LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 179
Date of Decision: 2010-10-27
IN THE MATTER OF AN OPPOSITION by Hortilux Schreder B.V. to application No. 1,064,360 for the trade-mark HORTILUX in the name of Iwasaki Electric Co., Ltd.
[1] On June 23, 2000, Iwasaki Electric Co., Ltd. (the Applicant) filed an application to register the trade-mark HORTILUX (the Mark) based on use in Canada since December 31, 1997 in association with electric lamps (the Wares).
[2] The application was advertised for opposition purposes in the Trade-marks Journal of January 9, 2002 and on May 31, 2002 Hortilux Schreder B.V. (the Opponent), filed a statement of opposition against the application. The Applicant filed and served a counter statement, in which it denies the Opponent’s allegations.
[3] The Opponent’s evidence consists of the affidavit of Johan de Leeuw, sworn February 28, 2003, the affidavit of Aaron Edgar, sworn December 18, 2005, the affidavit of Molly Bragg, sworn November 28, 2006 and the second affidavit of Aaron Edgar, sworn May 17, 2007.
[4] The Opponent had submitted 2 affidavits sworn by Teunis Cornelis van den Dool. However as Mr. van den Dool failed to attend for cross-examination, his affidavits were returned to the Opponent (see Registrar’s ruling July 4, 2008).
[5] I note that Ms. Bragg’s affidavit is currently on file; however as Ms. Bragg declined to attend for cross-examination following an order dated February 22, 2007, her affidavit does not form part of the evidence of record pursuant to r. 44(5) of the Trade-marks Regulations, SOR/96-195 and is returned to the Opponent.
[6] The Applicant’s evidence consists of the affidavit of Keith T.S. Ward, sworn October 30, 2003, the affidavit of Len Thomas, sworn April 19, 2007 and the affidavit of Peter Berkhout, sworn April 20, 2007.
[7] Mr. Ward was cross-examined on his affidavit. The transcript of this cross-examination, as well as exhibits and answers to undertakings form part of the record.
[8] Both parties filed written arguments and were ably represented at a hearing.
Statement of Opposition
[9] The grounds of opposition as amended are based on s. 30(b), s. 30(i), s. 16(1)(a), s. 16(1)(c), and s. 2 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act).
[10] The material dates that apply to the grounds of opposition are as follows:
• s. 30(b) and (i) of the Act - the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.)];
• s. 16(1) (a) and (c) - the date of first use claimed in the application [see s. 16(1)];
• s. 2 of the Act - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.)].
[11] I will begin my analysis by summarizing below those portions of the evidence that I consider to be the most pertinent.
The Opponent’s evidence
Affidavit of Johan de Leeuw
[12] Johan de Leeuw identifies himself as the General Manager of P.L. Light Systems Canada Inc. (P.L. Light), a wholly owned subsidiary of Hortilux Schreder B.V. (formerly Hortilux B.V.). From his evidence we learn that the Opponent, based in the Netherlands, is in the business of light systems and supplemental lighting in the greenhouse horticultural industry.
[13] In Canada, it sells HORTILUX and HORTILUX SCHREDER lighting fixtures through its Canadian subsidiary P.L. Light. Mr. de Leeuw states that P.L. Light is licensed to use the trade-mark HORTILUX in Canada in association with lighting fixtures and lighting reflectors and explains that under the terms of the licence agreement, Hortilux Schreder B.V. has control over the character and quality of said lighting fixtures and reflectors. I will return to this aspect of the record later on in my decision.
[14] Mr. de Leeuw indicates that P.L. Light has imported HORTILUX lighting reflectors from Hortilux Schreder B.V. since long before December 31, 1997. Once the lighting reflectors are imported into Canada, P.L. Light assembles them with lighting components and distributes them throughout North America. Included as Exhibit B and C to his affidavit are sample invoices and Exhibit D specimens which Mr. de Leeuw claims show the manner in which these marks are used.
