LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2017 TMOB 17

Date of Decision: 2017-02-20

IN THE MATTER OF A SECTION 45 PROCEEDING

	Dimock Stratton LLP	Requesting Party
and
	Sharp Kabushiki Kaisha also trading as Sharp Corporation	Registered Owner
	TMA804,352 for SHARP & Design	Registration

[1]  At the request of Dimock Stratton 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 August 21, 2014 to Sharp Kabushiki Kaisha also trading as Sharp Corporation (the Owner), the registered owner of registration No. TMA804,352 for the trade-mark SHARP & Design, displayed below (the Mark):

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

(1) Chemical developers for copying machines; chemical developers for facsimile machines; photographic supplies, namely, blueprint paper, photographic paper, photographic sensitizers, photographic dry plates, photographic developers, flash powder, photographic fixers, unexposed photographic films; ink [toners]; ink [toners] for photocopiers; ink [toners] for facsimile machines; ink [toners] for computer printers; toner cartridges; toner cartridges [filled] for photocopiers; toner cartridges [filled] for facsimile machines; toner cartridges [filled] for computer printers; pigments for photographic and printing purposes; ink cartridges [filled]; ink cartridges [filled] for photocopiers; ink cartridges [filled] for facsimile machines; ink cartridges [filled] for computer printers; printing ink; ultrasonic washing machines for manufacturing semiconductor, namely, printed-circuit boards, lead frame and relay contacts; dishwashers; washing machines; vacuum cleaners; food processors [electric]; garbage [waste] disposals; ultrasonic washing machines and their parts; electronic cash registers; photographic machines and apparatus, namely cameras and video camcorders; cinematographic machines and apparatus, namely cameras and video camcorders; optical apparatus and instruments, namely, image verification sensor, used in the inspection process, namely, image sensor cameras and image positioning controllers; alphanumeric character verification apparatus, used in the inspection process, namely, image sensor cameras and image positioning controllers; power distribution or control machines and apparatus, namely, electrical power distribution units for industrial commercial and household purposes; power supply; alternating current adapters; switching power supply; inverters used in the residential photovoltaic system; inverters [electricity]; rotary converters; Electric phase modifiers for industrial, commercial and household purposes; electrical batteries and cells for industrial, commercial and household purposes for camera, cell-phone and electronic appliances; solar batteries; solar modules consisting of solar cells; combined modules for photovoltaic power generation, consisting of thin-film solar cells and light-emitting diodes; electric or magnetic meters; wire, electric; cable, electric; coaxial cables; fiber optic cables; junction sleeves for electric cable; flat irons, electric; hair-curlers, electrically heated; electric buzzers; portable telephones; portable telephones incorporating tuners for television broadcasting reception; portable telephones incorporating tuners for digital terrestrial television broadcasting reception; personal digital assistants incorporating portable telephones; telephones; low noise block down converters for satellite broadcasting reception; tuners for television broadcasting reception; tuners for digital terrestrial television broadcasting reception; tuners for digital cable television broadcasting reception; tuners for terrestrial television broadcasting reception; televisions; television receivers; liquid crystal display televisions; liquid crystal display television receivers; optical disc recorders and players; digital video disk recorders and players; digital versatile disk recorders and players; mini optical disk recorders and players; compact disk recorders and players; videotape recorders and players; digital audio recorders and players; audio amplifiers; loudspeakers; component-type stereo including optical disk recorders and players, compact disk recorders and players, loudspeakers, a tuner, and an amplifier; sound recording apparatus and instruments, namely, cassette tape recorders and players; facsimile machines; video entry phones; intercoms; display modules namely organic electroluminescence display panels and organic electroluminescence modules; cameras and parts and fittings therefor for digital cameras, camcorders, camera phones, portable telephones and digital still cameras; photo couplers; devices for infrared-ray communication, namely, computer hardware for wireless communications between electronic devices; camcorders; electronic signboards consisting of light-emitting diodes; sound recording machines and apparatus, namely, microphones and optical and magneto-optical disc recording drives; navigation apparatus and mapping displays for vehicles comprising on-board computers, GPS receivers, GPS transmitters; two-way radio transmitters; transceivers; computers; notebook computers; laptop computers; desktop computers; electronic desk calculators; pocket calculators; electronic calculators; computer monitors; audiovisual monitors; liquid crystal display monitors; liquid crystal displays, screens and panels; liquid crystal display panels; computer servers; personal computer