LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 22
Date of Decision: 2011-02-03
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Afexa Life Sciences Inc. against registration No. TMA488,393 for the trade-mark SMART (FX) Design in the name of Ontario Corp. #1304397
[1] At the request of Borden Ladner Gervais LLP (the Requesting Party), the Registrar of Trade-marks forwarded a notice under s. 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) on December 5, 2008 to Ontario Corp. #1304397 (the Registrant), the registered owner of the above referenced trade-mark.
[2] The trade-mark Smart (fx) Design (the Mark) is registered in association with the wares:
(1) Non-alcoholic herbal beverages consisting of; pure spring water, lemon juice, white grape juice, panax ginseng, ginko biloba, guarana, gotu kola, astralagus, licorice, and a mix of all-natural fruit flavours, potassium sorbate.
(2) Confectionary packaged foods namely snack bar consisting of: sesame seeds, almonds, raisins, sunflower seeds, hemp seeds, dates, walnuts, pumpkin seeds, brown rice, rice syrup, cornmeal, malted barley, oat flower, honey, carob, cocoa, molasses, herbal extracts: gingko biloba, ginseng, agave juice, natural vanilla flavor, flax seed/oats, honey, raisins, organic chocolate, lecithin, evaporated cane juice, chocolate liquor, cocoa butter.
[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 December 5, 2005 and December 5, 2008 (the Relevant Period).
[4] “Use” in association with wares is set out in s. 4(1) and 4(3) of the Act. In this case, only s. 4(1) applies:
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 furnished the affidavit of its President, Lori Ann Webster, sworn February 19, 2009, together with exhibits. Both the Registrant and Requesting Party filed written submissions; an oral hearing was not requested.
[6] It is well established that mere assertions of use are not sufficient to demonstrate use in the context of a s. 45 proceeding [Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1979), 45 C.P.R. (2d) 194, aff’d (1980), 53 C.P.R. (2d) 63 (F.C.A.)]. Although the threshold for establishing use in these proceedings is quite low [Lang, Michener, Lawrence & Shaw v. Woods Canada Ltd. (1996), 71 C.P.R. (3d) 477 (F.C.T.D.)], and evidentiary overkill is not required [Union Electric Supply Co. v. Canada (Registrar of Trade Marks) (1982), 63 C.P.R. (2d) 56 (F.C.T.D.)], 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 wares or services specified in the registration during the relevant period.
[7] Mrs. Webster’s affidavit is short, consisting of only four paragraphs reproduced below:
(1) That I am President of Ontario Corp #1304397.
(2) That SMART(fx) Distributing Ltd, is a wholly owned subsidiary of Ontario Corp. #1304397.
(3) Provided herein is a true copy of sales invoice #00046728. A sample of the actual label used for one of the products listed on the invoice is provided herein.
(4) Provided herein is a true copy of sales invoice #9. A sample of the actual label for one of the products listed on the invoice is provided herein.
[8] As a preliminary matter, I note that the exhibits (invoices and labels) attached to the affidavit have not been notarized. However, taking into consideration the purpose and intent of s. 45 and the fact that Ms. Webster has referenced the exhibits in her affidavit, I am prepared to accept them. In this regard, it is well established that technical deficiencies should not be a bar to a successful response to a s.45 Notice where there is sufficient evidence to conclude the mark was in use [see Baume & Mercier S.A. v. Brown (1985), 4 C.P.R. (3d) 96 (F.C.T.D.)]. Exhibits that have not been notarized, but that are identified in the affidavit have been considered acceptable in other instances [see Borden & Elliot c. Raphaël Inc., 2001 CarswellNat 3412 (T.M.O.B.); and see MBM & Co. v. Belize Bicycle Canada Reg’d 2010 CarswellNat 3503 (T.M.O.B.) where un-notarized exhibits were not accepted as they were neither referenced nor identified in the affidavit].
[9] With respect to the invoices, both reflect sales in Canada during the Relevant Period. Invoice #9 lists a product described as "Snax - Almond Raisin", which appears to correspond to one of the labels provided that is marked with the same words. The Mark appears on the label below the words “Natural Snax”, and although the label contains information from which it is reasonable to assume that the product is not a beverage (wares (1)), a specific product description cannot be found anywhere in evidence that would allow me to conclude that this invoice and label correspond to wares (2) - confectionary packaged foods namely a snack bar.
[10] On the other hand, invoice #46728 refers to sales of “Pure Genius – Cranberry Gingko”, which I have determined from the other label provided, is the name of a non-alcoholic herbal beverage as described in wares (1). The Mark appears clearly on the label, as do many of the ingredients listed in the statement of wares (1). As a result, I am prepared to find that this invoice shows evidence of sales of wares (1) referred to above.
[11] I note that the invoices have been issued by a company called SMART(fx) Distributing Ltd., and that Mrs. Webster states in her affidavit that SMART(fx) Distributing Ltd. is a wholly owned subsidiary of the Registrant. The fact that SMART(fx) Distributing Ltd. is a wholly owned subsidiary of the Registrant is insufficient by itself to satisfy the licensing provisions of the Act (s.50). However, although it would have been preferable for the affiant to provide more information in this regard, I find it reasonable to infer that (as its name implies), SMART(fx) Distributing Ltd., is the Registrant’s distributor. The law is clear that the use of a trade-mark at any point along the chain of distribution will accrue to the benefit of the registrant, provided that the wares bearing the trade-mark originate from the registrant [Manhattan Industries Inc. v. Princeton Manufacturing Ltd. (1971), 4 C.P.R. (2d) 6 (F.C.T.D.); Osler, Hoskin & Harcourt v. United States Tobacco Co. (1997), 77 C.P.R. (3d) 475 (F.C.T.D.)].
[12] Although more information would have been preferable, I see nothing to suggest that the invoice #46728 reflects token sales. This invoice appears to reflect the sale of 10 cases, each containing 10 “Pure Genius – Cranberry Gingko beverages. The invoice also lists other products in similar quantities that appear to be beverages of another flavour. In addition, the fact that the invoice was issued by a subsidiary company whose name suggests that its purpose is to distribute Smart(fx) wares further supports a conclusion that the evidenced sales were in the normal course of trade.
[13] Accordingly, I find that there has been use of the Mark on non-alcoholic herbal beverages pursuant to s.4 and s.45 of the Act.
[14] In view of the foregoing, and pursuant to the authority delegated to me under s. 63(3) of the Act, the registration will be amended, in compliance with the provisions of s. 45 of the Act, to delete:
“confectionary packaged foods namely snack bar consisting of: sesame seeds, almonds, raisins, sunflower seeds, hemp seeds, dates, walnuts, pumpkin seeds, brown rice, rice syrup, cornmeal, malted barley, oat flower, honey, carob, cocoa, molasses, herbal extracts: gingko biloba, ginseng, agave juice, natural vanilla flavor, flax seed/oats, honey, raisins, organic chocolate, lecithin, evaporated cane juice, chocolate liquor, cocoa butter”
______________________________
P. Heidi Sprung
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office