Affidavits of Aaron Edgar, sworn December 18, 2005 and May 17, 2007
[15] The affidavit of Aaron Edgar sworn May 17, 2007 essentially incorporates the information contained in his first affidavit sworn December 18, 2005 and also appears to be in replacement of the affidavit of Molly Bragg. He identifies himself as an articling student employed by the agents for the Opponent. His affidavits serve to introduce into evidence the results of a search using the Wayback Machine which he states contains accurate copies of web pages as they existed at a specific date in the past. He located a page identifying all of the archived versions of the website www.eyelighting.com. (Exhibit I). Appended as Exhibit K is a printout from this website which references Eye Lighting International of North America, Inc. and which is dated October 12, 1999. According to Mr. Edgar, the term HORTILUX does not appear on any of the archived copies of the website www.eyelighting.com prior to October 12, 1999.
The Applicant’s evidence
Affidavit of Keith T.S. Ward
[16] Keith T.S.Ward identifies himself as President and Chief Operating Officer of Eye Lighting International of North America, Inc. (Eye Lighting) an American corporation which is a subsidiary of the Applicant, a Tokyo based high technology manufacturer. Mr. Ward explains that the Applicant exports the Wares to its distributors/subsidiaries including Eye Lighting.
[17] He states that the Applicant has granted an exclusive licence to Eye Lighting to use the Mark in Canada, wherein the Applicant has direct control of the character and quality of the Wares sold in Canada by Eye Lighting. Although the licence agreement was not filed in evidence, based on the answers to questions posed in cross-examination, I am satisfied that such use was under license from the Applicant in accordance with the provisions of s. 50(1) of the Act.
[18] Mr. Ward explains that the Applicant’s principle operating area is illumination and is comprised of more than 3,000 different products including lamps, lighting fixtures, electronics, communication equipment and ultraviolet and electron beam systems. A segment of the Applicant’s illumination business deals with specialized plant oriented grow lamps which are identified under the Mark. A brochure outlining the HORTILUX grow lamps is appended as Exhibit A to his affidavit.
[19] Mr. Ward states that the total gross wholesale value of the Wares in North America for the past four years (from 2003) has been in excess of $9,000,000 U.S. The average cost per unit ranges from $25 to $40 U.S. For the fiscal years 1997 to 2002 sales of the Wares in Canada were $926 in 1997 and increased dramatically to $3,428,854 in 2001. Eye Lighting’s main customer/agent/distributor in Canada is Standard Products Inc. Attached as Exhibit B is a copy of the original invoice from Eye Lighting to Standard Products Inc. dated December 31, 1997 and Exhibit C includes further sample invoices.
Affidavit of Len Thomas
[20] Len Thomas is the Marketing Manager of Eye Lighting since January 2006. Prior to that, he spent approximately five years as a Product Manager in Marketing. From 1994 to 2000, he worked both as an engineer and in advertising, specifically including advertising for the Wares.
[21] Mr. Thomas’ affidavit serves to introduce into evidence steps taken in the summer and fall of 1997 to bring the Mark into use, i.e. the selection of the Mark, the design of the monogram featuring the Mark, the order of a rubber stamp featuring the Mark to be used on the Wares, which final product was received by Eye Lighting in the fall of 1997. He also worked to create the sleeve graphic to be used on packaging which also featured the Mark, 280 of which were used in November 1997 [see Exhibits A, B-1 to B-3, C, D and E].
[22] Mr. Thomas’ affidavit also serves to explain that newer HORTILUX models have since been introduced onto the market.
[23] Furthermore, he attests to sales occurring between Eye Lighting and Standard Products Inc. on October 15, 1997 and on December 31, 1997 (Exhibits F and G).
The Grounds of Opposition
Ground of opposition based on s. 30(b)
[24] The Opponent has pleaded that the Applicant has not used its Mark in Canada in association with the Wares since December 31, 1997 and accordingly the application does not comply with the requirements of s. 30(b) of the Act.