servers; liquid crystal display projectors; rear photographic projectors; rear projection television; personal digital assistants; electronic dictionaries; electronic dictionaries recorded on magnetic media; data media recorded the contents of electronic dictionaries pre-recorded magnetic and optical discs featuring electronic dictionaries; computer operating system software; computer software for controlling electronic copying machines in which a printer function, a scanner function, and a facsimile function are entirely or partially provided; computer software for translation; computer software for creating animation; computer software for browsing or editing video, images and sound; computer software for editing sound recorded in mini disks; computer software for saving documents in the electronic filing system; computer groupware for scheduling, managing documents, recording address and electronic mailing; laser pointers; printers for use with computers; bar-code printers; point-of-sales terminals; programmable controllers, namely, programmable logic controllers, electric controllers; integrated circuits; large scale integrated circuits; flash memory chips and flash memory drives; laser diodes; semiconductor lasers; electronic copying machines; ink-jet copying machines; electronic copying machines in which a printer function, a scanner function, and a facsimile function are entirely or partially provided; ink-jet copying machine in which a printer function, a scanner function, and a facsimile function are entirely or partially provided; facsimile machines in which a copying function, a printer function, and a scanner function are entirely or partially provided; consumer video games; electronic circuitboards and recorded programs for hand-held games with liquid crystal displays recorded on compact disk with read-only-memories recorded; electronic circuit boards and recorded automatic performance programs for electronic musical instruments recorded on compact disk with read-only-memories recorded; recorded optical disc, digital video discs, digital versatile discs, mini discs, compact discs and video tapes; recorded digital video disk (non-musical); digital video disk data media [recorded]; digital versatile disk data media (musical); downloadable electronic publications in the nature of books, magazines, novels, photo books and comics in the field of humanistic, education, history, language, computers, medical science, literary, arts, music, entertainment; commercial air-conditioners; industrial air purifiers; microwave ovens for cooking; solar water heaters; lamps consisting of light-emitting diodes; lamps incorporating solar cells; street lamps; street lamps incorporating solar cells; electric refrigerators; electric freezers; electrical cooking range utilizing super heated steam and electric cooking ovens with a function of a microwave oven utilizing super heated steam; electrically heated carpets; electric blankets [for household purposes]; hot plates [for household purposes]; induction cooking heaters; crock pots having a function of electronic hot plates; electromagnetic induction cookers for household purposes; electric toaster ovens for household purposes; electric kettles for household purposes; electric rice-cookers for household purposes; humidifiers for household purposes; household tap-water filters; water purifiers for household purposes; air conditioners; air purifiers for household purposes; dehumidifiers for household purposes; ion conditioners for purifying air for household purposes; dehumidifiers for commercial use; drinking water coolers; electric bathroom heating and drying apparatus for household purposes, namely, electric heating and electric laundry dryers; electric cloth drying machines for household purposes, namely cloth dryers; electric fan heaters; kerosene heaters; electric heaters; toilets stool units with washing water squirter and bidets; kerosene fan heaters; electrical ovens utilizing super heated steam and electric ovens with a function of a microwave oven utilizing super heated steam; electrical cooking range utilizing super heated steam and electric cooking ovens with a function of a microwave oven utilizing super heated steam; inking ribbons for facsimile machines; cassette type inking ribbons for facsimile machines; imaging film type inking ribbons for facsimile machines; inking ribbons for copying machines; cassette type inking ribbons for copying machines; inking ribbons for computer printers; cassette type inking ribbons for computer printers; paper for facsimile machines; thermal paper for facsimile machines; copier paper; stationery ,namely, paper and cardboard; building glass incorporating light-emitting diodes and solar cells namely, glass panels for building construction purpose incorporating light-emitting diodes and solar cells; building construction glass.

(2) Computer monitors; audiovisual monitors; liquid crystal display monitors; electric copying machines; toner cartridges; ion conditioners for purifying air for household purposes; rear photographics projectors and liquid crystal display projectors.

[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 goods 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 the trade-mark was last used and the reason for the absence of such use since that date. In this case, the relevant period for showing use is August 21, 2011 to August 21, 2014.

