OPIC		CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADE-MARKS

   Citation: 2017 TMOB 59

Date of Decision: 2017-05-30

IN THE MATTER OF A SECTION 45 PROCEEDING

	Fogler, Rubinoff LLP	Requesting Party
and
	1400446 Alberta Ltd.	Registered Owner
	TMA584,708 for M Design	Registration

[1]  At the request of Fogler, Rubinoff 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 February 11, 2015 to 1400446 Alberta Ltd. (the Owner), the registered owner of registration No. TMA584,708 for the trade-mark M Design (the Mark), which is set out below and consists of a circle with a stylized M and equal sign beneath it:

[2]  The Mark is registered for use in association with the following Goods and Services:

Goods:

(1) Jewelry.

(2) Costume jewelry.

(3) Precious metal and non-precious and semi-precious gemstones.

(4) Jewelry with and without precious and semi-precious gemstones.

(5) Precious gemstones.

(6) Semi-precious gemstones.

(7) Jewelry, namely rings, hair ornaments, earrings, bracelets, bangles, bands, necklaces, pendants, pins, brooches and body jewelry.

(8) Jewelry, namely sterling silver jewelry.

(9) Items of jewelry incorporating precious or semi-precious stones.

(10) Watches.

(11) Beads.

(12) Pearls.

 Services:

(1) Retail design, manufacture, sale, distribution and repair of jewelry, gemstones and related items.

(2) Custom manufacture of jewelry to customer specifications.

(3) Custom jewelry design.

(4) Jewelry repair, sizing and restoration.

(5) Repair of watches and watch accessories.

[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 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 February 11, 2012 and February 11, 2015.

[4]  The relevant definitions of use with respect to goods and services are set out in sections 4(1) and 4(2) 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.

4(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

[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. The criteria for establishing use are not demanding and an overabundance of evidence is unnecessary. Nevertheless, sufficient facts must be presented to allow the Registrar to conclude that the trade-mark was used in association with each of the goods or services specified in the registration at any time during the relevant period [see Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448, 31 CPR (4th) 270]. Mere statements of use are insufficient to prove use of the trade-mark [see Aerosol Fillers Inc v Plough (Canada) Ltd (1980), 53 CPR (2d) 62 (FCA)].

[6]  In response to the Registrar’s notice, the Owner filed the affidavit of Peter J. Konidas, sworn on September 9, 2015 in Edmonton, Alberta.  Neither party filed written representations; a hearing was not held.

The Owner’s Evidence

[7]  Mr. Konidas is the Chief Executive Officer of the Owner.  He explains that the Mark has been in use continuously in Canada “by the Owner or its licensee Metalsmiths Master Architects of Jewelry Inc.” during the relevant period.  Mr. Konidas’ evidence is silent as to whether or how the Owner controls the quality of the Goods or Services and a copy of the licence between the Owner and the licensee is not provided.

[8]   In his affidavit and through the attached exhibits, Mr. Konidas provides extensive evidence of use of the Mark: 

(a)  With respect to goods (1) jewelry; (2) costume jewelry; (4) jewelry with and without semi-precious gemstones; (7) jewelry, namely rings, earrings, bracelets, bangles, bands, necklaces, pendants, and body jewelry; (8) jewelry, namely sterling silver jewelry; (9) items of jewelry incorporating precious or semi-precious stones; (10) watches; and (11) beads, Mr. Konidas provides pictures of each of these items, showing the Mark directly stamped on items corresponding with each of these descriptions (Exhibit A).  Attached as Exhibit B to his affidavit, Mr. Konidas provides a spreadsheet detailing the quantity of sales of the goods appearing in Exhibit A in Canada during the relevant period.  Mr. Konidas further attests that sales of the Goods in Canada during the relevant period totalled over $2 million (para 7).

(b)  With respect to the goods described as jewelry, namely, hair ornaments, pins, brooches (appearing in goods (7) of the registration), Mr. Konidas does not provide examples of use of the Mark in association with these goods in Exhibit A.

(c)  With respect to goods (3) precious metal and non-precious and semi-precious gemstones; (5) precious gemstones; (6) semi-precious gemstones; and (12) pearls,  Mr. Konidas’ evidence shows these items being sold as part of jewelry items (for example, he provides photographs of a sapphire bangle, garnet earrings, a sapphire ring, a blue topaz necklace and pearl earrings) (Exhibit A, pages 3-4,8). There is no evidence that these registered goods are sold in any manner other than in already finished jewelry pieces.

[9]  With respect to the Services, Mr. Konidas attaches to his affidavit the following examples of display of the Mark “by the Owner or its licensee” photographs of: a retail store featuring the Mark prominently on signage (Exhibit A, page 9), a packaging tin for jewelry and case for watches embossed with the Mark (Exhibit A, page 9), and note paper and job bags featuring the Mark, which are used to communicate details between customers and the design studio (Exhibit A, page 12).  Mr. Konidas also provides photographs of the Mark branded on custom designed jewelry (Exhibit A, pages 10, 11).  As evidence of sales of the Services, Mr. Konidas attaches what he describes as “specimen invoices” for custom design of a masonic ring, repair to a broken ring, and watch repair (Exhibits C-E) and provides aggregate “retail costs” during the relevant period (paras 9-10).

