LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2017 TMOB 54
Date of Decision: 2017-05-11
IN THE MATTER OF A SECTION 45 PROCEEDING
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Harold W. Ashenmil
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Requesting Party |
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Supracor, Inc.
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Registered Owner
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TMA404,925 for SUPRACOR |
Registration
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[1]
At the request of Harold W. Ashenmil (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 June 2, 2015 to Supracor, Inc. (the Owner), the registered owner of registration No. TMA404,925 for the trade-mark SUPRACOR (the Mark).
[2]
The Mark is registered for use in association with the following goods:
(1) Shock absorbent padding and insulation material, being non-construction materials.
(2) Shoes; sandals.
(3) Beach shoes.
(4) Sandals and beach shoes.
(5) Equestrian cushion products, namely, saddle liners and horseshoe and hoof pads.
(6) Action sports protective equipment and padding, namely, shin guards, chest pads, footwear insoles, wheelchair pads, and padding for use in helmets.
(7) Seat cushions; vehicle seats; vehicle seat cushions and padding; wheelchair cushions.
(8) Cushions made of plastic; matresses; mattress overlays, namely, mattress pads and toppers for placing on top of mattresses; neck and head cushions; sink liners; exfoliating wash mitts, gloves, body scrubbing sleeves and loofah-type bands, namely body scrubbing bands.
[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 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, goods (2) to (8) were registered on October 3, 2013. Pursuant to the practice notice Practice in Section 45 Proceedings, as these goods were registered less than three years prior to the date of the section 45 notice, they are not subject to this proceeding. Accordingly, the section 45 notice only applies to goods (1), described as “shock absorbent padding and insulation material, being non-construction materials” (the Goods). The relevant period for showing use with the Goods is between June 2, 2012 and June 2, 2015.
[4]
The relevant definition of “use” in association with goods is set out in section 4(1) of the Act:
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.
[5]
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 and, as such, the evidentiary threshold that the registered owner must meet is quite low [Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270].
[6]
In response to the Registrar’s notice, the Owner furnished the affidavit of Curtis Landi, sworn on December 14, 2015 in San Jose, California. Both the Owner and the Requesting Party filed written representations and attended a hearing.
The Owner’s Evidence
[7]
In his affidavit, Mr. Landi states that he is President and CEO of the Owner. He sets out that the Owner is a manufacturer of flexible, fusion-bonded honeycomb products which can be found in various high performance applications such as bullet proof vests, sport protective equipment and bumpers for amusement park rides, as well as the items specified in the subject registration.
Normal Course of Trade
[8]
Mr. Landi attests that the Owner sells the Goods to (i) manufacturers for use in the manufacture of other products and (ii) to third-party distributors for resale to physical therapists who use the Goods in custom seating systems.
Use of the Mark
[9]
Mr. Landi attests that the Mark has been displayed on stickers and tags affixed to the Goods and on packaging of the Goods shipped to Canada during the relevant period. Mr. Landi further attests that the Mark is displayed on invoices which accompany the shipment of Goods to Canada. With respect to sales of the Goods bearing the Mark, Mr. Landi attests that during the relevant period sales in Canada totalled USD$10,000. In support of the foregoing, Mr. Landi provides the following exhibits attached to his affidavit:
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Exhibit B includes photographs of stickers and tags affixed to what Mr. Landi attests are the Goods, which appear to be sheets of a blue material with a honeycomb pattern, as shown in the picture below.
Mr. Landi attests that this exhibit is representative of those stickers and tags used by the Owner in association with the Goods sold and delivered in Canada during the relevant period. The stickers and tags include the Mark and what appears to be a code (for example, SBS-2; SBS-4; SBS-6; and SBS-7). Exhibit C includes a close-up photograph of stickers bearing the Mark.
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Exhibit D is a photograph showing a sticker bearing the Mark affixed to packaging which Mr. Landi attests is the type used by the Owner to ship the Goods to Canada during the relevant period.
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Exhibit E includes eleven invoices from the Owner showing products sold to Physiopro, Inc., the Owner’s exclusive distributor of the Goods in Canada, and shipped to a physiotherapy clinic in Quebec. Each invoice includes the Mark and is dated during the relevant period. Mr. Landi attests that the Goods are referred to in the invoices as “Breathable Sheets”. I note that the codes listed next to the description “Breathable Sheets” on the invoices, for example SBS1, SBS2, and SBS5, appear to correspond with the codes shown in Exhibit B.
Analysis
[10]
The Requesting Party submits that while the Owner appears to have shown use of the Mark in association with breathable sheets, the Owner has made “no effort to even explain the relationship” between breathable sheets and shock absorbent padding and insulation material, being non-construction materials (Requesting Party’s written representations, pages 5-6). At page 4 of its written representations, the Requesting Party further explains :
It must be noted that in paragraph 7 of the Landi affidavit, Exhibits B and C are described as a photograph of examples of stickers and tags attached by Supracor Inc. to its products (including the Goods) sold and delivered in Canada. [These] are described as “representative” of those used by Supracor Inc. There is nothing in these exhibits asserting that what is shown, apart from the stickers themselves, is what is referred to in [goods (1)] or what is referred to in the invoices (Exhibit E). It is clear that while what is depicted shows stickers and tags on an unspecified product, these two (2) exhibits expose the stickers and tags, but do not identify the matter on which these stickers and tags are affixed. [emphasis in the original]
[11]
For its part, the Owner submits that it is merely required to establish a prima facie case of use. In summarizing the evidence submitted, the Owner asserts that it has done so in this case, arguing that there is no ambiguity since:
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at paragraph 4 of Mr. Landi’s affidavit “shock absorbent padding and insulation material, being non-construction materials” are defined as the Goods;
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at paragraph 7 of his affidavit, Mr. Landi attests that he attached as Exhibit B “photographs of examples of such stickers and tags affixed to the Goods”; and
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at paragraph 12, Mr. Landi attests that the Goods are referred to in the invoices as “Breathable Sheets.”
[12]
In the context of a section 45 proceeding, the evidence as a whole must be considered and focusing on individual pieces of evidence is not the correct approach [Kvas Miller Everitt v Compute (Bridgend) Limited 2005 CanLII 78281 (TMOB)]. The evidence need not be perfect; indeed, as noted by the Owner, a registered owner need only establish a prima facie case of use within the meaning of section 4 of the Act [Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184 at para 2]. This burden of proof is very light: evidence must only supply facts from which a conclusion of use may follow as a logical inference [per Diamant at para 9].
[13]
With respect to the Requesting Party’s submissions, I do not consider the fact that the invoices include the heading “honeycomb product description” or that the term “breathable sheets” could refer to a number of different things to be problematic. Mr. Landi clearly attests to use of the Mark in association with the Goods and provides product stickers and labels as well as representative evidence of sales. In this respect, the Owner has filed photographs of the Goods with labels and stickers bearing the Mark and representative invoices that also display the Mark. Mr. Landi’s identification and correlation of the Goods with the exhibited materials is sufficient in this case.
[14]
In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in association with the Goods within the meaning of sections 4 and 45 of the Act.
Disposition
[15]
Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be maintained in compliance with the provisions of section 45 of the Act.
______________________________
Natalie de Paulsen
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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Hearing Date: 2017-05-09
Appearances
Michelle Easton For the Registered Owner
Harold W. Ashenmil For the Requesting Party
Agents of Record
Gowling WLG (Canada) LLP For the Registered Owner
Harold W. Ashenmil For the Requesting Party