[4]  The relevant definition of “use” in association with goods is set out in section 4(1) of the Act as follows:

[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 section 45 proceedings is quite 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 [John Labatt Ltd v Rainier Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)].

[6]  In response to the Registrar’s notice, the Owner furnished four affidavits, as described below. Both parties filed written representations; an oral hearing was not requested.

The Owner’s Evidence

[7]  In response to the Registrar’s notice, the Owner furnished the following four affidavits:

• the affidavit of Kiyoshi Yonetsu, a General Manager with the Owner, sworn on March 18, 2015, in Osaka, Japan;

• the affidavit of Miho Koga, Supply Chain Manager of Sharp Electronics of Canada Ltd. (Sharp Canada), sworn on March 23, 2015, in Mississauga, Ontario;

• the affidavit of Umihiko Komagata, a Manager with Sharp Canada, sworn on March 23, 2015, in Mississauga, Ontario; and

• the affidavit of Hajime Kobata, a Director with Sharp Canada, sworn on March 23, 2015, in Mississauga, Ontario.

The Yonetsu Affidavit

[8]  In the Yonetsu affidavit, Kiyoshi Yonetsu attests that the Owner is a Japanese multinational corporation that designs and manufactures “many commercial and industrial electronic products”. Otherwise, the affidavit focuses on the registered goods, “air conditioners”.

[9]  In particular, the affiant states that the Owner began producing air conditioners in 1958. The affiant explains that the Owner sells its air conditioners in Canada to a distributor, RBL A/C Inc., who then sells the products to “installers”, who in turn sell the products to “end users, including home and business owners”.

[10]  With respect to sales during the relevant period, the Yonetsu affidavit includes a chart setting out the Owner’s annual Canadian sales figures for air conditioners sold in association with the Mark to RBL A/C Inc. from 2012 to August 2014. According to the chart, such sales exceeded US$1,000,000 in total.  

[11]  The following exhibits are attached to the Yonetsu affidavit:

·  Exhibit A consists of several photographs of boxes, which the affiant attests are representative of the packaging in which the Owner’s air conditioners were sold in Canada during the relevant period. The Mark is visible on some of the boxes, but the remaining text is illegible.

·  Exhibit B is a January 2015 printout from what appears to be the Owner’s website, showing various air conditioner models, on their own and in a household setting. The exhibited webpage names RBL A/C Inc. as the Canadian distributor for the products. However, the Mark does not appear on any of the depicted air conditioners.

·  Exhibit C consists of two photographs showing air conditioners displayed at a kiosk. A variation of the Mark is visible on the air conditioners themselves and on accompanying signage.

·  Exhibit D consists of 10 invoices, showing sales of air conditioners from the Owner to RBL A/C Inc. in Montreal during the relevant period. The Mark does not appear on the invoices.

The Kobata Affidavit

[12]  In the Kobata affidavit, Hajime Kobata explains that Sharp Canada is a direct subsidiary of the Owner and a licensee of the Owner’s trade-marks in Canada. The affiant attests that the Owner controls the quality of the products Sharp Canada sells in Canada in association with those trade-marks.

[13]  With respect to specific products sold, Hajime Kobata states that the Owner has produced electronic cash registers and photocopiers since 1972 and data projectors, computer monitors and liquid crystal displays since 1981. The affiant states that Sharp Canada sells such products in Canada, either directly to the public or to retailers who in turn sell the products to end users, including home and business owners.

[14]  With respect to sales during the relevant period, the Kobata affidavit includes a chart setting out Sharp Canada’s annual sales figures for wholesale sales of copiers, electronic cash registers, data projectors and monitors in association with the Mark in Canada from 2011 to 2014. According to the chart, over the course of the relevant period, sales of copiers exceeded $100,000,000, sales of electronic cash registers exceeded $1,000,000, sales of data projectors exceeded $1,000,000 and sales of “Computer or LCD Monitors” exceeded $10,000,000.

[15]  The following exhibits are attached to the affidavit:

·  Exhibit A consists of five photographs depicting a number of boxes. Various product descriptions are printed on the boxes, for example, “PUNCH MODULE” and “DIGITAL FULL COLOR MULTIFUNCTIONAL SYSTEM”. The affiant identifies the depicted boxes as “packaging of various models of copiers/printers” and attests that the images are representative of the packaging in which the Owner’s copiers and printers were sold in Canada during the relevant period. The Mark is visible on most of the boxes.

