Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2023 TMOB 126
Date of decision: 2023-07-24
[UNREVISED ENGLISH CERTIFIED TRANSLATION]
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Clark Wilson LLP
Registered Owner: The Medicus Group Inc.
Registration: TMA669,416 for MEDICUS
Introduction
[1] This is a decision involving a summary expungement proceeding under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) with respect to registration No. TMA669,416 for the trademark MEDICUS (the Mark).
[2] The statement of goods and services covered by the registration, including the NICE classes (CI), is reproduced below:
Goods
CI 10 (1) Orthopaedic apparatus, namely orthoses and prostheses of the trunk and of the lower and upper limbs; orthopaedic footwear, namely boots and shoes; insoles.
Services
CI 35 (1) Sale and distribution of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
CI 36 (2) Financing of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
CI 36 (3) Processing of claims for compensation or financial support for medical devices, orthopaedic devices, prostheses, supports and footwear.
CI 37 (4) Repair and installation of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
CI 42 (5) Design of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
CI 44 (6) Assessment, design, programming and prescription of physical exercises, biomechanical assessment of static and dynamic motor movements; design of personalized, physical exercises, biomechanical and neuromuscular assessment reports and of posture assessments.
CI 44 (7) Consulting on the adoption of medical equipment, of orthopedic apparatus, of prostheses, of supports and of shoes.
CI 44 (8) Rental of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
[3] For the reasons that follow, I conclude that the registration ought to be amended.
The proceeding
[4] At the request of Clark Wilson LLP (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on May 13, 2021, to the Medicus Group Inc. (the Owner), the registered owner of the Mark.
[5] The notice required the Owner to show whether the Mark was 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 May 13, 2018, and May 13, 2021.
[6] 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(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[7] In the absence of use as defined above, a trademark registration is liable to be expunged, unless the absence of use is due to special circumstances.
[8] In response to the Registrar’s notice, the Owner furnished the solemn declaration of Michel Lanctôt, dated December 13, 2021, to which was attached exhibits ML-1 to ML-24.
[9] Neither party submitted written representations and no hearing was held.
Overview of the Evidence
[10] In his declaration, Mr. LanctĂ´t identifies himself as the Director General of the Owner, a company established in 1957 and operating in the field of orthoses, prostheses, footwear, medical and mobility equipment, as well as services related to those goods [paras 1, 8 and 14].
[11] Mr. Lanctôt explains that the Owner granted a licence to its wholly owned subsidiary, 2330-2029 Québec Inc. (the Licensee). He states that, under the licence, the Owner directly or indirectly controlled the characteristics or quality of the goods and services associated with the Mark in Canada during the relevant period [paras 10 and 11].
[12] With respect to the use of the Mark, Mr. Lanctôt states that it was displayed during the sale of all goods in the Owner’s normal course of trade and in advertising or providing services in Canada during the relevant period [paras 13 and 14].
[13] In support of his assertions of use of the Mark in association with the goods and services specified in the registration, Mr. LanctĂ´t attached the following relevant exhibits to his declaration:
In a bundle, photographs of goods [exhibits ML-4, pages 37–48 and 71; ML-6, pages 112–122 and 164–66; ML-8; ML-9; ML-10, pages 193–198; ML-21, page 287; and ML-23]
In a bundle, samples of brochures and advertising for goods and services [exhibits ML-4, pages 36, 49–61; ML-6, pages 123–157; ML-15, pages 234–235; ML-21, pages 258–286; and ML-22]
In a bundle, screenshots of the Owner’s website [exhibits ML-4, pages 62–70; ML-6, pages 158–63; ML-10, pages 199–‍204; ML‑12; ML‑15, page 236; ML-17; and ML-19]
In a bundle, copies of compensation claims and invoices issued by the Licensee, including several dated during the relevant period [exhibits ML‑5; ML-7; ML-11; ML-13; ML-14; ML-16; ML-18; ML-20; and ML-24]
[14] With respect to the above, I note that Mr. Lanctôt generally asserts that the photographs, brochures, advertising and screenshots [translation] “illustrate” the use of the Mark in association with each of the goods and services in Canada during the relevant period. He also asserts that the compensation claims and invoices are [translation] “representative” of the services provided and the sales made by the Licensee during that period [paras 15–16, 18–20, 26–41 and 43].
