LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 25
Date of Decision: 2016-02-09
[UNREVISED ENGLISH
CERTIFIED TRANSLATION]
IN THE MATTER OF A SECTION 45 PROCEEDING
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Sim & McBurney |
Requesting
Party |
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and |
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Les Espaces Memoria Inc.
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Registered Owner |
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TMA786,566 for COLLECTION MEMORIA |
Registration |
The record
[1] On February 4, 2014 at the request of Sim & McBurney (the Requesting Party), the Registrar sent the notice stipulated in section 45 of the Trade-marks Act, RSC 1985, c T-13 (the Act) to Les Espaces Memoria Inc. (the Registered Owner), registered owner of registration No. TMA786,566 for the COLLECTION MEMORIA trade-mark (the Mark).
[2] This notice enjoined the Registered Owner to show that its Mark had been used in Canada, at any given time between February 4, 2011 and February 4, 2014 (the Relevant Period), in association with each of the services specified in the registration, i.e. [Translation]
(1) Cinerary urns, reliquaries, crosses, original artworks, namely sculptures, paintings, photographs, works on paper, silkscreens and lithographs; antique furniture, namely desks, chairs, buffets, armchairs, stools, settees, sofas, divans, benches, commodes, wardrobes, shelves, bookcases, secretaries, chests; books, bookmarks, registers, reading lights, thank you and condolence cards, lamps, frames (hereinafter sometimes collectively referred to as the Goods)
(1) Documentation centre for consultation of books, musical works, films, research results, compilation and archives of text excerpts on death and mourning, genealogy service.
(Hereinafter sometimes collectively referred to as the Services).
And, in the absence of use, the date when the Mark had last been used and the reason for its absence of use since this date.
[3] In response to the Registrar’s notice, the Registered Owner filed an affidavit submitted by its President, Jocelyne Dallaire Légaré, on September 4, 2014.
[4] Only the Registered Owner filed written representations. Both parties were represented at a hearing. This case was heard jointly with the case concerning registration No. TMA647,454 for the MEMORIA trade-mark. My decision in this other case is rendered separately.
Analysis
[5] It is well established that the purpose and scope of s. 45 of the Act is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register; this is why the applicable test is not very stringent. As stated by Judge Russell in Uvex Toko Canada Ltd v Performance Apparel Corp (2004), 31 CPR (4th) 270 (FC), on p. 282:
We know that the purpose of s. 45 proceedings is to clean up the “deadwood” on the register. We know that the mere assertion by the owner that his trade mark is in use is not sufficient and that the owner must “show” how, when and where it is being used. We need sufficient evidence to be able to form an opinion under s. 45 and apply that provision. At the same time, we need to maintain a sense of proportion and avoid evidentiary overkill. We also know that the type of evidence required will vary somewhat from case to case, depending upon a range of factors such as the trade-mark owner’s business and merchandising practices.
[6] In the present case, section 4 of the Act defines use in connection with products and services as follows:
(1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[7] This brings me to review the evidence filed by the Registered Owner in light of the parties’ representations.
Ms. Dallaire Légaré's affidavit
[8] Ms. Dallaire Légaré explains that the Registered Owner has been a family business for four generations, operating in the funeral field, present throughout the territory of Metropolitan Montreal, Laval and Repentigny, with a dozen branches, complexes and a mausoleum [paragraph 6].
[9] Ms. Dallaire Légaré specifies that the Registered Owner was founded over 80 years ago and, since at least 2003, has used the "MEMORIA" mark in association with a vast line of goods and services in the funeral field. She affirms that, constantly renewing the line of goods and services it offers, and continually broadening the scope of its activities, the Registered Owner, in 2011, launched new goods and services related to the funeral field in association with the Mark [paragraphs 7 and 8].
[10] Ms. Dallaire Légaré affirms that, in the normal course of business, the Goods are sold and the Services are offered at the Registered Owner's branches and funeral complexes, and have been offered at all times during the relevant period. Under Exhibit JDL-2, she files excerpts from the Registered Owner's website, www.memoria.com (hereinafter the "Memoria Website"), listing the Registered Owner's branches and funeral complexes, at which the Goods and Services are offered in Canada [paragraph 9].
