrapping and decorating receptacles in the form of empty spools in France and sends them to Sleever Canada, its exclusive licensee. Sleever Canada then transforms the thermo-shrink plastic film by printing, sealing and finishing it, according to its Canadian customers’ needs, and affixes the Mark on the opposite side of the film. He filed samples of four thermo-shrink plastic labels transformed this way and alleged that they bear the Mark. As pointed out by the requesting party in its written argument, I note that the samples filed do not bear the Mark or reference to SLEEVER INTERNATIONAL, a reference that will be discussed a little later in this decision.

He filed a sample of a box in which the thermo-shrink plastic film is placed when shipped to the customers. He alleged that these boxes bear the SLEEVER Mark within the expression “Sleever International.”

He provided Canadian annual sales figures for the period from 2004 to September 2006 for thermo-shrink plastic film bearing the Mark, which totalled over $17 million. He filed samples of invoices issued by Sleever Canada to Canadian customers during the relevant period. In addition to the corporate name Sleever International Inc., we find on each one of the invoices the reference to SLEEVER INTERNATIONAL printed under a graphic. The word “international” is barely legible under the word “Sleever.”

Mr. Fresnel explained how the owner controls the quality of the Wares bearing the Mark and sold by Sleever Canada.

As regards the machines and equipment bearing the Mark, he explained that it appears on these machines and he filed three photographs, each depicting a different machine. On one photograph, we find a graphic with the word “Sleever” below it, and under that, the word “International.” On the two other photos, the words “Sleever” and “International” are placed to the immediate right of the graphic.

Mr. Fresnel alleged that the owner is marketing the machines and equipment in Canada through his Canadian distributer and licensee, Sleever Canada. He also provided the Canadian sales figures for the period from 2003 to 2005 for machines and equipment bearing the Mark, for a total of more than €3 million. He filed two invoices issued to Canadian customers by Sleever Canada during the relevant period.

It should be remembered that Mr. Fresnel’s affidavit must be read as a whole and that the allegations must not be considered individually. Accordingly, the requester claims that there is no evidence that the Wares sold in Canada were delivered in the boxes, such as the one in the picture filed. Moreover, the affiant filed a sample of the Wares, a photograph of a box in which the Wares are delivered to the Canadian customers and invoices proving the sale of the Wares during the relevant period. This evidence is, in itself, sufficient evidence of use of a trade-mark in association with Wares. I will return later on to the matter of whether the evidence on record shows the use of the Mark or another trade-mark.

The requester alleged that there is no evidence that the sales figures provided by Mr. Fresnel in paragraph 9 of his affidavit concern the sale of plastic film in Canada in association with the Mark. The wording of paragraph 9 of his affidavit is very clear on this subject:

[TRANSLATION] “During the years 2004 to 2006, the retail sales figures in Canada for SLEEVER brand thermo-shrink plastic film have totalled more than...”

There is therefore no reason to respond to this argument of the requester.

The requester submitted that the invoices filed by Mr. Fresnel do not constitute evidence of use of the Mark because there is no evidence on record that the invoices accompanied the Wares described in the invoices at the time of their delivery. Moreover, these invoices were not filed to prove use of the Mark in association with the Wares because they appeared on these invoices, but rather to show the sale of the Wares placed in the boxes that bear the Mark.

The requester pointed out that there is no evidence of formal licence between the owner and Sleever Canada. According to the requester, the use of the language found in section 50 of the Act is not, in itself, sufficient to demonstrate that the use of the Mark by an entity other than the owner would be to its benefit. In Bereskin & Parr v. Fairweather (2006), 58 C.P.R. (4th) 50, 301, Madam Justice Mactavish declared:

51     The respondent questions whether the use of the TARGET APPAREL mark by International Clothiers Inc. can be attributed to Fairweather, in the absence of there having been a formal licence agreement between the two companies that would trigger the deeming provisions of section 50(1) of the Trade-marks Act. This subsection deems use of a mark by a licensee to be use by the registered owner, provided that the owner has direct or indirect control over the character or quality of the wares in question.

52    There is no requirement that a license agreement be in writing: see TGI Friday’s of Minnesota Inc. v. Registrar of Trade-marks, [1999] F.C.J. No. 682, (F.C.A). I have referred earlier in this decision to the close relationship between Fairweather and International Clothiers Inc. In all of the circumstances, I am satisfied that an inference can reasonably be drawn that International Clothiers Inc.’s use of the Mark was made under an arrangement with Fairweather that was tantamount to an oral licence, and that the Mark remained under the effective control of Mr. Benitah and Fairweather.

These statements are applicable to our case given the close relationship between the owner and Sleever Canada.

Regarding the sale of machines and equipment, the requester alleges that there was no evidence that these Wares were sold in Canada during the relevant period. However, paragraphs 11 to 15 state that such Wares were sold in Canada in association with the Mark during the relevant period by Sleever Canada, the licensee of the owner. Invoices from the licensee, Sleever Canada, issued during the relevant period, were filed and refer to machines or equipment.

The requester repeated the same arguments set out above regarding evidence of the use of the Mark in association with machines and equipment through the production of invoices bearing the Mark. My comments above regarding this argument as part of my analysis of the evidence of use of the Mark in association with thermo-shrink plastic film are equally applicable here.

The only matter left to decide is whether the owner has shown evidence of use of the Mark in association with the Wares or whether it entails the use of another trade-mark. Variations of the Mark used by the owner are the addition of the word “International” next to the word “Sleever” and a graphic inside a black rectangle containing two concentric ellipses and two horizontal lines. I do not think that these additions constitute a modification of the dominant component of the Mark. I think that the dominant component is still the word “Sleever” and, therefore, the consumer of the Wares would not be misled by the use of this variation by believing that the Wares sold in association with this modified Mark would come from a source other than the owner of the Mark [see Promafil Canada Ltd. v. Munsingwear Inc. (1992), 44 C.P.R. (3d) 59].

I find that the owner discharged its onus of proving the use of the Mark during the relevant period in association with the Wares.

Having been delegated authority by the Registrar of Trade-marks under subsection 63(3) of the Act, registration No. TMA275692 will be maintained on the register in accordance with subsection 45(5) of the Trade-marks Act.

SIGNED AT BOUCHERVILLE, QUEBEC, THIS 27th DAY OF MARCH 2009.

Jean Carrière

Member, Trade-marks Opposition Board