Citation: 2020 TMOB 27

Date of Decision: 2020-03-11

IN THE MATTER OF A SECTION 45 PROCEEDING

	Sim & McBurney	Requesting Party
and
	International Name Plate Supplies Limited	Registered Owner
	TMA595,389 for FIREFLY	Registration

Introduction

[1]  At the request of Sim & McBurney (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) on March 30, 2017, to International Name Plate Supplies Limited (the Owner), the registered owner of registration No. TMA595,389 for the trademark FIREFLY (the Mark).

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

Exit signs, fire signs, fire extinguisher signs, reflective exit signs, photoluminescent exit signs that glow in the dark and photoluminescent strips.

[3]  The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with each of the goods specified in the registration, at any time between March 30, 2014 and March 30, 2017. 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.

[4]  The relevant definitions of use are set out in section 4 of the Act as follows:

4(1) A trademark 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(3) A trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.

[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 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 trademark in association with each of the goods specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].

[6]  In response to the Registrar’s notice, the Owner furnished the affidavit of Eduard Arts, sworn on October 20, 2017 in London, Ontario.

[7]  Neither party filed written representations, but both parties were represented at an oral hearing held on December 2, 2019.

The Owner’s Evidence

[8]  In his affidavit, Mr. Arts identifies himself as being a Vice President of INPS Group Inc., parent to a family of companies that includes the Owner, all of which provide a variety of products in the rail transportation sector.  

[9]  Mr. Arts identifies the Owner as a “versatile manufacturer which provides signage and many other components to the rail industry, as well as several other industries”.  He explains that the Owner has been manufacturing and selling its FIREFLY products in Canada and abroad for over 17 years, such products being “primarily photoluminescent signage and safety markings used on trains and other vehicles as required by safety standards and codes worldwide”.

[10]  More specifically, Mr. Arts states that the Owner’s FIREFLY products include emergency egress signs (reflective, non-reflective and photoluminescent), exit signs (reflective, non-reflective and photoluminescent), fire extinguisher signs, regulatory signs, photoluminescent walkway strip systems and photoluminescent walkway strips.

[11]  Mr. Arts explains that the Owner’s FIREFLY photoluminescent walkway strip systems are used on sleeper rail cars and include photoluminescent strips with low voltage LED backlights. Mr. Arts states that, “photoluminescent products such as [the Owner]’s walkway strips require an initial source of light in order to ‘charge’ the product to glow in the dark”. He further states that, “LED backlights provide sufficient light to ‘charge’ the photoluminescent strips such that they will glow in the event that power is lost and the backlights no longer function”.

[12]  Furthermore, Mr. Arts states that the Owner’s FIREFLY safety signage products, including emergency egress signs, exit signs and fire extinguisher signs, must comply with strict regulations that prohibit advertising messages of any kind, including the display of any trademark(s), on such signs. In addition, he states that some of the Owner’s FIREFLY products are shipped in sizes and quantities that are difficult to ship in packaging bearing the Mark. As an example, he states that the FIREFLY photoluminescent walkway strips are shipped in lengths that are several hundred feet long and formed into large rolls, making it impractical to place such large objects into packaging that bears the Mark.

[13]  Consequently, Mr. Arts states that, in order to identify the FIREFLY products that cannot bear the Mark, the Owner displays the Mark on the invoices provided to purchasers of such products. He states, however, that the Owner applies the Mark to the product itself, where feasible. As an example, he states that for the Owner’s photoluminescent walkway strip systems, the Mark is displayed on the power supply assembly, shipped along with the rest of the components of the system.

[14]  In support, Mr. Arts attaches the following exhibits to his affidavit:

• Exhibits A and B are screenshot printouts of the homepages from INPS Group’s website and the Owner’s website, respectively.

• Exhibit C consists of three pages from the Owner’s website that describe the Owner’s FIREFLY products. The first page displays the Mark in a stylized form next to what appears to be an exit sign, as shown below:

The webpages refer to “Egress Signs, Photoluminescent Emergency Exit Signs and Escape Route Products” and also indicate that the photoluminescent products include egress signs, exit signs, walkway strips, regulatory signs, and HPPL decals.

• Exhibit D consists of two pages, that Mr. Arts identifies as being from the “‘Transit Solutions’ section of [the Owner]’s website which references [the Owner]’s FIREFLY products for use in transit railcars”. I note that the Mark does not appear on these pages.

• Exhibit E consists of two images of products.Mr. Arts explains that the first image shows the Owner’s FIREFLY backlit photoluminescent walkway strip system as it appears when deployed.He states that the second image shows a power supply assembly, which connects to the rail car’s power supply and provides power for the LED backlights. I note that the Mark, as reproduced above, is only displayed on the power supply assembly.

