Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2016 TMOB 38

Date of Decision: 2016-02-29

IN THE MATTER OF A SECTION 45 PROCEEDING

[1]               This is a decision involving a summary expungement proceeding with respect to registration No. TMA560,168 for the trade-mark ZEPPELIN HINDENBURG, owned by Luftschiffbau Zeppelin GmbH.

[2]               The trade-mark ZEPPELIN HINDENBURG (the Mark) is registered for use in association with several types of goods and services. The statement of goods and services of the registration is reproduced in Schedule “A” to this decision.

[3]               For the reasons that follow, I conclude that the registration ought to be expunged.

The Proceeding

[4]               On February 4, 2014, the Registrar of Trade-marks sent a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) to Luftschiffbau Zeppelin GmbH (the Owner). The notice was sent at the request of Smart & Biggar (the Requesting Party).

[5]               The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with each of the goods and services specified in the registration, at any time between February 4, 2011 and February 4, 2014 (the Relevant Period). If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last used and the reasons for the absence of use since that date.

[6]               The definitions of use with respect to goods and services are set out in section 4 of the Act.

[7]               It is well established that the purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for clearing the register of “deadwood”. The criteria for establishing use are not demanding and an overabundance of evidence is not necessary. Nevertheless, sufficient evidence must still be provided to allow the Registrar to conclude that the trade-mark was used in association with each of the registered goods or services specified in the registration [see Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270]. Furthermore, mere statements of use are insufficient to prove use [see Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)].

[8]               In response to the Registrar’s notice, the Owner furnished the affidavit of Andreas Stroinski, Accounting Manager of the Owner, sworn on August 26, 2014.

[9]               Only the Requesting Party filed written representations. A hearing was not held.

The Owner’s Evidence

[10]           In his affidavit, Mr. Stroinski asserts that the Owner, through its licensee POINT tec Electronic GmbH (the Licensee), has sold watches in Canada in association with the Mark during the Relevant Period. Mr. Stroinski also asserts that under the licence prevailing between the Owner and the Licensee, the Owner has always controlled the character and quality of the goods and services in association with which the Mark is used, including watches.

[11]           Mr. Stroinski files two invoices issued during the Relevant Period by the Licensee to 10:10 Watches Inc., a Canadian distributor [Exhibits A‑3 and A‑4]. Mr. Stroinski asserts that it is the practice of the Licensee to cause invoices to accompany the watches at the time they are delivered to Canadian distributors or retailers.

[12]           Mr. Stroinski asserts that apart from the Mark appearing on the invoices, the Mark is affixed on the watches themselves as well as on the boxes or cases containing the watches. Mr. Stroinski files printouts from the Licensee’s website as well as promotional material used in Canada to show how the Mark was affixed on the watches themselves during the Relevant Period [Exhibits A‑5 and A‑6].

Analysis

[13]           In summary, the Requesting Party submits that the evidence does not show use of the Mark with any of the goods or services specified in the registration. In addition, and in the alternative, the Requesting Party submits that the evidence does not show use of the Mark as registered.

[14]           As shown by my review of the affidavit of Mr. Stroinski, there is no evidence whatsoever directed to any of the services specified in the registration.

[15]           Insofar as goods are concerned, the evidence provided by Mr. Stroinski only relates to the use of the Mark in Canada association with “watches”. However, “watches” is not included in the statement of goods specified in the registration. Finally, since the statement of goods references “toy watches”, I note that it is clear from the evidence that the watches sold in Canada in association with the Mark are adult wrist watches, not toy watches.

[16]           In view of the foregoing, I conclude that the Owner has not demonstrated use of the Mark in Canada, within the meaning of sections 4 and 45 of the Act, in association with any of the goods and services identified in the registration. Further, the affidavit of Mr. Stroinski does not put forward special circumstances to justify the absence of use. As these findings are determinative, it is not necessary to address the Requesting Party’s contention that the evidence does not show use of the Mark as registered.

