SECTION 45 PROCEEDINGS
TRADE-MARK: GENERATION
REGISTRATION NO.: 448,905
On February 10, 2003 at the request of Hofbauer Associates, the Registrar forwarded a Section 45 notice to Ther-A-Pedic Associates, Inc., A Corporation of New Jersey, the registered owner of the above-reference trade-mark registration.
The trade-mark GENERATION is registered for use in association with the following wares: “mattresses and box springs”.
Section 45 of the Trade-marks Act requires the registered owner of a 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. The relevant period in this case is any time between February 10, 2000 and February 10, 2003.
In response to the notice the registrant filed the affidavit of Alain Pedneault together with exhibits. Neither party filed a written argument and an oral hearing has not been requested.
In his affidavit, Mr. Pedneault states that he is an employee of Literie Giddings Ltée (hereafter referred to as “LG”). As such, he has access to all necessary information and documentation as it relates to LG. He states that LG has used the registered trade-mark in the normal course of trade in Canada in association with mattresses and box springs during the relevant period. He states that prior to, between February 10, 2000 and February 10, 2003 and still, LG has used the trade-mark in Canada in association with the registered wares. However, he explains that due to a fire that occurred on May 8th, 2003 at LG, evidence of the wares such as photographs, packaging, brochures or flyers bearing the trade-mark and that were in existence during the relevant period is not available. Even so, he states that he is able to file representative invoices and attaches as exhibit AP-1, AP-2 and AP-3 three invoices dated during the relevant period. These invoices show sales of “GENERATION” mattresses and box springs. The invoices also show sales of mattresses and box springs bearing other marks.
Lastly, Mr. Pedneault states that by virtue of a licence between LG and Ther-A-Pedic Associates Inc. (the registered owner), LG has been granted the right to sell GENERATION products in Canada since July 15, 1994. He states that by virtue of this license Ther-A-Pedic Associates Inc. controls the quality and character of the mattresses and box springs sold under the GENERATION trade-mark in Canada.
From the evidence furnished I find it can be concluded that sales in Canada of the registered wares were made during the relevant period. The main issue in this case is whether the trade-mark was associated with the wares in a manner complying with Section 4(1) of the Act.
Here Mr. Pedneault has explained that the fire has made it impossible for the registrant to furnish photographs of products or packaging or brochures bearing the trade-mark that existed during the relevant period. In the present circumstances the registrant could have described in its affidavit the manner the trade-mark appeared on the wares or the manner it was associated with the wares at the time of transfer. The registrant could also have furnished evidence dated subsequent to the relevant period if the registrant had confirmed that such was typical of the manner the trade-mark was associated with the wares during the relevant period.
The registrant has not done so here. However, the evidence does show that the trade-mark appears in the body of the invoices beside the description of the wares. The question is whether the invoices provided the required notice of association between the trade-mark and the wares at the time of transfer. I am prepared to conclude based on the invoice dated May 4, 2000 that the purchaser of the wares listed on such invoice was provided with the proper notice. The invoice indicates a shipment date that is identical to the invoice date. Further, the invoice was sent to the same company as to whom the wares were shipped. Consequently, I find the present case is distinguishable from Riches, McKenzie & Herbert v. Pepper King Ltd. 8 C.P.R. (4th) 471 (F.C.T.D) and I conclude that the invoice would have provided the purchaser with the notice of association required by Section 4(1) of the Act.
Concerning the sale by the licensee, I accept based on the statements contained in the affidavit, that the use accrued to the registrant. Based on the above findings, I conclude that the wares “mattresses and box springs” ought to be maintained.
Registration No. 448,905 will be maintained in compliance with the provisions of Section 45(5) of the Act.
DATED AT GATINEAU, QUEBEC, THIS 31ST DAY OF AUGUST 2005.
D. Savard
Senior Hearing Officer
Section 45 Division