LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 102
Date of Decision: 2016-06-29
IN THE MATTER OF SECTION 45 PROCEEDINGS
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Bremont Watch Company Limited |
Requesting Party |
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Bremont Homes Corporation |
Registered Owner |
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TMA704,139 for BREMONT
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Registration |
[1] This is a decision involving summary expungement proceedings with respect to registration No. TMA704,139 for the trade-mark BREMONT (the Mark).
[2] The Mark is registered in association with: “T-shirts, pens, golf shirts, jackets, caps and folders for daily planners, all distributed in connection with the promotion and sale of new homes”, and “Real estate development services, and construction and sale of residential homes”.
[3] On April 9, 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 Bremont Homes Corporation (the Owner). The notice was sent at the request of Bremont Watch Company Limited (the Requesting Party).
[4] The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between April 9, 2011 and April 9, 2014, in association with each of the goods and services specified in the registration. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last in use and the reasons for the absence of use since that date.
[5] The relevant definitions of use are set out in sections 4(1) and 4(2) of the Act as follows:
4(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.
[6] It has been 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 and services [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)].
[7] In response to the Registrar’s notice, the Owner furnished the affidavit of Gary Breda, sworn October 29, 2014, together with Exhibits A through O.
[8] Both parties filed written representations and were represented at an oral hearing.
[9] For the reasons that follow, I conclude that the registration ought to be maintained with respect to the services only.
[10] Before discussing the reasons for my decision, I will begin with a summary of the evidence.
The Evidence
[11] In his affidavit, Mr. Breda attests that he is the President of the Owner, and has been since 2004.
[12] Mr. Breda states that the Owner has advertised and promoted the Mark since at least as early as June 1, 2005 in association with the registered goods, and since October 31, 2004 in association with the registered services. He states that since that time, the Owner has advertised, constructed and sold residential homes in Ontario in connection with a number of BREMONT-based trade-marks. He further attests that sales revenues in connection with real estate development services, and the construction and sale of residential homes during the relevant period in association with the Mark and various BREMONT-based trade-marks were $30 million in 2011, $28 million in 2012, and $65 million in 2013. Associated annual advertising and promotion expenditures, he attests, are between approximately $60,000 and $100,000.
[13] With respect to use of the Mark in association with the services, Mr. Breda provides as Exhibits A-D to his affidavit, printouts from the Owner’s website at www.bremonthomes.com, including archived screenshots of the website as it appeared on September 26, 2011. He states that the website was registered in 2004 and has been in continuous operation since that time. He further states that although the website content changes from time to time, the Mark has appeared in the top left corner of the website in the manner shown since at least as early as 2011. He explains that the website provides customers with an overview of the Owner’s services, as well as information and pictures of residential homes available for sale.
[14] As per the Owner’s evidence, the homes are constructed as part of developments under named “communities” in various locations throughout Southern Ontario. Specifically, Mr. Breda attests, of the past communities shown in the website printouts, the Owner actively advertised and sold homes in Pickering (Haven on Rouge Park) between 2005 and 2007, Maple (Dreamwood) between 2006 and 2008, Courtice (Courtice Village) between 2004 and 2007, Mississauga (Derry Chase) between 2009 and 2012, and Wasaga Beach (Centre Town Wasaga Beach) between 2009 and 2013. Additionally, with respect to new “communities” featured on the Owner’s website, as per the aforementioned website printouts, Mr. Breda attests that the Owner began advertising and selling homes in Brampton (King’s Manor Estate) and Wasaga Beach (BeacH20) in 2014; in Brampton (The Crown of Creditview), Innisfil (Forest Edge), and Brampton (Noblewood) in 2012. He states that the Owner also began advertising the availability of Bremont condominiums in 2014. He states that these developments are still under construction and will continue to be so advertised until development and sales are complete.
[15] Mr. Breda then provides as Exhibits E through H, printouts and screenshots from additional means of Internet advertising, including blog posts and press releases, the Owner’s Facebook page, Google+ page, and Twitter page. Included in these exhibits, Mr. Breda attests, are sample social media postings which date within the relevant period.
[16] Mr. Breda states that the Owner also advertises its real estate development projects in various trade magazines, newspapers, and radio advertisements. In support, he provides as Exhibits I and J, copies of advertisements that appeared in New Homes magazine, which he attests feature the availability of homes that were for sale in the Center Town Wasaga Beach community between 2009 and 2013, and homes advertised and sold in the Derry Chase community between 2009 and 2012. While he does not provide any corroborative documentary proof, he states that the developments featured in these advertisements were also advertised in the Toronto Star and on the radio.