• Exhibit F consists of 30 invoices, dated during the relevant period, showing sales by the Owner to customers in both Canada and the United States. Mr. Arts states that the invoices are representative of the Owner’s sales of FIREFLY products during the relevant period. While the “Bill To” and “Ship To” addresses in the invoices appear to be different, all of the invoices indicate “F.O.B. LONDON”. I further note the following:

• o The invoices to customers in the United States show sales of various products, including “FIREFLY001 Exit”, “FIREFLY002 Emergency Exit” and “Sales Kit”. Most product descriptions include a variation of “FireflyTRACK”, such as the “FireflyTRACK 28 Active System Power Supply Assembly”, “FireflyTRACK 29 L.E.D. Strip, White Light, Assembly” and “FireflyTRACK8 Hppl Track”;

• o The invoices to Canadian customers reflect a narrower range of products. For example, I am unable to identify any “Sales Kit” products in the Canadian-customer invoices.These invoices generally show “FireflyTRACK” in their product descriptions, such as “FireflyTRACK 51 Hppl FFTrack51 – T Edging – Hppl Urethane”; and

• o One of the invoices shows a U.S. billing address and a Canadian shipping address.The invoice includes product listings for “FireflyTRACK 37C aluminum end cap” and “740769 Emergency Exit”, but the latter is not identified as a FIREFLY product.

[15]  Mr. Arts identifies the “FireflyTRACK” products on the invoices as being the Owner’s “FIREFLY photoluminescent strip products, or accessories for said products” and he defines the aforementioned acronym HPPL as meaning “High Performance Photoluminescent”.  Mr. Arts also explains that the products marked as “Sales Kit” include all of the products listed thereunder on the invoice, all sold together for the single unit price listed. Lastly, Mr. Arts refers to the “F.O.B.” field on the invoices as indicating that the title/ownership of the invoiced products passed while the products were at the Owner’s facility in London, Ontario.

Analysis

[16]  At the outset, I would first note that, with respect to the exhibited website pages, I agree with the Requesting Party that even if some of the registered goods were advertised on the Owner’s website during the relevant period, the mere advertising of goods in association with a trademark is insufficient to establish use [see BMW Canada Inc v Nissan Canada Inc (2007), 60 CPR (4th) 181 (FCA)].

[17]  Second, having examined the exhibited invoices together with Mr. Arts’ statements, I am only able to identify the following registered goods as having been sold during the relevant period: “photoluminescent strips” (from invoices to Canadian customers) and “photoluminescent strips” (sold as part of the “Sales Kit”) and “exit signs” (from invoices to U.S. customers). I am unable to identify the registered goods “fire extinguisher signs” and to the extent “fire signs”, “reflective exit signs”, and “photoluminescent exit signs” are distinguished in the statement of goods, such distinctions are not clear in any of the invoices.

[18]  Furthermore, as noted by the Requesting Party, the Owner has not shown how the Mark was displayed on any registered goods or their packaging. Instead, as noted above, Mr. Arts provides an image of a power supply assembly bearing the Mark at Exhibit E and he further explains the legal and practical restrictions that prevented the Owner from otherwise displaying the Mark on the registered goods or their packaging.  At this point, I note that while Mr. Arts appears to indicate that the power supply assemblies form part of the Owner’s “photoluminescent walkway strip systems”, the registered goods include “photoluminescent strips” only, rather than such systems.

[19]  As there is no evidence that the Mark was displayed on the registered goods or their packaging, it is clear that the evidenced sales and export to customers in the United States does not constitute use of the Mark in association with such goods pursuant to section 4(3) of the Act.

[20]  Nevertheless, at the oral hearing, the Owner argued that the evidenced sales constitute use of the Mark “in any other manner” that meets the requirements of section 4(1) of the Act. 

[21]  With respect to the sales to U.S. customers, the Owner submitted that since the evidenced sales were effected “F.O.B.” in London, Ontario, the transfer of property of the invoiced products occurred in Canada; as such, the Owner submitted that the reference to the Mark on the invoices and the display of the Mark on the power supply assembly sold and shipped along with the “photoluminescent strips” (both included in the “Sales Kit”) meets the “in any other manner” association requirements set out in section 4(1) of the Act.