[25] In order for this ground to be considered at all, the Opponent must meet its initial evidentiary burden. This initial burden is lighter respecting the issue of non-conformance with s. 30(b), because the facts regarding an applicant's first use of its mark are particularly within the knowledge of the applicant [see Tune Masters v. Mr. P's Mastertune Ignition Services Ltd (1986), 10 C.P.R (3d) 84 (T.M.O.B.)].
[26] In this respect the Opponent turns to the search results of the WayBack Machine, introduced by the Edgar affidavit sworn September 17, 2007. The Opponent argues that the Mark in association with the Wares only appeared for the first time on Eye Lighting’s website on October 12, 1999, that is, two years after the Applicant’s claimed date of first use. Furthermore, it appears under the heading “What’s New”. In view of this evidence the Opponent takes the position that it has met its initial burden.
[27] I appreciate that there be limitations to the accuracy of the Wayback Machine, including but not limited to possible hearsay issues. However, Mr. Edgar explains that none of the employees of Internet Archive (the website which supports the WayBack Machine) were available to swear an affidavit and attend for cross-examination. Further, it has been held that evidence adduced in this way could generally be considered reliable [ITV Technologies Inc. v. WIC Television Ltd., 29 C.P.R. (4th) 182; Candrug Health Solutions Inc. v. Thorkelson (2007), 60 C.P.R. (4th) 35, reversed on other grounds 38 C.P.R. (4th) 481].
[28] In view of the above and for the purpose of meeting the Opponent’s light initial burden under s. 30(b) of the Act, I have given this evidence at least some minor weight and find that the search results are sufficient to put the Applicant's claimed date of first use at issue.
[29] Accordingly, the legal onus is upon the Applicant to demonstrate on a balance of probabilities that its application complies with the requirements of s. 30(b) of the Act.
[30] I am of the view that the Applicant has effectively done so, firstly by filing evidence refuting the results of the Wayback Machine and secondly by filing evidence showing use of its Mark as of December 31, 1997.
[31] It has been clearly explained through the Thomas affidavit that while the Wares displaying the Mark have been available for sale and sold in Canada since at least as early as December 31, 1997, newly designed HORTILUX models have been introduced since that time, particularly in 1999. Attached as Exhibit K to his affidavit is a page from Eye Lighting’s brochure dated June 1999. Mr. Thomas points to the explanation provided therein, namely that “EYE’s 400 watt HORTILUX Super HPS/EN lamp is built with a newly designed HORTILUX arc tube (…)”. In other words it refers to the introduction of a new lamp model, which in my view is consistent with the catch phrase “What’s New” found on the October 12, 1999 web page and is not necessarily indicative that the Wares were first introduced on the market on that day. The Applicant has therefore satisfactorily discarded this discrepancy.
[32] Furthermore, I am of the view that the Applicant has positively evidenced use of its Mark as of December 31, 1997, the claimed date of first use.
[33] “Use” is defined in s. 2 of the Act as follows:
“use”, in relation to a trade-mark, means any use that by section 4 is deemed to be a use in association with wares or services;
[34] Section 4 of the Act provides as follows:
4.(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
[35] The Opponent argues that the Applicant has not used its Mark as of December 31, 1997 in that :
• the Applicant has not established that any of the Wares sold on or around the claimed date of first use were associated with the Mark and that such sales were in the normal course of trade; and
• the Applicant has not established that any Wares had been received by Standard Products Inc. as of the claimed date of first use.
[36] Mr. Ward and Mr. Thomas have both attested to the Wares being sold by Eye Lighting to Standard Products Inc. on December 31, 1997. Appended to their respective affidavits is a copy of the invoice dated December 31, 1997 evidencing such sales. Although this invoice does not clearly identify the Mark, Mr. Thomas attests to the steps taken in the summer and fall of 1997 to bring the Mark into use. He also indicates that to the best of his recollection, the Wares sold to Standard Products Inc. on December 31, 1997 would have displayed the Mark on the Wares and on their packaging.
