Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2017 TMOB 15

Date of Decision: 2017-02-14

IN THE MATTER OF A SECTION 45 PROCEEDING

 

	9158-1298 Quebec Inc.	Requesting Party
and
	Caplan Industries Inc.	Registered Owner
	TMA278164 for TASK	Registration

 

[1]  This is a decision involving a summary expungement proceeding with respect to registration No. TMA278,164 for the trade-mark TASK (the Mark), owned by Caplan Industries Inc. (the Owner).

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

(1) Ratchets, socket sets, wood boring bits, sandpaper, and abrasive cutting wheels.

(2) Hand tools, namely hand saws, carpenters pencils, levels, squares, scratch brushes, sanding blocks, punches, chisels, snips, wire brushes, pliers, utility knives, bow saws, drywall saws, nail sets, squares, layout tools, sanding sponges, wrenches, screw extractors, files, rasps, hex keys, chalk lines, hack saws, key hole saws, hammers, tape measures, screw drivers and nut drivers.

(3) Accessories and parts for hand tools, namely saw blades and metal drilling bits.

(4) Accessories for power tools, namely sanding belts, grinding wheels, sanding discs, drill bits, hole saws, counter sinks, saw blades, sanding wheels, router bits, drill chucks, drill keys, jigsaw blades, depressed center wheels, reciprocating saw blades, dowel drills, tapered plug cutters, ball bearings, chuck keys, wood screw pilots, bit holders, nut setters, wire wheels and dado heads.

(5) Drywall tape, chalk and safety goggles.

 

[3]  For the reasons that follow, I conclude that the registration ought to be amended to delete “ball bearings” from goods(4).

The Proceeding

[4]  On January 20, 2015, the Registrar of Trade-marks sent a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) to the Owner of the Mark. The notice was sent at the request of 9158-1298 Quebec Inc. (the Requesting Party).

[5]  The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between January 20, 2012 and January 20, 2015 (the Relevant Period), in association with each of the registered goods. 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.

[6]  Section 4(1) of the Act sets out the relevant definition of “use” in association with goods:

[7]  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 clearing the register of “deadwood”. Mere statements of use are insufficient to prove use [see Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. The criteria for establishing use are not demanding [see Woods Canada Ltd v Lang Michener et al (1996), 71 CPR (3d) 477 (FCTD)] and an overabundance of evidence is not necessary [see Union Electric Supply Co v Canada (Registrar of Trade-Marks) (1982), 63 CPR (2d) 56 (FCTD)]. Nevertheless, sufficient evidence must still be provided to allow the Registrar to conclude that the Mark was used in association with each of the registered goods specified in the registration [see Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270].

[8]  In response to the Registrar’s notice, the Owner filed the affidavits of Christopher Waldner, director of product management and marketing for the Owner, sworn on August 19, 2015 and Dulce Campos, employed by the Owner’s agent as a trade-mark researcher, sworn on August 20, 2015.

[9]  Only the Owner filed written representations and was present at the hearing.

The Evidence

[10]  For each of the registered goods (except for ball bearings), Mr. Waldner supports his assertion of use with clear evidence of use of the Mark in the form of photographs and invoices attached to his affidavit as Exhibits 2 through 61. In each case, the photographs show the particular good with the Mark displayed on the good itself or on the packaging of the good.  The corresponding invoices for each good show sales in Canada during the Relevant Period by the Owner.

[11]  For example, Exhibit 2 consists of a photograph of ratchets with invoices issued during the Relevant Period showing sales of that particular item. The photograph shows the Mark displayed on the goods directly as well as on a display box.

[12]  Similar evidence appears in the subsequent exhibits for the following registered goods (1): socket set (Exhibit 3);wood boring bits (Exhibit 4), sandpaper (Exhibit 5), and abrasive cutting wheels (Exhibit 50).

[13]  With respect to the various “hand tools ” at registered goods (2): hand saws (Exhibit 6), carpenters pencils (Exhibit 7), levels (Exhibit 8), squares (Exhibit 9), scratch brushes (Exhibit 10), sanding blocks (Exhibit 11), punches (Exhibit 12), chisels (Exhibit 13), snips (Exhibit 14), wire brushes (Exhibit 15), pliers (Exhibit 16), utility knives (Exhibit 17), bow saws (Exhibit 18), drywall saws (Exhibit 19), nail sets (Exhibit 20), layout tools (Exhibit 21), sanding sponges (Exhibit 22), wrenches (Exhibit 23), screw extractors (Exhibit 24), files (Exhibit 25), rasps (Exhibit 26), hex keys (Exhibit 27), chalk lines (Exhibit 28), hack saws (Exhibit 29), key hole saws (Exhibit 30), hammers (Exhibit 31), tape measures (Exhibit 32), screw drivers (Exhibit 33) and nut drivers (Exhibit 34).