Analysis of the Evidence

 

Use of the Mark in Association with Jewelry, Watches, Beads, and the Services

[10]  With respect to jewelry, namely, hair ornaments, pins and brooches as described in goods (7), Mr. Konidas does not provide evidence showing the Mark displayed in association with these goods, nor does he provide evidence of sales of these goods.

[11]  With respect to goods (1), (2), (4), and (8)-(11) and the remaining goods in goods (7), which consist of different types of jewelry, watches, and beads, I find that there is evidence of use of the Mark. Mr. Konidas clearly attests to use of the Mark and provides photographs (i) showing the Mark branded or embossed on jewelry and beads and (ii) the Mark on watch cases.  Mr. Konidas also provides evidence of sales of each of these goods in the form of a spreadsheet.

[12]  With respect to the Services, I find that there is evidence of use of the Mark. Mr. Konidas clearly attests to use of the Mark and provides photographs showing the Mark on (i) jewelry tins and watch cases, (ii) a storefront, notepaper and job bags.  Finally, Mr. Konidas provides evidence that the Services have been performed through providing (i) the total “retail cost” of the services and (ii) sample invoices dated during the relevant period.

No Use of the Mark in Association with Precious Metal, Gemstones, and Pearls

[13]  With respect to goods (3) precious metal and non-precious and semi-precious gemstones; (5) precious gemstones; (6) semi-precious gemstones; and (12) pearls, the Owner appears to be relying on its sale of jewelry including these items to supports its claim of use of the Mark in association with each of these goods. For example, the photographs show precious gemstones in a sapphire ring; semi-precious gemstones in a pair of blue topaz earrings and pearls in a pearl ring and in pearl earrings. I find that these examples provided by Mr. Konidas are more accurately described as goods (8) “items of jewelry incorporating precious or semi-precious stones” and that the evidence provided does not support use with respect to goods (3), (5), (6) and (12). 

No Evidence that Use is By the Owner or Enures to the Owner

[14]  That being said, notwithstanding the evidence of use described above, the real issue is whether any such use of the Mark enures to the owner. The phrasing Mr. Konidas employs throughout his affidavit, “by the Owner or its licensee” (see, for example, paras 4, 7, 8-10) doesn’t allow me to conclude that the Owner itself has in fact used the Mark in association with each of the Goods and Services. Furthermore, use by the Owner’s licensee does not appear to enure to the Owner pursuant to section 50 of the Act.

[15]  Section 50 reads as follows:

(1) For the purposes of this Act, if an entity is licensed by or with the authority of the owner of a trade-mark to use the trade-mark in a country and the owner has, under the licence, direct or indirect control of the character or quality of the goods or services, then the use, advertisement or display of the trade-mark in that country as or in a trade-mark, trade-name or otherwise by that entity has, and is deemed always to have had, the same effect as such a use, advertisement or display of the trade-mark in that country by the owner.

(2) For the purposes of this Act, to the extent that public notice is given of the fact that the use of a trade-mark is a licensed use and of the identity of the owner, it shall be presumed, unless the contrary is proven, that the use is licensed by the owner of the trade-mark and the character or quality of the goods or services is under the control of the owner.

[16]  There is no evidence of public notice of licensed use by Metalsmiths Master Architects of Jewelry Inc. and as such section 50(2) of the Act does not apply. Section 50(1) of the Act sets out two requirements: that there be a licence; and that pursuant to that licence, the licensor controls the character or quality of the licensed goods or services. As stated by the Federal Court, there are three main methods by which a trade-mark owner can demonstrate the requisite control pursuant to section 50(1) of the Act: first, by clearly attesting to the fact that it exerts the requisite control; second, by providing evidence demonstrating that it exerts the requisite control; or third, by providing a copy of the licence agreement that provides for the requisite control [see Empresa Cubana Del Tabaco Trading v Shapiro Cohen, 2011 FC 102 at para 84]. 

[17]  While the evidence in a section 45 proceeding need not be perfect, a registered owner must still establish a prima facie case of use, meaning that the evidence must only supply facts from which a conclusion of use may follow as a logical inference [per Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184 at paras 2, 9].  In this case, in the absence of any statements or evidence regarding control by the Owner, or a copy of the licence agreement, I cannot conclude that any use by the licensee enures to the benefit of the Owner pursuant to section 50(1) of the Act. Furthermore, given the ambiguity in Mr. Konidas’ evidence as to whether the examples of use provided are by the Owner or the licensee, the Owner has not established a prima facie case that the use of the Mark in association with any of the Goods or Services enures to it.  Accordingly, the registration will be expunged.

[18]  I note that if Mr. Konidas had attested in his affidavit that, during the relevant period, the Owner controlled the character or quality of the Goods and Services, I would have maintained the registration for goods (1), (2), (4), (8)-(11) and for goods (7) jewelry, namely rings, earrings, bracelets, bangles, bands, necklaces, pendants, and body jewelry and the Services.

Disposition

[19]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be expunged.

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

___________________________________________________

No Hearing Held

AGENTS OF RECORD

Miller Thomson LLP	For the Registered Owner
Fogler, Rubinoff LLP	For the Requesting Party