·  Exhibit B is a March 2015 printout from what appears to be Sharp Canada’s website, showing various models of “Imagers/Copiers/Printers”. The Mark is not visible on the depicted products. However, I note that one of the depicted products, which appears to be a combined office photocopier and printer, has a model number that matches the model number on the box for a “DIGITAL FULL COLOR MULTIFUNCTIONAL SYSTEM” depicted at Exhibit A, as well as the listing for a “31 CPM COLOR MFP” in one of the invoices at Exhibit F (discussed below).

·  Exhibit C consists of two photographs: one depicting a box labelled “DATA PROJECTOR” and one depicting a box labelled “LAMP UNIT FOR PROJECTOR”. The affiant attests that the depicted boxes are representative of the packaging in which Sharp Canada sold data projectors and lamp units for data projectors in Canada during the relevant period. The Mark is visible on the depicted boxes.

·  Exhibit D consists of two photographs depicting boxes labelled “LCD MONITOR”, which the affiant attests are representative of the packaging in which Sharp Canada sold LCD monitors in Canada during the relevant period. The Mark is visible on the depicted boxes.

·  Exhibits E to H each consist of five invoices from Sharp Canada. In each exhibit, four of the five invoices are dated during the relevant period and appear to be for customers located in various Canadian cities.
The invoices at Exhibit E show sales of electronic cash registers.
The invoices at Exhibit F show sales of various printers, including the “31 CPM COLOR MFP”, as well as sales of other products, for example, “ENHANCED SCAN KIT”, “TONER CARTRIDGE” and “TONER CART. YELLOW”.
The invoices at Exhibit G show sales of various projectors, which the affiant attests are “data projectors”. I note that the only invoice explicitly for an “LCD” projector is dated outside the relevant period.
The invoices at Exhibit H show sales of “LCD Monitors” as well as other products described simply as, for example, “70" FULL HD PROFESSIONAL” and “RESOLUTION 60 HZ”; the affiant identifies the invoiced products as “computer monitor/liquid crystal display”.

The Komagata Affidavit

[16]  In the Komagata affidavit, Umihiko Komagata begins by confirming the licensing arrangement between the Owner and Sharp Canada.

[17]  With respect to specific products sold, the affiant states that, in 1989, the Owner “produced a 100 inch projector for big screen entertainment at home”. The affiant further states that Sharp Canada sells the Owner’s theatre projectors to retailers in Canada, who in turn sell the products to end users, including home and business owners.

[18]  The affidavit includes a chart setting out Sharp Canada’s annual sales figures for wholesale sales of theatre projectors in association with the Mark in Canada from 2012 to 2014. According to the chart, such sales during the relevant period exceeded $100,000 in total.  

[19]  The following exhibits are attached to the affidavit:

·  Exhibit A is a photograph of a box labelled “PROJECTOR”, which the affiant attests is representative of the packaging in which Sharp Canada sold theatre projectors in Canada during the relevant period. The Mark is visible on the depicted box.

·  Exhibit B is a March 2015 printout from what appears to be Sharp Canada’s website, showing various “LED TV” models. However, there is no mention or explanation of this exhibit in the affidavit. In any event, I note that the Mark is not visible on the depicted products.

·  Exhibit C consists of five invoices from Sharp Canada. Four of the invoices are dated during the relevant period and appear to be for customers located in various Canadian cities. The affiant attests that the invoices show sales of “projectors” and, indeed, the products listed include a “DLP FRONT PROJECTOR 3D”. I note that the only other products listed are a projector lamp and 3D glasses.  None of the invoices list or reference any type of “rear” projector.

The Koga Affidavit

[20]  In the Koga affidavit, Miho Koga again confirms the licensing arrangement between the Owner and Sharp Canada.

[21]  With respect to specific products sold, the affiant states that the Owner began producing air purifiers in 2000. The affiant states that Sharp Canada sells the air purifiers to retailers in Canada, who in turn sell the products to end users, including home and business owners.