Disposition

[17]           Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with section 45 of the Act, registration No. TMA560,168 will be expunged.

______________________________

Céline Tremblay

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

Schedule “A”

Statement of Goods and Services of Registration No. TMA560,168

GOODS:
(1) Paper, cardboard and goods made from these materials, namely address books, announcement cards, decals, appointment books, binders, book covers, book bindings, bookmarks, books, business cards, business forms, calendar desk pads, calendars, cardboard mailing tubes, cardboard cartons, colouring books, flash cards, address and shipping labels, sheet music, paper name badges, note books, wrapping paper, notepad for writing, postcards, posters, paper party decorations, paper napkins, paper doilies, paper place mats, paper hats, paper table cloths; printed matter, namely books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, magazines featuring characters from animated, action adventure, comedy and/or drama features, colouring books, activity books, posters, lithographs, decals, heat transfers, photographs, book covers, book marks, invitations; printed music books, newsletter, newspapers, printed awards and emblems, sketches, song books; stationery, namely writing paper, stickers, paper table cloths, paper table linens, paper table mats, paper table napkins, envelopes, notebooks, diaries, note cards, greeting cards, trading cards; adhesives for stationery or household purposes; typewriters; office requisites (except furniture), namely felt tips markers for highlighting, pen cases, pen holders, pen boxes, pencil boxes, pencil holders and pencil cases, pencil sharpeners, pencils, pens, business card holders, letter openers, desk pads; clothing, namely anorak, ascot tie, sun-top, socks, stockings panty hose, bibs not in paper, Bermuda shorts, bikini, blazer, blouses, windbreakers, sweat shirts, sweat pants, boas, body shirts, boleros, suspenders, jackets, wraps, swimming trunks, belts, shawls, sweaters, jumpers, shirts, blouses, collars, turtlenecks, wet suits for water skiing, jumps-suits, bathing suits, neckties, knickerbockers, vests, scarves, pantsuits, shoulder pads, stoles, detachable collars, ski pants or slims, gabardines, gloves, cardigans, dresses, raincoats, shin-pads, jerseys, jeans, skirts, culottes, kilts, kimonos, diapers of textile, leotards, capes, coats, mittens, bow ties, pants, trousers, overcoats, sarongs, parkas, bathrobes, pelerines, pelisses, ponchos, pullovers, pyjamas, smocks, dressing gowns, tuxedos, aprons, tunics, veils, underwear; footwear, namely pumps, boots, booties, slippers, shoes, ballet slippers, football shoes, ski boots, tennis shoes, rubbers, overshoes, espadrilles, loafers, gaiters, moccasins, sandals, sneakers, thongs; headgear, namely headbands, berets, bonnets, caps, bathing caps, hoods, hats, ear muffs; games, namely board games, pinball games, table tennis games, video and computer game cassettes and cartridges; play things, namely toy figures, toy gliders, toy guns, toy mobiles, toy modelling dough, toy rockets, toy swords, toy watches, plush toys, arts and paint kits, crayons, drawing pencils, paint brushes; gymnastic and sporting articles, namely tennis rackets, tennis balls, baseball bats, ice skates, skateboards, playground balls, soccer balls, baseballs, basketballs, baseball gloves, surfboards, swimboards for recreational use, swim fins, parallel bars, vaulting horses, horizontal bars.

SERVICES:
(1) Education, teaching and instruction, namely in the field of film production; film production, motion picture rental, namely video tape cassettes and digital video discs rental; musical performances, namely singing and playing musical instruments, performances at and from remote locations, concert performances, pre-recorded concerts, live concerts, singing and playing musical instruments on the radio and television; broadcast and television entertainment, namely radio, television and cable broadcasting, transmission of radio and television programs, motion picture film production and distribution; theatre performances; organisation of sport competitions; publication and issuing of books, journals and magazines.

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

No Hearing Held

Agents of Record

ROBIC                                                                                    For the Registered Owner

Smart & Biggar                                                                        For the Requesting Party