LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2016 TMOB 173

Date of Decision: 2016-10-24

IN THE MATTER OF A SECTION 45 PROCEEDING

[1]               At the request of Borden Ladner Gervais LLP (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on November 28, 2014 to 1000746 Ontario Inc. (the Owner), the registered owner of registration No. TMA588,839 for the trade-mark CANADIAN ICEFLO (the Mark).

[2]               The Mark is registered for use in association with the goods “bottled water”.

[3]               The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with the goods specified in the registration, at any time between November 28, 2011 and November 28, 2014. 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.

[4]               The relevant definition of “use” in association with goods is set out in section 4(1) 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.

[5]               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 removing “deadwood” from the register. As such, the evidentiary threshold that the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448, 31 CPR (4th) 270].

[6]               In response to the Registrar’s notice, the Owner furnished the affidavit of Ruby Janet Lowe-Hartshorne, President of the Owner, sworn February 13, 2015. Only the Owner filed written representations, but both parties were represented at a hearing held on September 14, 2016.

The Owner’s Evidence

[7]               In her affidavit, Ms. Lowe-Hartshorne states that the Owner was incorporated in 1993 and operates under the trade name R.J. Enterprises. She attests that the Owner has produced, labelled and sold CANADIAN ICEFLO-branded bottled water in Canada continuously since November 2011. In support of her statements regarding the Owner’s business, she attaches her business card at Exhibit A to her affidavit. The business card displays the Mark above the product description “Natural Spring Water” and identifies the company as “A Division of 1000746 Ontario Inc.” operating as “R.J. Enterprises”.

[8]               Regarding the Owner’s normal course of trade, Ms. Lowe-Hartshorne states that the Owner sells bottled water to various wholesale vendors and non-profit event organizers in Canada. She explains that the Owner labels and ships CANADIAN ICEFLO-branded bottled water in pallets, either to its customers for resale or directly to the customers’ clients “on a per shipment basis”.

[9]               With respect to the manner of display of the Mark, Ms. Lowe-Hartshorne attaches two product labels to her affidavit, also at Exhibit A. She attests that the labels are representative of those used on CANADIAN ICEFLO-branded bottled water sold in Canada during the relevant period. Both labels prominently display the Mark and indicate that the product is “Distributed by R.J. Enterprises (1000746 Ontario Inc.)”.

[10]           Although these labels are not shown affixed to bottles of water, Exhibit A also includes two “point-of-sale materials” in the form of a card and a poster advertising “CANADIAN ICEFLO Natural Spring Water”.  Both the card and the poster depict water bottles with labels displaying the Mark; the visible portions of the depicted labels are consistent with the actual labels included in the exhibit. The poster indicates that the product is available as a “Case of 24 Flat Cap”. I note that the Mark also appears in the text of the point-of-sale materials; for example, the following text appears on the card: “Canadian Iceflo is an all natural spring water that features a delicate mineral balance”. Although the point-of-sale materials are undated, Ms. Lowe-Hartshorne confirms that the materials show how the Mark appeared on bottled water during the relevant period.

[11]           With respect to transfers of the registered goods, attached as Exhibit B to Ms. Lowe-Hartshorne’s affidavit are two invoices dated within the relevant period. Ms. Lowe-Hartshorne attests that these invoices are representative of the Owner’s sales. The invoices are from the Owner, identified by its trade name R.J. Enterprises, to companies in Toronto and Markham, Ontario. Ms. Lowe-Hartshorne attests that the invoices relate to cases of bottled water, which is identified on the invoices as “CANADIAN ICEFLO TRAY AND SHRINK FLAT CAP 500ml”.

Analysis

[12]           At the hearing, the Requesting Party presented several arguments challenging the sufficiency of the evidence. In essence, the Requesting Party argued that the evidence fails to establish the Owner’s normal course of trade and fails to show that the Mark was displayed on bottled water at the time of transfer.

