Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2016 TMOB 194

Date of Decision: 2016-12-21

IN THE MATTER OF A SECTION 45 PROCEEDING

 

	Hartmann USA, Inc.	Requesting Party
and
	McKin Health Care Specialties Inc.	Registered Owner
	TMA437,835 for LADY DIGNITY	Registration

[1]  At the request of Hartmann USA, Inc. (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 April 7, 2015 to McKin Health Care Specialties Inc. (the Owner), the registered owner of registration No. TMA437,835 for the trade-mark LADY DIGNITY (the Mark).

[2]  The Mark is registered for use in association with the following goods:

Underpants, panties, underwear, undergarments.

[3]  Section 45 of the Act requires the registered owner of a trade-mark to show, with respect to each of the goods or services specified in the registration, whether the trade-mark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date. The relevant period in this case is any time between April 7, 2012 and April 7, 2015.

[4]  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. While mere assertions of use are not sufficient to demonstrate use in the context of a section 45 proceeding [see Plough (Canada) Ltd v Aerosol Fillers Inc (1979), 45 CPR (2d) 194, aff’d (1980), 53 CPR (2d) 63 (FCA)], the threshold for establishing use in these proceedings is quite low [see Lang, Michener, Lawrence & Shaw v Woods Canada Ltd (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [see Union Electric Supply Co v Canada (Registrar of Trade-marks) (1982), 63 CPR (2d) 56 (FCTD)]. However, 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 or services specified in the registration during the relevant period.

• [5] For the purposes of this decision, the relevant definition of “use” 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.

[6]  In response to the Registrar’s notice, the Owner furnished an affidavit of its President, Alison O’Brien, sworn June 26, 2015, together with Exhibits A to C.

[7]  Only the Owner filed written representations and no hearing was requested.

The Owner’s evidence

[8]  Ms. O’Brien states that, during the relevant period, the Owner sold “underpants, panties, underwear, undergarments” in association with the Mark in Canada. She collectively refers to these products as the “Products” and I will do the same while reviewing her affidavit.

[9]  Ms. O’Brien explains that the Owner sold the Products to Canadian customers by selling directly to distributors, drug stores and other retailers and to end consumers directly in the normal course of trade.

[10]  In support, Ms. O’Brien attaches the following exhibits to her affidavit:

-  Exhibit A, which she describes as a collection of promotional material, advertising, pamphlets and brochures displaying the Mark thereon. Ms. O’Brien confirms that these brochures and advertisements were distributed to the Owner’s customers in Canada during the relevant period.

-  Exhibit B, which she describes as a sampling of invoices showing Canadian sales of the Products by the Owner in its normal course of trade.

-  Exhibit C, which she describes as a picture of the Owner’s branded products showing how the Mark was displayed on the Products.

Analysis

[11]  With respect to the collection of promotional material at Exhibit A and the picture at Exhibit C, I note this evidence indicates the existence of a family of products for incontinence care needs under the trade-mark DIGNITY. These products include washable/reusable protective underwear for men and women, reusable personal pads, underpads and sheeting protection, and disposable underpads. However, only one of these products is clearly marked with the Mark as a sub-brand, namely a washable protective underwear described as “Lady Dignity Panty with built-in protective pouch”. Likewise, the only LADY DIGNITY product referred to in the sampling of invoices at Exhibit B is the “Lady Dignity Panty” in various sizes (i.e. small, medium, large, etc.)

[12]  In its written representations, the Owner appears to acknowledge that the furnished evidence only shows such clear use of the Mark in association with “panties”. Nevertheless, it submits that:

The terms “underpants”, “underwear”, “undergarments” and “panties” are used interchangeably. The term “underwear” is defined as “clothing that is worn next to the skin and under clothing”; the term “undergarment” is defined as a “piece of underwear”; the term “underpants” is defined as “an undergarment covering the lower part of the torso and having two holes for the legs”; and the term “panties” is defined as “a woman’s or child’ undergarment covering the lower trunk and made with a closed crotch”.

[13]  However, contrary to the Owner’s submission, I do not accept that use of the Mark in association with “panties” extends to cover “underpants”, “underwear” and “undergarments”. In this respect, I note that these goods are separately listed in the statement of goods. As such, for the Owner to maintain its registration for the broader goods “underpants”, “underwear” and “undergarments”, it had to show use in association with such goods otherwise than by reference to “panties” [see John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA); Sharp Kabushiki Kaisha v 88766 Canada Inc (1997), 72 CPR (3d) 195 (FCTD); and Osler, Hoskin & Hartcourt LLP v Childs and Weatherbie Inc, 2016 TMOB 60]. Furthermore, this is not a registration that involves a long list of goods such that providing evidence of use with respect to “underpants”, “underwear” and “undergarments” would have required evidentiary overkill.

[14]  In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “panties” only; I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “underpants”, “underwear” and “undergarments” within the meaning of sections 4(1) and 45 of the Act. As the Owner furnished no evidence of special circumstances excusing non-use of the Mark in association with these goods, the registration will be amended accordingly.

Disposition

[15]  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 amended to delete the following goods:

-  Underpants, … underwear, undergarments.

[16]  The amended statement of goods will read as follows:

-  Panties.

______________________________

Annie Robitaille

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

 

 

No Hearing Held

 

AGENTS OF RECORD

 

Riches, McKenzie & Herbert LLP  FOR THE REGISTERED OWNER

Ridout & Maybee LLP  FOR THE REQUESTING PARTY