[22]  The affidavit includes a chart setting out Sharp Canada’s annual sales figures for wholesale sales of “air purifiers” in association with the Mark in Canada from 2011 to 2014. According to the chart, such sales during the relevant period exceeded $100,000 in total.  

[23]  The following exhibits are attached to the affidavit:

·  Exhibit A is a photograph of a box labelled “REPLACEMENT FILTER FOR AIR PURIFIER”. The affiant attests that Sharp Canada sold air purifiers in Canada during the relevant period in the same packaging. The Mark is visible on the depicted box.

·  Exhibit B is a March 2015 printout from what appears to be Sharp Canada’s website, showing various air purifier models. One of the exhibited webpages also shows two models of “High Density Plasmacluster Ion Generators”, for household and “in-car” use, and describes those products as “recreating the natural chemical process that purifies the air in the earth’s troposphere.” The Mark is not visible on the depicted air purifiers and ion generators.

·  Exhibit C consists of 27 invoices from Sharp Canada. Twenty-four of the invoices are dated during the relevant period and appear to be for customers located in various Canadian cities. The affiant attests that the invoices show sales of “replacement filter for air purifier”. Indeed, a number of the invoices list products identified as “filters”. Other invoices list products including “PLASMA CLUSTER GENERATOR”, “AIR PURIFIER – PLASMACLUS” and “AIR PURIFIER WITH PCI”.

Preliminary matter

[24]  In its representations, the Requesting Party objects to the Registrar’s acceptance of the Yonetsu affidavit on the basis that the Owner “did not timely comply with the deadlines and did not pay the prescribed fee”. In this respect, I note that the Owner filed an incomplete copy of the Yonetsu affidavit in a timely manner, while simultaneously requesting an extension of time to file the complete original, stating that it had been couriered to the Owner’s representative but was not yet received. The request also authorized the Registrar to charge any fee payable in connection with the extension to the Owner’s deposit account. In response to the Registrar’s request for further submissions, the Owner furnished details regarding the courier delay and reiterated its direction regarding payment of the prescribed fee. The Registrar granted the extension and then accepted the original affidavit as evidence.

[25]  The Requesting Party submits that, in its initial request for an extension of time, the Owner “did not provide the necessary detailed reasons for its failure to file the original affidavit” and “did not pay the prescribed fee”. Although the Requesting Party concedes that such reasons were provided subsequently, the Requesting Party submits that “all the necessary reasons for requesting an extension … should have been stated in the original request”.

[26]  For its part, the Owner submits that the Registrar is functus officio in respect of its decision to grant the extension of time and, as such, cannot revisit it.  I note at the outset that the decision to grant the extension of time in this case was an administrative decision that did not determine the rights of the parties in any final sense. As such, the extension grant is not subject to the doctrine of functus officio. 

[27]  Nevertheless, the Registrar will only reconsider a ruling if that ruling was based on an error of law or on an error in the interpretation of the facts before the Registrar at the time that the ruling was made [see Magill v Taco Bell Corp (1990), 31 CPR (3d) 221 (TMOB)].  The Requesting Party has identified no error of law or error in the interpretation of the facts before the Registrar that would justify a reconsideration of that decision. Likewise, the Requesting Party has identified no error with respect to the required fee payment.

[28]  The Requesting Party cites Fjord Pacific Marine Industries Ltd v Canada (Registrar of Trade Marks) (1975), 20 CPR (2d) 108 (FCTD), for the proposition that a party requesting an extension of time should not be permitted to supplement its reasons for requesting the extension. However, in Fjord Pacific, the only reasons before the Court were those in the original extension request. Therefore, I do not consider Fjord Pacific to be on point.

[29]  The facts in this case are closer to those in Rust-Oleum Corp v Canada (Registrar of Trade Marks) (1986), 9 CPR (3d) 271 (FCTD). In Rust-Oleum, the Court held that, by virtue of the Registrar’s discretion to decide on requests for a retroactive extension of time, the Registrar “can request any additional information he requires to make a just decision” and “allow additional time for a reply” [at paragraph 14].