[37] As for Mr. Ward, he declares at paragraph 10 of his affidavit that the Mark has been used regularly in Canada by Eye Lighting since at least as early as December 31, 1997 and will continue to be so in 2003 and beyond. He further states that the Mark figures prominently on all labels and packaging of the Wares, as well as on its promotional and marketing material.
[38] In view of the evidence as a whole, I am satisfied that the Mark was featured on the Wares and on their packaging on the claimed date of first use. I am also satisfied that the sales were in the normal course of trade, as detailed hereafter.
[39] I now turn to the Opponent’s submissions in which it argues that even if the Mark was in fact displayed on the Wares at the time of transfer, the earliest possible date of first use would be the date on which the Wares were received by Standard Products Inc. in Canada. The Opponent contends that it would be unlikely that such an order would be placed with a company in Cleveland, Ohio (Eye Lighting) on December 31, 1997 and shipped to a company in T.M.R. Québec (Standard Products Inc.) on that same day. As I understand it, T.M.R. stands for the Town of Mont Royal in Montréal, Québec.
[40] During the course of Mr. Ward’s cross-examination it is learned that:
• He has no first-hand knowledge of the December 31, 1997 invoice at Exhibit B (q. 44 and 46);
• He has no first-hand knowledge of the shipment referred to in the invoice dated December 31, 1997 (q. 47-48);
• He cannot say for sure what the term “order date” on that invoice stands for, but believes it to be the day after the shipment leaves Eye Lighting’s Plant (q. 53, 55, 57, 59 and 60);
• He has no idea when the December 31, 1997 shipment to Standard Products Inc. arrived at destination (q. 62);
• The Applicant took under advisement a request for production of any document showing receipt by Standard Products Inc. of the December 31, 1997 shipment (q. 63, 64 and 65). The Applicant’s response to this question was “Not available”.
[41] Pursuant to s. 4(1) of the Act, in order for use to be considered at the time of transfer, there must be a transfer of possession. Entering into an agreement or placing an order for wares is not considered use [Bilsom International Ltd. v. Cabot Corp. (1991), 36 C.P.R. (3d) 92 (T.M.O.B.)]. In the case of Manhattan Industries Inc. v. Princeton Manufacturing Ltd, (1971) 4 C.P.R. (2d) 6 (F.C.T.D.) it was held that possession did not transfer until the Canadian recipient of goods had actual possession. Thus, in the present circumstances of this case, for use of the Mark to have occurred in Canada on December 31, 1997, evidence that the shipment had arrived at destination on that date should have been provided, which is not the case.
[42] Nevertheless, I bear in mind Exhibit F to the Thomas affidavit which is a copy of Eye Lighting’s internal records, disclosing that two units of the Wares were sold for zero value to Standard Products Inc. on October 15, 1997. Although the sale is for zero value, such transactions have been regarded as use in the normal course of trade, as long as there are subsequent patterns of sales of the items, which is the case here [see Canadian Olympic Association v. Pioneer Kabushiki Kaisha (1992), 42 C.P.R. (3d) 470 (T.M.O.B.)]. Mr. Thomas further attests that to the best of his recollection, the Wares sold to Standard Products Inc. on October 15, 1997 would have displayed the Mark on the Wares and on their packaging. Consequently, although the sale of December 31, 1997 may not be substantiated by evidence showing that the shipment arrived in Canada on that day, I am satisfied that the Applicant had in fact used its Mark in Canada two months prior to the claimed date of first use, which led to the subsequent sale of the Wares between these parties on December 31, 1997.
[43] Accordingly, I find that the Applicant has met its legal onus establishing compliance with the requirements of s. 30(b) of the Act. This ground of opposition is therefore dismissed.
Ground of opposition based on s. 30(i)
[44] Pursuant to s. 30(i), the Opponent has pleaded that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the Wares described in the application.
[45] This ground, as pleaded, does not raise a proper ground of opposition. Even if the ground had been properly pleaded, where an Applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional circumstances such as where there is evidence of bad faith on the part of the Applicant [Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.)]. There is no such evidence in the present case and accordingly this ground is dismissed.