[11] In paragraphs 10 to 18 of her affidavit, Ms. Dallaire Légaré then describes, with supporting exhibits, the Goods in association with which the Mark was used during the relevant period. She does the same for the Services in paragraphs 19 to 21 of her affidavit.
[12] The Requesting Party essentially makes the following arguments:
i. in general, the evidence does not prove the use of the Mark as such, but rather the "MEMORIA" mark or the "Alfred Dallaire | MEMORIA" "composite" mark;
ii. if there is any evidence of use, it does not prove the use of the Mark in association with each of the Goods;
iii. there is no evidence on the use of the Mark in association with the Services; and
iv. the evidence does not prove the existence of special circumstances excusing the failure to use the Mark during the relevant period.
[13] I will examine each of these arguments in turn.
i. Does the use of the "MEMORIA" mark or the "Alfred Dallaire | MEMORIA" mark constitute a use of the Mark?
[14] Except when otherwise indicated below in point ii, the supporting exhibits filed by Ms. Dallaire Légaré for the purposes of proving the use of the Mark in association with the Goods and Services, mostly refer to "Alfred Dallaire | MEMORIA", as follows:
[15] Some also refer simply to "MEMORIA".
[16] I agree with the Requesting Party that such uses do not constitute a use of the Mark as registered.
[17] The Mark is composed of two elements, namely the words "COLLECTION" and "MEMORIA". Although the word "MEMORIA" can be qualified as intrinsically more distinctive than the word "COLLECTION", the word "COLLECTION" remains an important element of the Mark, in that it introduces the word "MEMORIA" and describes its context. The abandonment of this word means that the Mark, as registered, cannot be recognized as such when the Registered Owner uses "Alfred Dallaire | MEMORIA" or simply "MEMORIA". [By analogy, see the cases of Borden Co v Shenzhen Taitai Pharmaceutical Industry Co, 2006 CarswellNat 3685 (TMOB), in which the Registrar considered that the use of the word EAGLE (without the word "BRAND"), was not equivalent to the use of the EAGLE’S BRAND mark; and Vanity Fair Inc v Manufacturier de Bas de Nylon Doris Ltée, 1999 CarswellNat 3393 (TMOB), in which the Registrar considered that the use of the marks SECRET, HER CHOICE SON CHOIX, SECRET FULL SUPPORT and/or SECRET SOUTIEN TOTAL, was not equivalent to use of the SUPPORT SECRET mark].
[18] I will add, in conclusion on this point, that the Registered Owner made no representation on this question in its written representations, having indicated, moreover, during the hearing, that it relied on the Registrar's assessment on this matter.
ii. If there is any evidence of use, does it prove the use of the Mark in association with each of the Goods?
[19] I will now consider in more detail the Registered Owner's evidence in association with the Goods.
Crosses and reading lights
[20] As conceded by the Registered Owner's agent during the hearing, Ms. Dallaire Légaré's affidavit makes absolutely no mention of crosses and reading lights, except for their mention in the statement of Goods and Services covered by this registration, reproduced in full in the affidavit.
[21] I thereby conclude that the use of the Mark during the relevant period was not proved in association with these goods.
Books, bookmarks, registers, thank you and condolence cards, lamps and frames
[22] Regarding Books, bookmarks, registers, thank you and condolence cards, lamps and frames, Ms. Dallaire Légaré relies on excerpts from the Memoria Website showing these goods, under Exhibit JDL-4, and on reprints of computer statements attesting to invoices dating from the years 2011 to 2013 under Exhibit JDL-7, referring to the sale of some of these products.
[23] However, none of the excerpts under JDL-4 refers directly or indirectly to the Mark. At most, they refer to "Alfred Dallaire | MEMORIA".
[24] For invoices under JDL-7, some refer to "bookmarks / MEMORIA *Collection Memoria*"; a "*Collection Memor personalized register service"; a "*Collecti personalized testimonial book service"; a "memory card postcard / MEMORIA *Collection"; a "personalized lamp / MEMORIA *Collection Memoria", and "thank you cards / MEMORIA *Collection Memor" [All Translations] I find these references ambiguous, in that they seem to pertain more to the MEMORIA mark than to the Mark. Moreover, there is no indication to the effect that these invoices accompanied the goods in question at the time of their transfer of ownership, such as that the delivery notice required in the sense of section 4(1) had been given.
