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

  Citation: 2017 TMOB 77

Date of Decision: 2017-06-28

IN THE MATTER OF A SECTION 45 PROCEEDING

	9190-8608 Québec Inc.	Requesting Party
and
	696139 Ontario Ltd.	Registered Owner
	TMA608,867 for RUMORS	Registration

[1]  At the request of 9190-8608 Québec 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 November 14, 2014, to 696139 Ontario Ltd (the Owner), the registered owner of registration No. TMA608,867 for the trade-mark RUMORS (the Mark).

[2]  The Mark is registered for use in association with the services “sale of retail clothing” and the following goods:

Ladies’, men’s and children’s wearing apparel, namely shirts, t-shirts, jeans, sweaters, skirts, socks, underwear, belts, scarves, dresses, blouses, jackets, hats; housewares, namely bedspreads, towels, tablecloths, pillowcases, drapes; footwear, namely running shoes, slippers, shoes and sandals; sunglasses; and luggage.

[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 the trade-mark was last used and the reason for the absence of such use since that date.

[4]  In this case, the relevant period for showing use is between November 14, 2011 and November 14, 2014.

[5]  The relevant definitions of “use” are set out in sections 4(1) and 4(2) 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.

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.

[6]  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 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 Rainer Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)].

[7]  In response to the Registrar’s notice, the Owner furnished the affidavit of Raj Tanna, President of the Owner, sworn on June 30, 2015 in Toronto. Only the Owner filed written representations; an oral hearing was not requested.

The Owner’s Evidence

[8]  In his affidavit, Mr. Tanna attests that since before the relevant period, the Owner has been continuously operating a retail clothing store under the name BLUE JUNCTION in Canada. He explains that the store sells a variety of brands of clothing.  With respect to use of the Mark during the relevant period, he states that a section of the store was identified by a sign displaying the Mark. He identifies this section of the store as “the RUMORS Section” (shown at Exhibit RT-1 to his affidavit).   

[9]  Mr. Tanna attests that the Owner sold more than 100 items from the RUMORS section of the store during the relevant period.  He explains that employees packed the purchased clothing in bags displaying the Mark (shown at Exhibit RT-2).

[10]  Mr. Tanna further attests that, during the relevant period, the store advertised its sale of clothing via posters at the store, which displayed the Mark (shown at Exhibit RT-3).

[11]  Mr. Tanna attests that the Owner sold all of the registered goods in association with the Mark, explaining that the goods bore labels displaying the Mark (shown at Exhibit RT-4).

[12]  Mr. Tanna also attests that, during the relevant period, the Owner sold a “variety” of clothing items, “including hoodies and sweaters”, to retailers and wholesalers located in Canada.  He confirms that, at the time of sale, such clothing bore the same RUMORS labels as the clothing sold at the BLUE JUNCTION store.

[13]  Again, Mr. Tanna attests that sales of items bearing the Mark “have been continuous during the Relevant Period, and were in excess of 100 of each item during the Relevant Period”.   

[14]  In support, attached to his affidavit are the following exhibits:

• Exhibit RT-1 consists of three photographs of the interior of the BLUE JUNCTION store. The first photograph shows a RUMORS sign on a rack of collared shirts. Although other clothing items are visible in the background of the photograph, it is not apparent that such items are RUMORS-branded items or even located in the RUMORS section of the store.The second photograph shows two signs hanging from the ceiling above shelves and racks of various clothing items.The Mark is displayed on the signs.The clothing items visible in the photograph include various shirts, shorts and sweaters.
  The third photograph shows a RUMORS sign displayed on a rack of tank top and long-sleeve shirts.
• Exhibit RT-2 is a photograph of a BLUE JUNCTION WAREHOUSE OUTLET bag. The Mark appears as a logo alongside three other logos, for LEVI’S, DOCKERS and BUFFALO JEANS.
• Exhibit RT-3 consists of two photographs of posters for BLUE JUNCTION WAREHOUSE OUTLET. Again, the Mark appears along with the logos for other clothing brands, such as DOCKERS.
• Exhibit RT-4 consists of 13 photographs of various goods. The following clothing items are depicted in ten of the photographs: sweaters, jeans, belts, dresses, shirts and shoes. As well, two of the photographs depict RUMORS-brand handbags and one of the photographs depicts what appear to be dish towels.
  Although the Mark appears on each of the depicted labels, I note that the font and accompanying design elements differ from label to label.

Analysis

[15]  With respect to the registered goods, although the Owner furnished no invoices showing sales, at paragraph 12 of his affidavit, Mr. Tanna makes a clear statement that the Owner sold “all” of the registered goods and that such goods bore a label displaying the Mark. At paragraph 15 of his affidavit, he goes on to state that sales “were in excess of 100 of each item during the Relevant Period”.  As statements in an affidavit must be afforded substantial credibility [see Ogilvy Renault v Compania Roca-Radiadores SA, 2008 CarswellNat 776 (TMOB)], I accept that such statements are sufficient to establish transfers of each of the registered goods during the relevant period.

[16]  Furthermore, I accept that the depictions of the various “representative” items of clothing, footwear, housewares (dish towels), and luggage (hand bags) at Exhibit RT-4 show how the Mark was displayed in association with each of the goods within those subcategories of goods.

[17]  However, with respect to “sunglasses”, I note that Mr. Tanna provides no examples of labels bearing the Mark that may have appeared on such goods at the time of sale. I do not consider any of the labels appearing at Exhibit RT-4 to be representative of labels that may have accompanied such “sunglasses”. If the sunglasses bore labels similar to, for example, the exhibited labels for clothing, this is not clear from the affidavit. Furthermore, I am unable to identify sunglasses as one of the goods appearing in association with the RUMORS signs in the store, as shown at Exhibit RT-1. Absent further particulars from Mr. Tanna or representations from the Owner, I am not prepared to conclude that “sunglasses” were sold in the Owner’s BLUE JUNCTION store in association with the Mark as registered. 

[18]  Accordingly, I am not satisfied that the Owner has demonstrated use of the Mark  in association with “sunglasses” within the meaning of sections 4 and 45 of the Act.  As the Owner furnished no evidence of special circumstances excusing non-use of the Mark, the registration will be amended accordingly.

[19]  In view of the foregoing, I am only satisfied that the Owner has demonstrated use of the Mark in association with the remaining registered goods within the meaning of sections 4 and 45 of the Act.

[20]  With respect to the registered services, I accept that the RUMORS signage in a section of the Owner’s retail clothing store constitutes display of the Mark in the advertising and performance of “sale of retail clothing”. As such, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered services within the meaning of sections 4(2) and 45 of the Act.

Disposition

[21]  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 amended to delete the following goods: “sunglasses”.

[22]  The amended statement of goods and services will be as follows:

GOODS
Ladies’, men’s and children’s wearing apparel, namely shirts, t-shirts, jeans, sweaters, skirts, socks, underwear, belts, scarves, dresses, blouses, jackets, hats; housewares, namely bedspreads, towels, tablecloths, pillowcases, drapes; footwear, namely running shoes, slippers, shoes and sandals; and luggage.

SERVICES
Sale of retail clothing.

 

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

OLLIP P.C.	For the Registered Owner
Rika Bohbot	For the Requesting Party