[17] Lastly, with respect to the services, Mr. Breda attests that the Mark is also displayed on letterhead and envelopes provided to customers during the promotion and sales of new residential homes, as well as on brochures provided to customers pertaining to the Owner’s various real estate development projects. In support, he attaches examples of these materials under Exhibits K and L, which he attests are examples of what was used during the relevant period.
[18] With respect to the registered goods, Mr. Breda explains that “over the course of a sale, potential customers are presented with advertising material […], as well as other items bearing the Mark, such as T-shirts, pens, golf shirts, jackets, caps and folders for daily planners.” As an example, he attests, “upon the purchase of a new home, packages containing the aforementioned items are sometimes left inside the newly purchased home as a welcome promotional gift.” He provides as Exhibits M, N, J, and O, photographs of t-shirts, jackets, and folders for daily planners, all bearing the Mark, which he states were distributed during the promotion and sales of new homes during the relevant period.
[19] Lastly, Mr. Breda states that the Owner also distributed pens, caps and golf shirts during the relevant time period and that all samples had been distributed to Bremont customers by the time this expungement proceeding was initiated.
Analysis and Reasons for Decision
[20] I will begin with a discussion of the goods, followed by the services.
[21] The Requesting Party submits that due to the absence of any supporting evidence, the goods identified as “pens, golf shirts and caps” should be deleted from the registration. The Requesting Party further submits that the Owner’s evidence with respect to the remaining goods, namely, the photographs attached as Exhibits M, N, and O to the Breda affidavit, is limited to the following registered goods: T-shirts, jackets, and folders for daily planners. This evidence however, the Requesting Party submits, is insufficient to demonstrate use of the Mark in association with these goods.
[22] In this regard, the main crux of the Requesting Party’s submissions is that the evidence does not show use of the Mark in the normal course of trade in association with such goods. The Requesting Party submits that as per Lin Trading Co v CBM Kabushiki Kaisha (1985), 5 CPR (3d) 27 (TMOB), affirmed (1987), 14 CPR (3d) 32 (FC), and (1988), 21 CPR (3d) 417 (FCA), the term “normal course of trade”, should be interpreted as requiring that the transfer be a part of a dealing in the goods for the purpose of acquiring goodwill and profits from the marked goods. The Requesting Party further refers to several cases regarding the free distribution of goods and submits that such distribution only qualifies as use in the normal course of trade under certain conditions, such as where it is for the purpose of obtaining future sales/orders for the goods, and subsequent sales have been demonstrated; moreover, the goods must be the object of trade in themselves, and not merely a tool to promote a registered owner’s other goods and services [citing Professional Gardener Co Ltd v Registrar of Trade-marks et al (1985), 5 CPR (3d) 568 (FCTD); Riches, McKenzie & Herbert LLP v Park Pontiac Buick GMC Ltd (2005), 50 CPR (4th) 391 (TMOB); Smart & Biggar v Sutter Hill Corporation, 2012 TMOB 121 (CanLII); Kids Club Media, LLC v Kyle, 2014 TMOB 134 (CanLII); Oyen Wiggs Green v Flora Manufacturing and Distributing Ltd, 2014 TMOB 105 (CanLII); and Now Communications Inc v Chum Ltd (2000), 5 CPR (4th) 275 (TMOB)].
[23] As applied to the present situation, the Requesting Party submits that there is no evidence that the Owner trades in these goods, and there is no proof of normal sales activity concerning these goods. Further to this, the Requesting Party submits the evidence does not establish that the distribution of the goods was made in anticipation of any orders for the goods, or that the distribution of the goods to customers or prospective customers was a consistent practice of the Owner for promoting its services, or merely an ad hoc promotional activity. The Requesting Party submits, while the distribution of goods bearing the Mark to customers and prospective customers of the Owner’s services might result in the Owner’s trade-mark acquiring goodwill, it is clear that the distribution of goods was not part of an overall activity for the purpose of making a profit from the marked goods. Rather, the Requesting Party submits, these goods are simply tools to promote the Owner’s own services.
[24] The Owner, on the other hand, submits that the affidavit contains photographs of various goods, such as a t-shirt, jackets, and folders for daily planners that prominently display the Mark, to which Mr. Breda has attested that these goods “were distributed during the promotion and sale of new homes” during the relevant period. Further to this, the Owner submits Mr. Breda has also attested that the remaining goods, namely, “pens, caps, and golf shirts” bearing the Mark, were also distributed during the relevant period. The Owner submits that the evidence goes beyond mere assertions of use, and instead, shows use of the Mark by: providing sworn statements regarding use in association with the goods, a description of the marking of the goods, details pertaining to the circumstances under which the goods are distributed, and the identity of the recipients of the goods. The Owner submits that use must be shown, but not examples of all uses, and that the evidence as a whole, and in particular, Exhibits K, M, N, and O, which contain photographs of various goods bearing the Mark, is sufficient evidence of use of the Mark in association with the registered goods during the relevant period.
