LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 9
Date of Decision: 2016-01-19
IN THE MATTER OF A SECTION 45 PROCEEDING
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DJB
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Requesting Party |
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Oyster World (1994) Inc. |
Registered Owner |
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TMA419,017 for LAMBRETTA |
Registration |
[1] At the request of DJB (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 July 17, 2013 to Oyster World (1994) Inc. (the Owner), the registered owner of registration No. TMA419,017 for the trade-mark LAMBRETTA (the Mark).
[2] The Mark is registered for use in association with:
Clothing, namely jeans, shirts, sweaters, jackets, knit tops, pants, vests, coats, underwear and socks; footwear; hats, travel bags; watches; and perfume products (the Goods).
[3] The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with each of the Goods, at any time between July 17, 2010 and July 17, 2013 (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.
[4] The relevant definition of use with respect to goods is set out in section 4(1) of the Act:
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 mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc, (1980) 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the goods specified in the registration during the relevant period [see Uvex Toko Canada Ltd v Performance Apparel Corp 2004 FC 448, 31 CPR (4th) 270].
[6] In response to the Registrar’s notice, the Owner furnished the affidavit of Mr. Joey Pearl executed on October 8, 2013. Both parties filed written representations; no hearing was held.
[7] On April 14, 2014, the Owner requested a retroactive extension of time to file additional evidence, namely a second affidavit of Mr. Pearl. As per the Registrar’s letter dated May 14, 2014, the Registrar refused the Owner’s request. Consequently, such affidavit, together with the exhibits attached thereto, was not made part of the record and was not considered as evidence in this proceeding.
The Owner’s evidence of use of the Mark
[8] In his affidavit, Mr. Pearl attests that he has been President of the Owner since 1994. He alleges that, since that date, he has developed a line of jeans in association with the Mark which were manufactured in Italy exclusively for the Owner. He adds that various labels were attached to these jeans. These labels are illustrated on photographs identified as A, B, C, D, E and F annexed to his affidavit.
[9] In paragraph 9 of his affidavit, Mr. Pearl alleges that the Owner donated ‘over the last six months’ approximately 3,000 pairs of jeans bearing the Mark to charitable associations, namely Mada and Sun Youth Organization, both of the City of Montreal, Quebec, for which were issued charitable tax receipts.
[10] Mr. Pearl attaches no documentation to support his allegation. Furthermore, he provides no specific dates such that it is not clear whether the donations occurred during or after the Relevant Period. In any case, the absence of evidence that the Owner’s donations of jeans bearing the Mark to charitable organizations were part of an overall activity carried on for the purpose of making a profit and developing goodwill in the Mark during the Relevant Period [see Lin Trading Co v CBM Kabushiki Kaisha (1985), 5 CPR (3d) 27 (TMOB), affirmed, (1987), 14 CPR (3d) 32 (FCTD) and (1988), 21 CPR (3d) 417 (FCA)], I am unable to conclude that these donations constituted use of the Mark, during the Relevant Period, in the normal course of trade.
[11] Except for the aforementioned jeans, there is no reference to any other Goods in his affidavit. Moreover, there is no evidence of a single commercial transaction occurring during the Relevant Period.
[12] In view of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with the Goods within the meaning of sections 4 and 45 of the Act.
[13] Under these circumstances, unless the Owner has demonstrated the existence of special circumstances, justifying non-use of the Mark in Canada in association with the Goods during the Relevant Period, the Mark will be expunged.
Evidence concerning ‘special circumstances’ justifying non-use
[14] Mr. Pearl alleges that since March 16, 2007 the Owner has been in litigation with Lambretta Clothing of America over, among other issues, the Lambretta trade name, for which the trial was set for March 11, 2014 to March 14, 2014. He states that the Owner has pleaded in these proceedings that it was deprived the right to use or license the Mark given the failure of Lambretta Clothing Company (UK) Limited and another third party company to sign a cancellation agreement dated August 3, 2006, as well as their failure to carry out the terms of other agreements dated June 10, 2005 and August 3, 2005. I note that these agreements were dated well before the Relevant Period.
[15] Finally, with respect to the aforesaid litigation, Mr. Pearl affirms that the Owner has requested the court to confirm, inter alia, it is the sole owner of the Mark.
[16] Mr. Pearl asserts that, as a result of this situation, the Owner was deprived from the sale of its remaining inventory of jeans bearing the Mark and the licensing of the Mark to third parties.
[17] Mr. Pearl adds that the Owner has design teams and marketing facilities ready to promote, market and sell jeans in association with the Mark in North America should the court rule in its favour.
The parties’ position
[18] The Requesting Party argues that those facts do not demonstrate special circumstances excusing the absence of use of the Mark in Canada as Mr. Pearl’s allegations are vague and ambiguous. It contends that the allegations do not explain nor demonstrate how practically and concretely such litigation prevents the Owner from using the Mark. Finally, it submits that the reasons set forth do not permit a reasonable determination of whether the circumstances were beyond the control of the Owner nor is it possible to assess what really prompted the alleged inability to use the Mark. In this respect, there is no evidence of any restrictions or conditions that would have actually deprived the Owner from control and ownership of the Mark.