[14]  With respect to the “accessories and parts for hand tools” at registered goods (3):  saw blades (Exhibit 35) and metal drilling bits (Exhibit 36).

[15]   With respect to “Accessories and parts for power tools” at registered goods (4): sanding belts (Exhibit 37), grinding wheels (Exhibit 38), sanding discs (Exhibit 39), drill bits (Exhibit 40), hole saws (Exhibit 41), counter sinks (Exhibit 42), saw blades (Exhibit 43), sanding wheels (Exhibit 44), router bits (Exhibit 46), drill chucks (Exhibit 47), drill keys (Exhibit 48), jigsaw blades (Exhibit 49), depressed center wheels (Exhibit 50), reciprocating saw blades (Exhibit 51), dowel drills (Exhibit 52), tapered plug cutters (Exhibit 53), chuck keys (Exhibit 54), wood screw pilots (Exhibit 55), bit holders and nut setters (Exhibit 56), wire wheels (Exhibit 57) and dado heads (Exhibit 58).

[16]  Finally, with respect to the registered goods (5): drywall tape (Exhibit 59), chalk (Exhibit 60) and safety googles (Exhibit 61).

• [17] Mr. Waldner also provides the annual cost for advertising expenses incurred by the Owner for all of its products and states that almost all such funds were used for print advertising associated with the Mark. He adds that almost all advertising is done on a co-op basis with its customers and provides some examples of such advertising in the form of flyers published during the Relevant Period [see, for example, Exhibits 63, 64 and 65].

• [18] Mr. Waldner concludes his affidavit by providing a list of trade shows held in Canada to which the Owner participated and during which the Mark had been displayed prominently.

[19]  As for Ms. Campos’ affidavit, she conducted, at the request of the Owner’s agent, an online search via the WayBackMachine’s Internet Archive for the website address http://www.task-tools.com for the years 2012, 2013, 2014 and 2015. She attaches the results for 2012, 2014 and 2015 as Exhibits 1A through 1C to her affidavit. Some of the registered goods are advertised on these pages in association with the Mark.

 Analysis

• [20] In his affidavit, Mr. Waldner makes no attestation regarding sales volumes for each particular good, nor does he attest to the aggregate sales of TASK goods generally. Furthermore, for some of the goods, the Owner furnished only one invoice as evidence of transfer of property in the normal course of trade during the Relevant Period.

• [21] Nevertheless, it is well established that evidence of a single sale may be sufficient to establish use of a trade-mark in the normal course of trade, so long as it follows the pattern of a genuine commercial transaction and is not seen as being deliberately manufactured or contrived to protect the registration of the trade-mark [see Eva Gabor International Ltd v 1459243 Ontario Inc, 2011 FC 18, 90 CPR (4th) 277 and Philip Morris Inc v Imperial Tobacco Ltd (1987), 13 CPR (3d) 289 (FCTD)].

• [22] As such, and noting that, the Requesting Party did not submit any representations, I accept that the Owner has demonstrated use of the Mark in association with each of the goods shown in the aforementioned exhibits.

• [23] However, at the hearing, I brought to the Owner’s attention that there was no evidence of use of the Mark in association with the registered goods (4) “ball bearings”. The Owner explained that this registration had been the subject of a previous section 45 proceeding, wherein the Registrar ruled in part to delete such goods from the then list of goods [see Stikeman Elliott v Caplan Industries Inc 2009 CarswellNat 1991 (TMOB) at paragraph 25]. For reasons unknown, it still appeared in the registration as of the date of the subject section 45 notice.

• [24] In any event, for the purposes of this proceeding, there is no evidence before me of use of the Mark in association with the registered goods “ball bearings”. Furthermore, no evidence of special circumstances excusing non-use of the Mark in this respect is before me. The registration will be amended accordingly.

• [25] As for the other registered goods, I am satisfied that the Owner has demonstrated use of the Mark in Canada in association with each one of them within the meaning of section 4(1) and 45 of the Act.

 

Conclusion

[26]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, registration TMA278,164 will be amended to delete “ball bearings” from goods (4). The registration will be maintained otherwise.

______________________________

Jean Carrière

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

 

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

 

 

HEARING DATE: 2017-02-09

 

APPEARANCES

 

Ms. Trisha A. Doré  FOR THE REGISTERED OWNER

 

 

No one appearing  FOR THE REQUESTING PARTY

 

 

AGENT(S) OF RECORD

 

Accupro Trademark Services  FOR THE REGISTERED OWNER

Robic   FOR THE REQUESTING PARTY