Citation: 2020 TMOB 126

Date of Decision: 2020-10-30

IN THE MATTER OF A SECTION 45 PROCEEDING

	Osler, Hoskin & Harcourt LLP	Requesting Party
and
	Jacques Gingras	Registered Owner
	TMA551,629 for COMMON SENSE NATURAL PRODUCTS	Registration

 

[1]  This is a decision involving summary expungement proceedings with respect to registration No. TMA551,629, for the mark COMMON SENSE NATURAL PRODUCTS (the Mark), owned by Jacques Gingras (the Owner).

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

• (1) Natural candles, bees wax candles, soap, incense, incense boxes, giftware namely: wooden boxes.

• (2) Body care products, namely: shampoos, facial creams, lotions, cleansing lotions, and deodorants.

• (3) Clothing, namely: socks, pants, T-shirts, sweatshirts, blouses, dresses, skirts, scarves, ties, handkerchiefs, trousers, jeans, shoes.

• (4) Metal giftware and metal statues.

• (5) Stationery, namely: pens, paper, postcards, giftcards, paper clips, scissors, greeting cards, soap dispensers, rulers and cardholders.

[3]  For the reasons that follow, I conclude that the registration ought to be expunged.

The Proceedings

[4]  On April 6, 2018, the Registrar of Trademarks sent a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) to the Owner. The notice was sent at the request of Osler, Hoskin & Harcourt LLP (the Requesting Party).

• [5] The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between April 6, 2015 and April 6, 2018, in association with the goods specified in the registration.If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last in use and the reasons for the absence of use since that date.

[6]   The relevant definition of use is set out in section 4(1) 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.

 

[7]  It has been well established that the purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for clearing the register of “deadwood”.  As such, the evidentiary threshold that the registered owner must meet is quite low [see Woods Canada Ltd v Lang Michener et al (1996), 71 CPR (3d) 477 (FCTD)] and “evidentiary overkill” is not required [see Union Electric Supply Co v Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD)]. Nevertheless, sufficient facts must still be provided to allow the Registrar to conclude that the trademark was used in association with the services specified in the registration [see Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270]. 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)].

[8]  In response to the Registrar’s notices, the Owner furnished his own affidavit, sworn June 15, 2018, together with Exhibits A-D.

[9]  Only the Requesting Party filed written representations. An oral hearing was not requested.

THE EVIDENCE

[10]  Mr. Gingras is the Registrant and the Secretary Treasurer of Common Sense Natural Products Inc., which he refers to as the “Company”.

[11]   Mr. Gingras explains that the Company is a wholesaler of goods, wherein the Company purchases goods in bulk and sells these goods to various retail stores such as grocery stores, health food stores, and gift stores.

[12]  Mr. Gingras states that the Mark has been used by the Company in association with the registered goods since at least its date of registration. In support, he provides the following:

Exhibit A – Mr. Gingras describes this exhibit as containing copies of various business documents, such as incorporation documents and insurance policy documents related to the Company’s business, including financial statements and other such business documentation. Also included are a series of invoices for a variety of goods purchased by the Company, as well as invoices for goods sold by the Company to entities in Canada.

The invoices concerning sales of goods by the Company are dated during the relevant period and the goods listed on the invoices include: teas, honey, toothpaste, lotions, creams, soap, shampoo, coffee substitute, a tea maker, drinking straws and a “natural Argentinean gourd”. I note however, that only the lotions, creams, soap and shampoo correspond to registered goods (i.e. – under body care products). The remaining goods are not included in the registration.

 

Exhibit B – photos of the packaging for various goods, including, tea, spices, personal care products (soaps, body powder, clay), and food products (rice, beans, lentils, peas, sprouts, flour, and bread). Once again however, only the personal care products appear to correspond to any of the registered goods. The words COMMON SENSE appear on the packaging for the above-noted personal care products, as well as on a display card in proximity to these goods.

 

Exhibit C -  Mr. Gingras describes this exhibit as containing pictures evidencing the use and presence of the Mark on cardboard boxes when bulk goods are shipped to customers. The complete Mark appears on the box, but the contents of the box are not identified.

 

Exhibit D – Mr. Gingras describes this exhibit as containing documents and pictures evidencing the use and presence of the Mark on signs promoting, explaining or describing food products (e.g. tea, soup, seasonings, honey), giftware (e.g. candles, incense, tea pots) and natural care products (e.g. soap, lotions, deodorants, shampoos). Once again, only the soap, lotions, and shampoo correspond to any of the registered goods.

 

analysis and reasons for decision

[13]  The Requesting Party submits that the evidence fails to show that the Mark has been used in Canada by the Owner or to show use in association with any of the registered goods, including in its registered form that would be sufficient to maintain the registration. In addition, the Requesting Party submits that the invoices do not constitute use of the Mark in association with the goods and the Gingras affidavit fails to provide any evidence of the Owner’s normal course of trade.

