Citation: 2017 TMOB 146

Date of Decision: 2017-10-30

IN THE MATTER OF A SECTION 45 PROCEEDING

	Ballagh & Edward LLP	Requesting Party
and
	International Biscuits Limited	Registered Owner
	TMA504,299 for BUTTERKIST	Registration

[1]  At the request of Ballagh & Edward 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 November 6, 2015 to International Biscuits Limited (the Owner), the registered owner of registration No. TMA504,299 for the trade-mark BUTTERKIST (the Mark). 

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

1) Cookies and crackers.

2) Flour, bread, biscuits, cakes, and pastry.

[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 it was last in use and the reason for the absence of use since that date. In this case, the relevant period for showing use is November 6, 2012 to November 6, 2015.

[4]  The relevant definition of use with respect to goods is set out in section 4(1) 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.

[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 these 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 the affidavit of Marilyn Anderson, Company Secretary of the Owner, sworn on May 26, 2016 in Kingston, Jamaica. Neither party filed written representations; a hearing was not requested.

The Owner’s Evidence

[7]  In her affidavit, Ms. Anderson attests that the Owner is a manufacturer of cookies, crackers, and biscuits, “with roots dating back to the late 1960’s in Jamaica”.  She asserts that the Mark has been used in association with cookies, crackers, and biscuits in Canada since 1992, and that the Owner has sold these goods in Canada through a distributor every year since 1992.  As such, she attests that the Mark was used in Canada during the relevant period in association with “cookies, crackers and biscuits”.

[8]  Ms. Anderson attests that Seprod Limited is the parent company of the Owner and acts as a distributor and exporter of the Owner’s products including such cookies, crackers, and biscuits sold in Canada in association with the Mark. Ms. Anderson confirms that the Mark appears on invoices and on the packaging of the goods sold by the Owner. 

[9]  In support of her assertion of use with respect to “cookies, crackers and biscuits”, attached to Ms. Anderson’s affidavit are the following exhibits:

• Exhibit B consists of three invoices showing sales from Seprod to Grace Kennedy (Ontario) Inc., all dated within the relevant period.Each of the invoices show the “country of final destination” as Canada.The invoices document sales of various products including “BUTTERKIST shortbread cookies”, “BUTTERKIST butter cookies”, “BUTTERKIST ginger cookies”, “BUTTERKIST coconut cookies”, and “BUTTERKIST festival cookies”.I note that the invoices also show the sale of an “OVALTINE biscuit” product; however, no BUTTERKIST “cracker” or “biscuit” products appear on the invoices.
• Exhibit C consists of copies of five product labels for BUTTERKIST products.The packaging identifies the products as “Coconut Cookies”, “Butter Cookies”, “Festival Almond Cookies”, “Ginger Cookies”, and “Shortbread Butter Cookies”. The Mark appears in stylized script on each package.Product information such as ingredient listings and manufacturer details appear in English, French, and Spanish.The label indicates that the products were manufactured by the Owner and identifies the Owner as a “member of the Seprod Group of Companies”.Ms. Anderson confirms that the labels are representative of the Canadian packaging for such products during the relevant period.
• Exhibit D consists of six photographs of product displays that Ms. Anderson attests are representative of the Owner’s “cookies, crackers and biscuits sold in retail stores in Canada”.Ms. Anderson attests that the photographs were taken in March 2016 at retail stores in Canada.She asserts that, while the photographs were taken outside of the relevant period, they are representative of the manner in which the Owner’s products would have been sold in Canada during the relevant period.

[10]  I note that the BUTTERKIST products appearing in the Exhibit D photographs are consistent with the product packaging shown at Exhibit C.  I further note that while the store pricing labels identify the BUTTERKIST products displayed as “cookies”, nearby “OVALTINE” and “MUNCHEE” products are identified as “biscuits” on the store pricing labels.

Analysis

[11]  First, Ms. Anderson’s affidavit is silent with respect to the registered goods “flour, bread, … cakes and pastry”.  As there is no evidence of use of the Mark in association with such goods and no evidence of special circumstances excusing non-use of the Mark before me, the registration will be amended accordingly.

[12]  Otherwise, Ms. Anderson asserts that, during the relevant period, the Owner sold “cookies, crackers and biscuits” in Canada in association with the Mark.  The issue in this case is that, having distinguished “cookies”, “crackers”,  and “biscuits” in its registration, the Owner is obligated to provide some evidence with respect to each of the listed goods accordingly [per John Labatt, supra].  Here, the evidence shows that the Mark was used in association with goods identified in the sales invoices, on the packaging of the goods, and on store pricing labels as “cookies”.  As such, the ordinary commercial term for the BUTTERKIST products in evidence appears to be “cookies”. 

[13]  Despite Ms. Anderson’s assertion of use, I am unable to identify any additional BUTTERKIST products in the evidence that would justify maintaining the registration with respect to “crackers” or “biscuits”.  If the Owner sold “cracker” or “biscuit” products in association with the Mark in Canada during the relevant period, this is not apparent from the evidence as a whole. 

[14]  In view of the foregoing, I am only satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “cookies” within the meaning of sections 4 and 45 of the Act.  In the absence of special circumstances excusing non-use of the Mark, the registration shall be amended accordingly.

Disposition

[15]  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 “crackers” from goods (1) and the entirety of goods (2).

[16]  The amended statement of goods will be as follows: “Cookies.”

 

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

Norton Rose Fulbright Canada LLP/S.E.N.C.R.L.,s.r.l.	For the Registered Owner
Ballagh & Edward LLP	For the Requesting Party