[30]  Moreover, the Federal Court has cautioned against letting technical requirements become “a trap for the unwary” where a trade-mark has been obviously in use by its rightful owner [see Baume & Mercier SA v Brown (1985), 4 CPR (3d) 96 (FCTD)]. Although that case dealt with technical aspects of affidavits, in view of the purpose and scope of section 45 proceedings I consider the general principle apt in the present case as well [see also Riches, McKenzie & Herbert LLP v Chaussures M & M Inc/M & M Footwear Inc, 2013 TMOB 222, 117 CPR (4th) 234].

[31]  Accordingly, the original affidavit of Kiyoshi Yonetsu remains of record as evidence in this proceeding.

Analysis

[32]  In its representations, the Owner submits that the evidence shows use of the Mark in Canada during the relevant period in association with the following registered goods: “air conditioners”, “electronic cash registers”, “electric copying machines”, “toner cartridges”, “computer monitors”, “liquid crystal display monitors”, “rear photographics projectors”, “liquid crystal display projectors”, “air purifiers” and “ion conditioners for purifying air for household purposes”.

[33]  I note at the outset that much of the evidence relates to use of the Mark by Sharp Canada. In the present case, Hajime Kobata, Umihiko Komagata and Miho Koga all attest to the fact that Sharp Canada is a licensee of the Owner and that the Owner controls the quality of the products Sharp Canada sells in Canada in association with the Mark. Consequently, I am satisfied that any demonstrated use of the Mark by Sharp Canada constitutes use of the Mark enuring to the benefit of the Owner.

Air conditioners

[34]  With respect to the registered good “air conditioners”, Kiyoshi Yonetsu attests to significant sales of such goods in Canada by the Owner during the relevant period and provides sample invoices showing such sales. In addition, the Yonetsu affidavit includes photographs showing the Mark displayed on packaging and the affiant attests that these images are representative of how the Mark was displayed on packaging for air conditioners sold in Canada during the relevant period.

[35]  I note that the statement of goods in the registration also includes “commercial air-conditioners”. However, Kiyoshi Yonetsu’s evidence appears to be that a single good, “air conditioners”, was sold for both home and business applications. To the extent that the Owner may have sold “commercial air-conditioners” as a product distinct from “air conditioners”, there is no reference to such a product in the evidence. Indeed, in its representations, the Owner does not appear to take the position that use of the Mark has been shown in association with “commercial air-conditioners”.

[36]  Accordingly, I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “commercial air conditioners”. However, I am satisfied that the Owner has demonstrated use of the Mark in association with “air conditioners” within the meaning of sections 4 and 45 of the Act.

Electronic cash registers

[37]  With respect to “electronic cash registers”, Hajime Kobata attests to significant sales of such goods in Canada by the Owner’s licensee, Sharp Canada, during the relevant period. This evidence is supported by sample invoices for such sales. However, despite attesting to such sales being made in association with the Mark, Hajime Kobata does not specify the manner of association. Nor are any images provided to show the Mark displayed on or otherwise associated with electronic cash registers.

[38]  Nevertheless, 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)]. In this respect, the Kobata affidavit includes a clear statement that the Owner sold electronic cash registers in Canada throughout the relevant period in association with the Mark. In view of that sworn statement, and given how the Mark appears consistently on the exhibited packaging boxes for the Owner’s various electronic goods sold in Canada during the relevant period, I find it reasonable to accept that the depicted packaging is also representative of how the Mark was displayed on packaging for electronic cash registers.

[39]  Accordingly, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered good “electronic cash registers” within the meaning of sections 4 and 45 of the Act.

Electric & Electronic copying machines and related goods

[40]  Hajime Kobata also attests to significant sales of “copiers” in Canada by Sharp Canada during the relevant period. The supporting invoices include a listing for a product that appears to be a multifunctional photocopier. In addition, Hajime Kobata provides photographs showing the Mark displayed on packaging and attests that these images are representative of how the Mark was displayed on packaging for “copiers” sold in Canada during the relevant period.

[41]  Upon reviewing the various models of “imagers/copiers/printers” at Exhibit B to the Kobata affidavit, and in the absence of submissions from the Requesting Party on this point, I accept that the evidence with respect to “copiers” and multifunctional copiers/printers constitutes evidence with respect to the registered goods “electric copying machines” and “electronic copying machines”.  In this respect, and in contrast to my finding above with respect to “commercial air conditioners”, although the Owner’s written representations do not specifically request maintaining the registration for “electronic copying machines”, I am satisfied that the Kobata affidavit demonstrates use of the Mark in association with both “electric” and “electronic” copying machines.