Ground of opposition based on s. 16(1)(a)
[46] The Opponent has pleaded that the Applicant is not the person entitled to registration since at the date of first use alleged in the Applicant’s application, the Mark was confusing with the Opponent’s trade-marks HORTILUX and HORTILUX SCHREDER which have been previously used in Canada. I note that this ground fails to allege the specific wares in association with which the Opponent claims having used its marks. Nonetheless, in view of the evidence of record, I can infer that the Opponent is referring to lighting reflectors (see paragraph 5 of the de Leeuw affidavit).
[47] In order to meet its initial burden, the Opponent must evidence use of its trade-marks in Canada prior to December 31, 1997. In this regard, Mr. de Leeuw claims that such lighting fixtures have been imported into Canada by his company since long before December 31, 1997. Appended as Exhibit B to his affidavit are representative invoices between P.L. Light and Hortilux B.V. which he states accompanied the lighting reflectors imported into Canada. The earliest invoice is dated August 26, 1997. Although Mr. de Leeuw indicates that the sample invoices accompanied the lighting reflectors, I note that the trade-marks do not appear in the body of these invoices with respect to these relectors. It is worth also noting that Mr. de Leeuw fails to indicate whether the trade-marks appeared, if at all, on the wares or their packaging.
[48] Furthermore, the specimens provided in Exhibit D, namely a business card, letterhead and promotional material, do not show the manner in which the trade-marks HORTILUX and HORTILUX SCHREDER have been used on lighting reflectors, nor do they qualify as proper specimens establishing use pursuant to s. 4(1) of the Act.
[49] Moreover, although Mr. de Leeuw provides a statement of fact that under the terms of the licence agreement, Hortilux Schreder B.V. has control over the character and quality of said lighting fixtures and reflectors, I note that the licence agreement was not filed in evidence. Furthermore, Mr. de Leeuw does not attempt to explain how such control is exercised nor does he explain the steps taken to ensure the character and quality of the wares provided [see Pernod Ricard v. Molson Canada 2005 (2007) 60, C.P.R. (4th) 338 (T.M.O.B.)]. I am therefore of the view that, even had the Opponent shown use of its marks, such use would not have enured to its benefit, pursuant to s. 50(1) of the Act.
[50] For all of these reasons, I find that the Opponent has not established use of its trade-marks in Canada. Accordingly this ground is dismissed.
Ground of opposition based on s. 16(1)(c)
[51] The Opponent has pleaded that the Applicant is not the person entitled to registration since at the date of first use alleged in the Applicant’s application, the Mark was confusing with the Opponent’s trade-name HORTILUX SCHREDER which had been previously used in Canada.
[52] In order to meet its initial burden, the Opponent must evidence use of its trade-name HORTILUX SCHREDER prior to December 31, 1997, which in my view it failed to do. The earliest invoice appended as Exhibit C to Mr. de Leeuw’s affidavit arguably showing use of this trade-name in Canada, is dated April 6, 1999, which is beyond the Applicant’s claimed date of first use.
[53] Consequently, the Opponent has failed to meet its initial burden and this ground is also dismissed.
Distinctiveness ground of opposition
[54] The Opponent has pleaded that the Mark is not distinctive and does not actually distinguish nor is it adapted to distinguish the Wares of the Applicant from the wares of the Opponent and the business of the Opponent.
[55] In order to meet its evidential burden with respect to this ground, the Opponent must show that as of the filing of the opposition, the Opponent’s marks had become known sufficiently to negate the distinctiveness of the Mark [Motel 6, Inc. v. No. 6 Motel Ltd. (1981), 56 C.P.R. (2d) 44 (F.C.T.D.); Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.); and Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 412 (F.C.A.)]. For the reasons previously discussed, Mr. de Leeuw’s evidence is insufficient and too imprecise and as a result the Opponent has not discharged its burden with respect to this ground.
[56] Accordingly, this ground is dismissed.
Disposition
[57] Pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
___________________________
Lynne Pelletier
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office