[25] Specifically, in regards to the “normal course of trade”, the Owner submits that it is not required to prove continuous use, and that just one transaction in the normal course of trade during the relevant period is sufficient for the purposes of section 45 of the Act. Further, the Owner submits that once there is more than a bare statement that the Mark was in use, then it can reasonably be inferred that the use was in the normal course of trade.
[26] In addition, the Owner submits that the promotional distribution of the goods is a goodwill-building practice associated with the Mark, and that the distribution of the goods bearing the Mark is intended to generate profits. The Owner submits that the goods are given to customers who have purchased a home, and that the cost of the branded goods is knowingly passed on to the purchasers of these new homes, as the purchasers are buying a new home as much as they are buying the luxury home-building experience provided by the Owner. Furthermore, the Owner submits, although it is useful to have invoices, it has been held that invoices are unnecessary, as in cases where they do not display the trade-mark or the specific goods sold, such as the present case in an agreement of purchase and sale of new homes. As a result, the Owner submits, the revenues from home sales during the relevant period attested to by Mr. Breda, which ranged from $30 million to $65 million annually, can partially be attributed to the distribution of the goods bearing the Mark during the relevant period.
[27] The Requesting Party refutes the Owner’s contention that its buyers would think that they are buying the promotional items (t-shirts, jackets, and folders for daily planners) as part of the purchase price of their new home. The Requesting Party submits, and I agree, that there is no evidence that the Owner’s consumers would expect to receive these goods when they purchase a home, and that consumers would be more likely to view these goods as a gesture of appreciation on the part of the Owner, wherein such costs are borne by the Owner. Indeed, this view is consistent with the affidavit of Mr. Breda, as he refers to packages containing the goods as a“welcome promotional gift” (emphasis mine). Further supportive of this view, as pointed out by the Requesting Party, is that there is no financial adjustment for those purchasers who do not receive the goods, and there is no choice on behalf of the consumer as to whether to receive the goods.
[28] The distribution of the goods in this case appears as a mechanism to generate goodwill with respect to the sale of homes, and is used to promote the Owner’s own services, rather than as objects of trade, in and of themselves. Thus, I cannot conclude that the Owner has demonstrated use of the Mark in the normal course of trade in association with the goods [see also Brownlee LLP v 555,129 Ontario Limited, 2013 TMOB 23; Osler, Hoskin & Harcourt LLP v Ontario Teachers Insurance Plan, 2016 TMOB 53; Park Pontiac Buick, supra; Sutter Hill, supra; and Kids Club Media, supra].
[29] With respect to the goods, the Requesting Party made alternative submissions regarding deviation of the Mark as registered; which, having regard to the aforementioned, would now appear to be moot with respect to the goods. Nevertheless, I will now deal with this issue, since these submissions appear to be equally applicable to the services, as the Mark appears with additional elements as described below throughout the evidence with respect to both goods and services.
[30] In this regard, the Requesting Party submits the evidence does not show use of the Mark as registered, but rather, shows use of the mark BREMONT HOMES DESIGNED FOR LIVING & DESIGN. The Requesting Party notes that in paragraph 5 of his affidavit, Mr. Breda states that “Bremont has in connection with a number of its BREMONT-based trade-mark, advertising, constructed and sold…” The Requesting Party submits that this statement supports the position that the Owner considers itself to have and use different trade-marks, and that the evidence provided only shows use of one of the “BREMONT-based trade-marks”, namely, BREMONT HOMES DESIGNED FOR LIVING & Design.
[31] The Requesting Party acknowledges that the goods shown in Exhibits M, N, and O to the Breda affidavit, are marked with the words BREMONT HOMES DESIGNED FOR LIVING with the word BREMONT appearing in larger font above the words “HOMES DESIGNED FOR LIVING”. The Requesting Party further submits that although the word BREMONT appears in different lettering and sizing, the goods are also marked with a distinctive leaf element which is centred above the word BREMONT. The Requesting Party submits that this additional material does not constitute purely descriptive matter with respect to the registered goods such that the additional material would create a separate impression in the minds of the public [relying on Nightingale Interloc Ltd v Prodesign (1984), 2 CPR (3d) 535 (TMOB) re: principle 1]. In this regard, the Requesting Party submits that the slogan “designed for living” and the addition of the leaf element, as a whole, are intended to create emotional appeal which aids in consumer brand recall, and to convey particular connotations (e.g. – leaf relaying ecofriendly building practices). Furthermore, the Requesting Party submits that notwithstanding the location of the ™ notice appearing to the right of the word “BREMONT”, the public would still probably interpret the notice as being in reference to the trade-mark as a whole.