[42]  Accordingly, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “electric copying machines” and “electronic copying machines” within the meaning of sections 4 and 45 of the Act.

[43]  I note that the statement of goods also includes other “copying machines”, including “ink-jet copying machine in which a printer function, a scanner function, and a facsimile function are entirely or partially provided” and “electronic copying machines in which a printer function, a scanner function, and a facsimile function are entirely or partially provided”. However, there is no indication in the evidence that any of the multifunctional copier products sold in Canada during the relevant period included ink-jet or facsimile capabilities. Moreover, in its representations, the Owner does not appear to take the position that use of the Mark has been demonstrated in association with any of these other “copying machine” goods.

Toner cartridges and related goods

[44]  The Owner also takes the position that use of the Mark has been demonstrated in association with “toner cartridges”. In this respect, I note that some of the invoices attached at Exhibit F to the Kobata affidavit list toner cartridges among the products sold. Moreover, the evidence as a whole shows that the Owner sold various replacement parts and accessories in packaging displaying the Mark.  Examples include the “punch module” and “lamp unit for projector” boxes depicted at Exhibits A and C to the Kobata affidavit and the “replacement filter for air purifier” box depicted at Exhibit A to the Koga affidavit. As such, I am prepared to accept that the Owner sold “toner cartridges” in the same type of packaging displaying the Mark.

[45]  Accordingly, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “toner cartridges” within the meaning of sections 4 and 45 of the Act.

[46]  I note the statement of goods includes other “cartridge”-related goods; however the descriptions in the aforementioned invoices are limited to “TONER CARTRIDGE” and “Toner CART. YELLOW”.  Moreover, in its representations, the Owner does not appear to take the position that use of the Mark has been demonstrated in association with any such other “cartridge”-related goods. 

Computer monitors, liquid crystal display monitors, and related goods

[47]  Hajime Kobata also attests to significant sales of monitors in Canada by Sharp Canada during the relevant period. In this respect, the Kobata affidavit includes sample invoices, which the affiant states are for “computer monitors”. Some of those monitors are specifically identified as “LCD Monitors”, which I accept as corresponding to the registered good “liquid crystal display monitors”.

[48]  With respect to display of the Mark, the Kobata affidavit includes photographs showing the Mark displayed on packaging for LCD monitors. Given the affiant’s statement that the Owner sold computer monitors in Canada throughout the relevant period in association with the Mark, I accept that the depicted packaging is representative of how the Mark was displayed on packaging for such monitors.

[49]  Accordingly, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “computer monitors” and “liquid crystal display monitors” within the meaning of sections 4 and 45 of the Act.

[50]  I note that the statement of goods also includes “audiovisual monitors”, “liquid crystal display panels” and “liquid crystal displays, screens and panels”. However, if the Owner sold such goods as distinct from “computer monitors” and “LCD monitors”, then that is not clear from the evidence. Moreover, in its representations, the Owner does not appear to take the position that the evidence shows use of the Mark in association with such goods.

Rear photographic(s) projectors and liquid crystal display projectors

[51]  With respect to projectors, Hajime Kobata attests to sales of “data projectors” in Canada by Sharp Canada during the relevant period; the Kobata affidavit includes sample invoices for such sales and a photograph of a “data projector” box showing the Mark. In addition, Umihiko Komagata attests to significant sales of “theatre projectors” in Canada by Sharp Canada during the relevant period; the Komagata affidavit includes sample invoices showing sales of “DLP front projectors” and a photograph of a “projector” box showing the Mark.

[52]  Curiously, however, neither affiant indicates that any of these projectors is a “rear photographic projector” (or a “rear photographic projectors”, which appears separately in the registered statement of goods) or a “liquid crystal display projector”. Moreover, with the exception of one invoice dated outside the relevant period, neither rear photographic projectors nor liquid crystal display projectors are mentioned in any of the furnished exhibits.

[53]  In its representations, although the Owner takes the position that use of the Mark has been demonstrated in association with both “rear photographics projectors” and “liquid crystal display projectors”, the Owner makes no effort to correlate either good with any of the particular types of projectors referenced in the furnished affidavits.  Further, there is no information in the evidence from which I could infer that any of the projectors referenced in the evidence project from the rear or include liquid crystal displays.