[14]  To expand with respect to the Requesting Party’s submission that the evidence fails to show that the Mark has been used in Canada by the Owner, the Requesting Party submits that the Mark may have been used in Canada in association with some goods and or services by the Company (i.e., Common Sense Natural Products Inc.), which is a separate and distinct legal entity from the Owner.

[15]  I note that Mr. Gingras is listed as the first director in the Articles of Incorporation, as well as the Secretary of the Company (Exhibit A). He also attests in his affidavit that he is the Secretary Treasurer of the Company. All other corporate documentation in Exhibit A is consistent in this regard. I additionally note that Mr. Gingras’ address is the same as that of the Company, as listed in the documentation in Exhibit A.

[16]  It is true that any use shown of the Mark in the evidence appears to be by the Company, which is a separate legal entity from Mr. Gingras, the individual listed as the Owner of the registration on the register. While the mere fact that a registered owner and a licensee are related companies is insufficient that control under license pursuant to section 50 exists [see MCI Communications Corp v MCI Multinet Communications Inc (1995), 61 CPR (3d) 245 (TMOB) and Dynatech Automation Systems Inc v Dynatech Corp (1995), 64 CPR (3d) 101 (TMOB)], an inference may be drawn that such control exists where an individual is a director or an officer of both the registered owner and the licensee [see Petro-Canada v 2946661 Canada Inc (1999), 83 CPR (3d) 129 (FCTD); Lindy v Canada (Registrar of Trade Marks) [1999] FCJ No. 682 (FCA)].  While Mr. Gingras does not explicitly state in his affidavit, that use of the Mark by the Company is under license pursuant to section 50 of the Act, this is a case wherein such licensed use can be inferred. Mr. Gingras, as the Secretary of the Company, is an officer/director of the Company. Furthermore, the register shows that he shares the same address as that of the Company. Under these circumstances, I am prepared to infer that any such use by the Company was under license and that Mr. Gingras exercised the requisite control over use of the Mark under license to the Company.

[17]  With respect to the Requesting Party’s submission that Mr. Gingras’ affidavit fails to provide any evidence of the Owner’s normal course of trade, I disagree. In this regard, Mr. Gingras clearly attests that the Company, which I have already concluded has used the Mark under license pursuant to section 50 of the Act, is a wholesaler of goods and purchases goods in bulk and sells these goods to various retail stores such as grocery stores, health food stores, and gift stores. There is nothing in the evidence that is inconsistent with this statement. Consequently, I find that the normal course of trade has been sufficiently described and demonstrated.

[18]  In any event, the proceeding turns on the Requesting Party’s submission that the evidence fails to show use of the Mark in its registered form in association with any of the registered goods. I agree with this submission.

[19]  In this regard and to begin with, the only goods that correlate to the registered goods in the evidence are lotions, creams, soap and shampoo. I accept that these goods correspond to the registered goods “Body care products, namely: shampoos, facial creams, lotions, cleansing lotions, […].” Nevertheless, the registered Mark does not appear to be associated with these products, either through use on the invoices or as applied to the product itself, or in any other manner so associated. The packaging for these goods and the associated display card, display the words COMMON SENSE alone, which does not constitute use of the registered Mark, as the term NATURAL PRODUCTS, an integral component of the Mark is absent [Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)].

[20]  With respect to the invoices, the Requesting Party submits that there is no evidence or information that confirms that the invoices accompanied the goods when shipped to customers. Even if I could conclude otherwise, it is irrelevant. “Common Sense Natural Products Inc.” appears at the top left of the invoices directly above corporate address and contact information, which I would consider is being used in the context of a business or trade name, and not trademark use. In addition, a design mark appears at the top right of the invoices, which includes the words “Common Sense® Wholesome Foods & Natural Products” in an oval frame with what appears to be a depiction of a farm and harvest, and the words “Winnipeg” and “Canada” appearing on a scroll below. These are substantial additions such that the Mark COMMON SENSE NATURAL PRODUCTS, in my view, is no longer recognizable [Canada (Registrar of Trade-marks) v Cie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 at 525 (FCA); and Promafil].

[21]  Consequently, having regard to the aforementioned, I conclude that the Owner has failed to provide evidence of use of the Mark as registered in association with any of the registered goods. As such, and as there are no special circumstances that have been brought forth which would excuse the absence of use, the subject registration will be expunged.

 

Disposition

[22]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, registration No. TMA551,629 will be expunged in accordance with the provisions of section 45 of the Act.

 

 

Kathryn Barnett

Member

Trademarks Opposition Board

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

 

No hearing was held.

AGENTS OF RECORD

No agent appointed	FOR THE REGISTERED OWNER
Osler, Hoskin & Harcourt LLP	FOR THE REQUESTING PARTY