[32] The Owner, referring to deviation principles from Canada (Registrar of Trade-marks) v Compagnie Internationale pour L’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FC), submits that even though the Mark sometimes appears with this additional matter, an unaware purchaser, as a matter of first impression, would likely still infer that the goods and services originate from the Owner. This being so, the Owner submits, as BREMONT stands out from the additional matter, both due to its appearance (lettering and sizing) and its inherent distinctiveness relative to the additional matter (in which portions are descriptive or suggestive), which renders the word BREMONT the dominant feature [citing 88766 Canada Inc v Coca-Cola Ltd (2006), 52 CPR (4th) 50 (TMOB)]. In addition, the Owner submits that the TM notice appears clearly unambiguously at the end of BREMONT, not at the end of the additional matter, and as such, the TM notice would relate specifically and only to the BREMONT portion of the displayed marks.
[33] I agree with the Owner. In the present case, the word BREMONT is presented in such a significantly larger font relative to the additional matter that the message conveyed to the public is that the word BREMONT is also being used as a trade-mark on its own. This view is consistent with Principle 1 from Nightingale, supra, as one of the factors to be given consideration when assessing whether a trade-mark would be perceived as being used is whether the mark stands out from the additional material by use of a different lettering or sizing. Furthermore, notwithstanding the addition of the leaf design, the Mark is being used in such a way that it has not lost its identity and remains recognizable, the dominant feature of the Mark, being the word BREMONT, having been preserved [per CII Honeywell Bull, supra and Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)]. Consequently, I accept that use of the registered Mark has been shown.
[34] In addition to the aforementioned, the Requesting Party submits that the Owner’s evidence also does not show use of the Mark with respect to the registered services during the relevant period in accordance with section 4(2) of the Act.
[35] In this regard, the Requesting Party questions whether the website printouts are accurate depictions of the Owner’s website during the relevant period given the 2014 copyright notice on the pages. In addition, the Requesting Party submits that the evidence fails to establish that any Canadian consumers had visited the Owner’s website during the relevant period, or any other websites or social media sites as provided for in the evidence [citing Candrug Health Solutions Inc v Thorkelson, 2008 FCA 100].
[36] With respect to the Exhibit I and J advertisements, the Requesting Party submits that the advertisements, which appear as photographs within framed documents, appear to be undated and do not contain any references to the publication in which it is published, such as a page number, issue number or a publication date. As such, the Requesting Party submits, there is no certainty that these documents are accurate depictions of those published during the relevant period, and in any event, there is no evidence that the New Homes magazine alleged to contain the advertisements, was circulated in Canada.
[37] The Requesting Party further submits that the Owner’s blank undated stationery bearing the Mark (per Exhibit K), also does not show “use” with respect to services in accordance with section 4(2) of the Act. Further to this, and lastly, the Requesting Party submits that the Owner’s brochure (Exhibit L) is undated, and as the contents of the brochure were not included in the evidence, that there is no certainty that the brochure was used to advertise the Owner’s services during the relevant period.
[38] However, it is the evidence as a whole that must be considered. That includes considering sworn statements provided by Mr. Breda in conjunction with the documentary evidence supplied [see Fraser Milner Casgrain LLP v Canadian Distribution Channel Inc, 2009 CarswellNat 3298 (TMOB). For example, although the printouts of the Owner’s website as attached in Exhibit A were generated on August 5, 2014, Mr. Breda specifically attests that “although the website content changes from time to time, the BREMONT mark has appeared in the top left corner in the manner shown since at least as early as 2011”. I note that Mr. Breda makes other such sworn statements in his affidavit that tie the exhibits to the relevant period, and I would add, he also provides a detailed description of the contents of the aforementioned brochures which support its use in association with the registered services. While I acknowledge that Mr. Breda did not provide evidence with respect to circulation of the New Homes magazine, there is ample evidence regarding the use and display of the Mark in the advertising of the Owner’s services online during the relevant period. Moreover, I agree with the Owner’s submission that a reasonable inference can be drawn in the present case, given the large volume of sales, that Canadians would have accessed or viewed the Owner’s website during the relevant period.
Disposition
[39] Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be maintained with respect to the services in compliance with the provisions of section 45 of the Act; however, the goods will be deleted.
______________________________
Kathryn Barnett
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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Hearing Date: 2016-02-25
Appearances
Tapas K. Pain For the Registered Owner
Fay O’Brien For the Requesting Party
Agents of Record
PNC IP Group Professional Corporation For the Registered Owner
O’Brien TM Services For the Requesting Party