[25] In conclusion, I find the evidence filed by Ms. Dallaire Légaré insufficient on the whole to conclude the use of the Mark in association with the book, bookmarks, registers, thank you and condolence cards, lamps and frames.
Cinerary urns and reliquaries
[26] In support of her affidavit under Exhibit JDL-5, Ms. Dallaire Légaré files photographs of display stands positioned next to urns and reliquaries in the Registered Owner's branches and funeral complexes. She affirms that the Mark, as well as the name of the Goods, appear on each of the display stands positioned next to each urn and each reliquary sold at the Registered Owner's branches and funeral complexes [paragraph 12].
[27] Exhibit JDL-5 consists of four copies of display stands, each showing the use of "Collection MemoriaMC" in the bottom left-hand corner of the display stand, and at the centre, the description of the exhibited reliquary or urn with a model/reference number.
[28] The urns and reliquaries are also represented in certain sections of the Memoria Website under Exhibits JDL-3 and 6. Ms. Dallaire Légaré describes the excerpts from the Memoria Website filed under JDL-6, as illustrative of the manner in which the Registered owner sells the Goods via the Memoria Website, including during the relevant period.
[29] Ms. Dallaire Légaré also refers to the invoices under JDL-7, illustrating the sale of some of the Goods, including urns and reliquaries.
[30] The Registered Owner submits that the display stands described above constitute acceptable evidence of use within the meaning of section 4(1) of the Act, on the ground they provide notice of association between the Mark and the urns and reliquaries thus exhibited.
[31] I agree.
[32] Indeed, I find the evidence submitted by Ms. Dallaire Légaré sufficient on the whole to prove the use of the Mark in association with urns and reliquaries during the relevant period.
[33] I agreed with the Registered Owner that the display stands under JDL-5 give sufficient notice of association within the meaning of the Act between the Mark and the urns and reliquaries offered for sale at its branches and funeral complexes. These display stands are affixed directly to the base of the urns and reliquaries thus exhibited, so as to associate the Mark with each of these goods for the purposes of their transfer of ownership [see Riches, McKenzie & Herbert LLP v Parissa Laboratories Inc (2006) 59 CPR (4th) 219 (TMOB)].
[34] The excerpts from the Memoria Website under JDL-3 also corroborate the existence of urns and reliquaries marketed in association with the Mark. More specifically, these excerpts include several photographs of urns and reliquaries, all accompanied by the words "COLLECTION MEMORIAMC" at the bottom of each photograph.
[35] Although the Registered Owner has not provided evidence, as such, of transactions executed via its website, the fact remains that Ms. Dallaire Légaré affirms in her affidavit that the urns and reliquaries are offered for sale, not only at its branches and funeral complexes, but also via its website; Exhibits JDL-3 and 6 indicate, in particular, that it is possible to order the urns and reliquaries from the Registered Owner by contacting it [Translation] "by phone at […] or by email […]".
[36] The copies of invoices under JDL-7 corroborate Ms. Dallaire Légaré's affirmations to the effect that urns and reliquaries were sold during the relevant period. The fact these invoices do not expressly mention that these are COLLECTION MEMORIA urns and reliquaries is not sufficient to challenge the use of the Mark in association with urns and reliquaries, especially since I note that the urns and reliquaries are identified on the invoices by a model/reference number and one of these numbers (U-995-01) corresponds to one of the numbers describing a [Translation] "hand-sculpted stone urn" from "COLLECTION MEMORIAMC" on the Memoria Website.
Artworks and antique furniture
[37] For all the products described as:
original artworks, namely sculptures, paintings, photographs, works on paper, silkscreens and lithographs (hereinafter sometimes collective referred to as the "Artworks")
and
antique furniture, namely desks, chairs, buffets, armchairs, stools, settees, sofas, divans, benches, commodes, wardrobes, shelves, bookcases, secretaries, chests (hereinafter sometimes collectively referred to as the "Furniture")
Ms. Dallaire Légaré indicates in paragraphs 16 to 18 of her affidavit that [Translation]:
16. […] the [Registered Owner] submits in good faith that it has not found an invoice or a computerized statement attesting to transactions, during the [r]elevant [p]eriod, for these goods, even though the Artworks and the Furniture associated with the Mark had actually been sold, during the [r]elevant [p]eriod, in Canada.