[19] The Owner claims that the content of Mr. Pearl’s affidavit demonstrates the existence of special circumstances justifying the non-use of the Mark as the litigation between the Owner and Lambretta Clothing of America was aimed at determining the title and ownership of the Mark. As a result of that situation, the Owner was deprived from selling the inventory associated with the Mark as well as from licensing the Mark to third parties. Finally, the Owner pleads that if it were not for the litigation, the Owner would be actively licensing the Mark and that on the date of the affidavit, the Owner’s design teams and marketing facilities were ready to promote, market and sell jeans in association with the Mark, should the litigation end in favour of the Owner.
[20] Both parties referred to the test outlined in Scott Paper Limited v Smart & Biggar 2008 FCA 129, 65 CPR (4th) 303. For the reasons detailed below, I conclude that the Owner has not established the existence of special circumstances, within the meaning of section 45 of the Act, which would excuse the non-use of the Mark during the Relevant Period.
Analysis of the evidence explaining the non-use of the Mark
[21] The concept of ‘special circumstances’ has been defined in the jurisprudence. Recently, the Federal Court, in Gouverneur Inc v The One Group LLC 2015 FC 128, did an analysis of the relevant jurisprudence on the matter, from which it derived the procedure to follow.
[22] Firstly, the Registrar must identify the reason for non-use of the Mark. Secondly, the Registrar must decide whether the circumstances explaining the non-use of the Mark are ‘special circumstances’, i.e. unusual, out of the ordinary, or exceptional. Finally, if there exists ‘special circumstances’ the Registrar must decide whether the non-use is excused by the special circumstances, by considering the three criteria laid out in Canada (Registrar of Trade Marks) v Harris Knitting Mills Ltd (1985), 4 CPR (3d) 488 (FCA), namely:
1) The length of time during which the trade-mark has not been used;
2) Whether the registered owner’s reasons for not using its trade-mark were due to circumstances beyond its control; and
3) Whether there exists a serious intention to shortly resume use.
[23] It is clear from the evidence described above that there is no proof of use of the Mark in association with the Goods during the Relevant Period. There is also no evidence of the last time the Mark was used, within the meaning of section 4(1) of the Act, in association with the Goods.
[24] I agree with the Requesting Party that the facts, described in paragraphs 14 to 17 above, do not demonstrate special circumstances excusing the absence of use of the Mark, as the allegations are vague and ambiguous. The assertions made by Mr. Pearl do not explain nor demonstrate how the litigation between the Owner and third parties actually prevented the Owner from using the Mark during the Relevant Period in association with the Goods.
[25] In this respect, there is no allegation that a restraining order or the like had been issued against the Owner. As it appears from the register, until proven otherwise before a competent court of justice, the Owner was at any relevant time and still is the registered owner of the Mark.
[26] Without any further details as to why the pending litigation prevented the Owner from using the Mark in Canada in association with the Goods, it is impossible to reasonably determine or assess whether the circumstances described by Mr. Pearl were the cause of non-use of the Mark. If the Owner chose to refrain from using the Mark pending the outcome of the litigation, absent further details, such a decision can only be considered a voluntary decision of the Owner. Generally, voluntary decisions do not constitute special circumstances [see Harris Knitting Mills, supra and Lander Co Canada v Alex E Macrae & Co (1993), 46 CPR (3d) 417 (FCTD)].
[27] This is sufficient to dispose of this issue. However, were I to accept that the reason for non-use was the pending litigation, as attested by Mr. Pearl, I will briefly discuss whether this constitute special circumstances excusing non-use of the Mark in light of the aforementioned three criteria set out by the Federal Court of Appeal in Harris Knitting Mills.
[28] First, there is no allegation as to the date of last use of the Mark in Canada. In cases such as this, where the registered owner has not alleged use at any time, the registration date is considered the relevant date for the purposes of the first criterion [see Oyen Wiggs & Mutala LLP v Rath 2010 TMOB 34, 82 CPR (4th) 77]. Therefore, as the Mark was registered in October 1993, the period of non-use is more than 20 years. Even if I were to assume that the Owner was using the Mark until prior to the start of litigation (March 16, 2007), this constitutes a lengthy period of more than six years of non-use of the Mark.
[29] Moreover, as discussed above, there is not enough information to determine if the litigation actually prohibited the Owner from using the Mark during the Relevant Period. The reasons provided by Mr. Pearl, or lack thereof, do not permit a reasonable determination of whether the circumstances were beyond the Owner’s control, as opposed to a voluntary business decision on its part.
[30] Finally, the allegation that the Owner has design teams and marketing facilities ready to promote, market and sell jeans in association with the Mark in North America, should the court rule in its favour, falls short from establishing the Owner’s intention to resume shortly the use of the Mark. Furthermore, there is no evidence that the Owner has taken steps to resume use of the Mark in Canada in particular. At most, Mr. Pearl refers to North America. Therefore, any use of the Mark contemplated could be elsewhere in North America, such as in the United States exclusively. In any event, Mr. Pearl refers solely to jeans and not the Goods in general.
Disposition
[31] Pursuant to the authority delegated to me under section 63(3) of the Act and in accordance with the provisions of section 45 of the Act, the registration will be expunged.
______________________________
Jean Carrière
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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No hearing held
Agents of Record
Robic For the Registered Owner
DJB For
the Requesting Party