[13]           With respect to the Owner’s normal course of trade, the Requesting Party submitted that Ms. Lowe-Hartshorne’s affidavit lacks details on the nature of the Owner’s business, including its product lines and marketing practices. The Requesting Party contended such specifics are required to show that the sales referenced in the exhibited invoices were made in the normal course of trade.

[14]           However, the jurisprudence is clear that there is no particular kind of evidence that must be provided in response to a section 45 notice. The registered owner need only establish a prima facie case [see Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)]. In the present case, Ms. Lowe-Hartshorne provides sufficient particulars regarding the Owner’s normal course of trade, attesting as to the Owner’s customer base and shipment practices for the registered goods. In view of Ms. Lowe-Hartshorne’s statements and supporting invoices, I am satisfied that the evidenced sales were made in the normal course of trade within the meaning of section 4(1) of the Act.

[15]           The Requesting Party also questioned the connection between “R.J. Enterprises” and the Owner, suggesting that any evidenced use of the Mark was by a third party and not by the Owner or a licensee. However, I accept Ms. Lowe-Hartshorne’s sworn statement that “R.J. Enterprises” is the Owner’s trade name. Indeed, that statement is corroborated by the exhibited business card and product labels, both of which equate the Owner with R.J. Enterprises. As such, I am satisfied that the evidenced sales were by the Owner itself.

[16]           Regarding display of the Mark, the Requesting Party argued that the evidence fails to show the Mark associated with bottled water at the time of transfer to the purchaser, as required by section 4(1) of the Act. In this respect, the Requesting Party submitted that there is “no connection” between the depicted bottle labels and the exhibited invoices, suggesting it creates ambiguity as to whether the invoiced products actually bore such labels. The Requesting Party argued that the point-of-sale materials do not assist in making the required connection, in particular because they are undated and do not reference the Owner. The Requesting Party also submitted that the point-of-sale materials themselves do not demonstrate use of the Mark: since Ms. Lowe-Hartshorne does not indicate how those materials were displayed or distributed, it is unclear whether they would have been associated with any actual water bottles at the time of transfer. Finally, the Requesting Party questioned whether the manner in which the Mark is displayed in the text of the point-of-sale materials qualifies as trade-mark use.

[17]           Regardless of whether the point-of-sale materials show use of the Mark in and of themselves, I accept that their depictions of the bottled water, when considered together with Ms. Lowe-Hartshorne’s sworn statements, show how the Mark was displayed on the Owner’s bottled water at the time of transfer during the relevant period.

[18]           The evidence must be considered as a whole and the exhibits interpreted in conjunction with the statements made in the affidavit [see, for example, Fraser Milner Casgrain LLP v Canadian Distribution Channel Inc (2009), 78 CPR (4th) 278 (TMOB)]. Given a fair reading and considered in its totality, Ms. Lowe-Hartshorne’s affidavit sufficiently demonstrates how the Mark was used during the relevant period. In view of Ms. Lowe-Hartshorne’s sworn statements, I accept that the invoices at Exhibit B are representative of sales of the registered goods, displaying the Mark as depicted in Exhibit A, to Canadian customers in the normal course of trade. Contrary to the Requesting Party’s submissions, as described above, Ms. Lowe-Hartshorne provides facts demonstrating use of the Mark during the relevant period, rather than providing “mere” statements of use.

[19]           Accordingly, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods within the meaning of sections 4(1) and 45 of the Act.

Disposition

[20]           In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with section 45 of the Act, the registration will be maintained.

______________________________

Andrew Bene

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: 2016-09-14

APPEARANCES

Ruby Janet Lowe-Hartshorne                                                  For the Registered Owner

LuAnne Morrow                                                                      For the Requesting Party

AGENTS OF RECORD

Bereskin & Parr LLP/S.E.N.C.R.L.,S.R.L.                             For the Registered Owner

Borden Ladner Gervais LLP                                                   For the Requesting Party