[54]  In the absence of explanatory details, I cannot conclude that the Owner has demonstrated use of the Mark in association with the registered goods “rear photographics projectors”, “rear photographic projectors” or “liquid crystal display projectors” within the meaning of sections 4 and 45 of the Act.

Air purifiers for household purposes, ion conditioners for purifying air for household purposes, and related goods

[55]  Miho Koga attests to significant sales of “air purifiers” in Canada by Sharp Canada during the relevant period. In light of the affiant’s sworn statement that the end users of such products include home owners, I accept that such sales included “air purifiers for household purposes”. The Koga affidavit also includes sample invoices at Exhibit C, which list various air purifier products.

[56]  With respect to display of the Mark, the Koga affidavit includes a photograph showing the Mark displayed on packaging. Although the depicted packaging is for a replacement filter for an air purifier, Miho Koga attests that air purifiers were sold in the same packaging in Canada during the relevant period.

[57]  As indicated above, the Owner also takes the position that use of the Mark has been demonstrated in association with “ion conditioners for purifying air for household purposes”. In this respect, although the Owner does not indicate which portion of the evidence relates to such goods, I note that some of the invoices attached at Exhibit C to the Koga affidavit list a product identified as a “plasma cluster generator”. I accept that this product corresponds to the “plasmacluster ion generator” referenced in one of the webpages at Exhibit B to the Koga affidavit; that webpage indicates that plasma cluster ion generators purify household air.

[58]  Accordingly, for purposes of this proceeding, and in the absence of representations on this point from the Requesting Party, I am prepared to accept the exhibited invoices as evidence of sales of “ion conditioners for purifying air for household purposes”.

[59]  With respect to display of the Mark in association with such goods, the exhibited webpages do not show the Mark displayed on the plasma cluster ion generators or on their packaging. However, I am prepared to accept the Exhibit A packaging, which Miho Koga attests was also used for “air purifiers”, as representative of the manner in which the Mark was displayed on plasma cluster ion generators sold in Canada during the relevant period.

[60]  Accordingly, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “air purifiers for household purposes” and “ion conditioners for purifying air for household purposes” within the meaning of sections 4 and 45 of the Act.

[61]  I note that the statement of goods in the registration also includes “industrial air purifiers”. However, although Miho Koga attests that the end users of the Owner’s “air purifiers” include both homeowners and business owners, there is no evidence that the air purifiers sold during the relevant period included air purifiers for industrial use. Indeed, in its written representations, the Owner does not appear to take the position that use of the Mark has been demonstrated in association with “industrial air purifiers”.

[62]  Accordingly, I am not satisfied that the Owner has demonstrated use of the Mark in association with “industrial air purifiers” within the meaning of sections 4 and 45 of the Act.

Remaining goods

[63]  In its written representations, the Requesting Party noted and focused on the lack of evidence with respect to “electronic dictionaries”, “publications”, “stationery” and similar goods listed in the registration.  Indeed, the evidence does not show the Mark being displayed on or otherwise associated with any of the remaining registered goods, nor is there any evidence of such goods being sold or otherwise transferred in Canada during the relevant period.

[64]  Since there is also no evidence before me of special circumstances excusing non-use of the Mark, all of the remaining registered goods will be deleted from the registration.

Disposition

[65]  In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in accordance with section 45 of the Act, the registration will be amended to delete to all of the goods except for “air conditioners”, “electronic cash registers”, “electric copying machines”, “electronic copying machines”, “toner cartridges”, “computer monitors”, “liquid crystal display monitors”, “air purifiers for household purposes” and “ion conditioners for purifying air for household purposes”.

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

(1) Toner cartridges; electronic cash registers; computer monitors; liquid crystal display monitors; electronic copying machines; air conditioners; air purifiers for household purposes; ion conditioners for purifying air for household purposes.

(2) Computer monitors; liquid crystal display monitors; electric copying machines; toner cartridges; ion conditioners for purifying air for household purposes.

______________________________

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

___________________________________________________

 

No Hearing Held

 

Agents of Record

 

Blake, Cassels & Graydon LLP   For the Registered Owner

Dimock Stratton LLP  For the Requesting Party