LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 173
Date of Decision: 2012-09-28
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Smart & Biggar against registration No. TMA605,807 for the trade-mark DREAM in the name of Hearts on Fire Company, LLC
[1] At the request of Smart & Biggar, the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on February 10, 2010 to Hearts on Fire Company, LLC (the Registrant), the registered owner of registration No. TMA605,807 for the trade-mark DREAM (the Mark).
[2] The Mark is registered for use in association with “jewelry”.
[3] Section 45 of the Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and services specified in the registration at any time within the three year period immediately preceding the date of the notice and, if not, the date when it was last in use and the reason for the absence of such use since that date. In this case, the relevant period for showing use is between February 10, 2007 and February 10, 2010 (the Relevant Period).
[4] The relevant definition of “use” in association with wares is set out in section 4(1) of the Act:
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.
[5] In response to the Registrar’s notice, the Registrant filed the affidavit of Glenn Rothman, Chief Executive Officer of the Registrant, sworn on September 2, 2010. Only the Registrant filed written representations; an oral hearing was not held.
[6] In his affidavit, Mr. Rothman states that, during the Relevant Period, the Registrant sold its DREAM brand diamonds and jewelry through authorized jewellers in various countries, including Canada. He states that each DREAM diamond, whether sold individually or in a piece of jewelry, was laser inscribed with the Mark, the Registrant’s logo and a unique identification number. In further support of his assertion of use of the Mark in association with jewelry, Mr. Rothman provides the following exhibits, all of which, I note, prominently display the Mark:
• Exhibit D consists of a photograph of an in-case retail display for DREAM brand jewelry used in Canada during the Relevant Period.
• Exhibit E consists of brochures produced by the Registrant and distributed to jewellers who use them in customer presentations at the time of sale.
• Exhibit F consists of a representative Diamond Identity Document, which is given to purchasers in Canada with each piece of DREAM brand jewelry at the time of purchase.
[7] As proof of sales during the Relevant Period, Mr. Rothman attests that sales of DREAM brand jewelry by the Registrant to its authorized jewellers in Canada exceeded over USD$1.6 million during the Relevant Period. Attached as Exhibit G to his affidavit are 23 representative invoices confirming such sales of various DREAM brand jewelry pieces.
[8] In view of the foregoing, I am satisfied that the Registrant has demonstrated use of the Mark in association with “jewelry” during the Relevant Period within the meaning of sections 4 and 45 of the Act.
Disposition
[9] Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be maintained.
______________________________
Andrew Bene
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office