17. Indeed, the Artworks and the Furniture associated with the Mark were available at all times for sale in Canada during the [r]elevant [p]eriod, at the funeral complexes and branches of the [Registered Owner]. Since these are unique objects of a certain value, these goods are not sold on a regular basis.
18. As a non-exhaustive illustration of the Artworks and Furniture associated with the Mark, during the [r]elevant [p]eriod in Canada, I am filing photographs of some of said goods, particularly sculptures, paintings, shelves and tables, as Exhibit JDL-8 in support of my affidavit. Each of these goods is available at the branches of the [Registered Owner], accompanied by a display stand showing Mark.
[38] This is all of the evidence regarding these goods.
[39] In reviewing the photographs under JDL-8, I note that they indeed show sculptures and paintings accompanied by small display stands mentioning "COLLECTION MEMORIA". However, the photographs of tables and shelves do not correspond to "antique furniture" (as identified in the statement of the Goods), but modern style glass furniture.
[40] Although I agree with the Registered Owner that the absence of invoices attesting to the sale of Artworks and Furniture is not fatal in itself, I find the evidence filed by Ms. Dallaire Légaré to be insufficient on the whole to conclude the use of the Mark in association with each of the goods listed in the registration under the "artworks" category and all of those listed in the "antique furniture" category.
[41] I note a certain ambiguity when Ms. Dallaire Légaré mentions in paragraph 17 of her affidavit that [Translation] "these goods are not sold on a regular basis". Should it thereby be understood that some of these goods were not sold during the relevant period?
[42] Moreover, instead of filing several photographs of paintings and sculptures under JDL-8, I find that the Registered Owner should have filed photographs of each of the items falling into the "artworks" and "antique furniture" categories, or at least a more representative sample of the diversity of the goods in question that were offered for sale during the relevant period, especially since they are not particularly numerous.
[43] To summarize, I conclude that the use of the Mark was not proved during the relevant period in association with all of the products falling into the "artworks" and "antique furniture" categories, except for painting and sculptures.
iii. Has the use of the Mark been proved in association with the Services?
[44] The only evidence presented by Ms. Dallaire Légaré for the purposes of proving the use of the Mark in association with the Services consists of excerpts from the Memoria Website advertising said services [see Exhibits JDL-9 concerning the genealogy service and JDL-10 concerning the documentation service].
[45] None of the excerpts under JDL-9 and 10 refers directly or indirectly to the Mark. These excerpts both refer simply to "MEMORIA" or to "Alfred Dallaire | MEMORIA".
[46] In view of my previous conclusions in point i, I conclude that the use of the Mark during the relevant period was not proved in association with the Services.
iv. Does the evidence prove the existence of special circumstances excusing the failure to use the Mark during the relevant period?
[47] This is not a case in which special circumstances explaining the failure to use the Mark during the relevant period were proved by the Registered Owner.
Disposal
[48] In exercising the authority delegated to me pursuant to the provisions of section 63(3) of the Act, the registration will therefore be modified to expunge the following goods:
crosses, original artworks, namely photographs, works on paper, silkscreens and lithographs; antique furniture, namely desks, chairs, buffets, armchairs, stools, settees, sofas, divans, benches, commodes, wardrobes, shelves, bookcases, secretaries, chests; books, bookmarks, registers, reading lights, thank you and condolence cards, lamps, frames;
as well as all of the services.
[49] In other words, the registration will be maintained only for the following goods: "cinerary urns, reliquaries, original artworks, namely sculptures, paintings", the whole according to the provisions of section 45 of the Act.
______________________________
Annie Robitaille
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
Certified true translation
Arnold Bennett
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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HEARING DATE: 2016-01-13
APPEARANCES
Barry Gamache FOR THE REGISTERED OWNER
Stephanie Roberts FOR THE REQUESTING PARTY
AGENT(S) OF RECORD
Robic, S.E.N.C.R.L., FOR THE REGISTERED OWNER
Sim & McBurney FOR THE REQUESTING PARTY