[22]  However, a similar argument was addressed in National Sea Products Ltd v Scott & Aylen (1988), 19 CPR (3d) 481 (FCTD), where it was held that although the sales evidenced by invoices in that case were effected “F.O.B.” in Newfoundland, as the invoiced products were exported to the United States, the Owner had to demonstrate use of the Mark in accordance with section 4(3) of the Act. As indicated at page 485 of the decision:

The question is not who owns the wares and at what time within the normal course of trade. The question to be determined is whether the trade mark is in use. The Act is very clear that in export trade when the wares or their packaging are marked in Canada and subsequently exported then the trade mark is deemed in use.  

[23]  Accordingly, as submitted by the Requesting Party in this case, the invoices to customers in the United States evidence export sales from Canada and such sales must meet the requirements of use of the Mark pursuant to section 4(3) of the Act.  As noted above, notwithstanding the evidenced sales of “photoluminescent strips” and “exit signs” to customers in the United States, as the Owner has failed to show how the Mark was displayed on such goods or their packaging, use of the Mark has not been shown with respect to such goods.

[24]  With respect to sales to Canadian customers, although I accept that the Owner has evidenced sales and transfers of the registered goods “photoluminescent strips”, I agree with the Requesting Party that the Owner has not demonstrated use of the Mark in association with such goods pursuant to section 4(1) of the Act.

[25]  Indeed, as noted above, the Owner only provided an image of a power supply bearing the Mark, which does not correlate to or represent any of the registered goods. Nevertheless, the Owner submitted that the requisite notice of association pursuant to section 4(1) of the Act was provided to purchasers since the power supply assembly bearing the Mark was shipped along with the “photoluminescent strips”.  However, it would appear that such power supply assemblies were only sold to customers in the United States as part of the “Sales Kit” sales. From the product descriptions on the invoices to Canadian customers, I am unable to identify the sale of any power supply assemblies.  Indeed, “photoluminescent strips” appear to have been sold individually in Canada and not as part of a “Sales Kit”.  Consequently, even if I were to accept that display of the Mark on such power supply assemblies would provide the requisite notice of association with the “photoluminescent strips” sold and shipped with such assemblies, the Owner has not evidenced any such sales to Canadian purchasers during the relevant period or otherwise.

[26]  The Owner also submitted that display of “FireflyTRACK” in the product descriptions on the evidenced invoices provides the requisite notice of association with such invoiced goods. In this respect, the Owner submitted that it is reasonable to infer that i) the invoices accompanied the goods at the time of transfer in possession, i.e., delivery; and/or ii) the invoices were sent to customers at the time of transfer in property.  

[27]  With respect to i), I am not prepared to infer that the invoices accompanied the goods at the time of transfer in possession, as there is no indication that the invoices accompanied the goods when they were delivered. Indeed, Mr. Arts does not make any statement to this effect and, as noted above, the billing and shipping addresses differ on each invoice.

[28]  With respect to ii), again, I am not prepared to make such an inference in this case.  In any event, the jurisprudence indicates that an invoice displaying a trademark can only constitute use of that trademark within the meaning of section 4(1) of the Act if the invoices accompanied the goods at the time of their transfer in possession [see, for example, Riches, McKenzie & Herbert v Pepper King Ltd (2000), 8 CPR (4th) 471 (FCTD); and Novopharm Ltd v Novo Nordisk A/S (2005), 41 CPR (4th) 188 (TMOB)].  As such, accepting that transfer in property occurred “F.O.B.” at the Owner’s facility in London, Ontario, whether customers received their invoices at that time (for example, by email) is not determinative.

[29]  If I am wrong on this latter point, I would note that, notwithstanding the Requesting Party’s submissions, given the descriptive nature of the term “TRACK” in association with the registered goods “photoluminescent strips”, I would have accepted display of the various iterations of “FireflyTRACK” in the exhibited invoices as constituting an acceptable variation of the Mark as registered.

[30]  In view of all of the foregoing, I am not satisfied that the Owner has established use of the Mark in association with any of the registered goods within the meaning of sections 4 and 45 of the Act.  In coming to this conclusion, I am mindful of the particular facts of this case, given Mr. Arts’ assertions regarding the apparent practical and regulatory restrictions the Owner has in displaying the Mark on its goods or packaging.  Nevertheless, the evidence in this case falls short of establishing that the Mark was used in a manner that satisfies the requirements of section 4 of the Act.  Furthermore, there is no evidence of special circumstances excusing non-use of the Mark before me.

DISPOSITION

[31]  In view of all of the foregoing, 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.

Andrew Bene

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: 2019-12-02

APPEARANCES

Jaimie M. Bordman	For the Registered Owner
Nathan Fan	For the Requesting Party

AGENTS OF RECORD

Macera & Jarzyna LLP	For the Registered Owner
Marks & Clerk	For the Requesting Party