[15] The evidence will be examined in greater detail in the analysis section below.
Analysis and Reasons
[16] 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. In light of this, the evidentiary threshold that the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448 at para. 38] and “evidentiary overkill” is not required [see Union Electric Supply Co Ltd v Registrar of Trademarks (1982), 63 CPR (2d) 56 (FCTD) at para. 3]. However, sufficient facts must still be provided to permit the Registrar to arrive at a conclusion that the mark was used in association with each of the goods and services covered by the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA); and Sharp Kabushiki Kaisha v 88766 Canada Inc (1997), 72 CPR (3d) 195 (FCTD)].
The Goods
[17] Coming back to Mr. Lanctôt’s solemn declaration in greater detail, he asserts that the goods covered by the registration may be of standardized or custom manufacturing [para 14]. He also explains that the goods may be invoiced directly to patients or covered by agencies such as the Régie de l’assurance maladie du Québec or the Commission des normes de l’équité, de la santé et de la sécurité au travail. In this regard, Mr. Lanctôt states that the Licensee submits [translation] “compensation claims” with the necessary supporting documents [paras 17 and 20]. I also note that invoice numbers have been stamped or handwritten on all the compensation claims [exhibits ML-5, ML-7 and ML-16]. In light of these elements, I find that the claims and the supporting documents with them are evidence of transfer similar to the invoices. In the interest of simplicity, the use of the term “invoice” in my analysis below will be understood to include both the invoices and the compensation claims in exhibits ML-5 and ML-7.
[18] Mr. Lanctôt asserts that the invoices accompanied goods when their ownership were transferred in Canada [pages 17 and 20]. However, the Mark is only displayed at the top left of the invoices, followed by the Licensee’s contact information. In this regard, it has been established that a trademark displayed at the top of an invoice rather than in the body of it will generally be perceived as being related to the activities of a business, rather than to the goods listed in the invoice [see Sim & McBurney v en Vogue Sculptured Nail Systems Inc., 2020 TMOB 9, at para 20, affirmed by 2021 FC 172; see also Tint King of California Inc. v Canada (Registrar of Trade-Marks), 2006 FC 1440, at para 32]. In other words, I find that the invoices submitted in evidence are not, on their own, sufficient proof of the use of the Mark in association with the goods. This leads me to comment in more detail on the other evidence provided to show use of the Mark in association with the goods covered by the registration.
Orthopaedic apparatus, namely orthoses and prostheses of the trunk and of the lower and upper limbs
[19] The Owner provided photographs of [translation] “orthoses and prostheses of the lower and upper limbs” [Exhibit ML-4], all displaying the Mark. It also provided invoices showing the transfer of those goods during the relevant period [exhibits ML-5 and ML-14].
[20] I am therefore satisfied that the Owner has shown use of the Mark in association with [translation] “orthopaedic apparatus, namely orthoses and prostheses of the lower and upper limbs” within the meaning of sections 4(1) and 45 of the Act.
[21] This is not the case with the rest of the goods, namely [translation] “orthoses and prostheses of the trunk”.
[22] In accordance with John Labatt and Sharp, having distinguished several goods in the registration, the Owner was required to provide separate evidence for each one.
[23] With respect to [translation] “orthoses of the trunk”, although I accept that the good described on one of the invoices as a [translation] “semi-rigid lumbar support belt” [Exhibit ML-14, page 222] reasonably corresponds to [translation] “orthoses of the trunk”, I am unable to conclude that that sale is related to an orthosis of the trunk displaying the Mark. Indeed, in one of the photographs showing various goods in a display stand, the goods that clearly correspond to orthoses of the trunk display third‑party marks, while those displaying the Mark correspond to orthoses of the lower and upper limbs [Exhibit ML-4, page 5]. I also cannot distinguish any good bearing the Mark in another photograph that shows a display of orthoses of the trunk [Exhibit ML-4, page 71.]. These photographs are reproduced below:
ML-4, page 5 ML-4, page 71
[24] With respect to [translation] “prostheses of the trunk”, I note that the brochure submitted in evidence in support of the use of the Mark in association with these goods [Exhibit ML-4], refers only to [translation] “breast prostheses”. The brochure does not include any images of the good in question displaying the Mark. It also promotes trademarks other than the Mark. I reproduce an excerpt from the brochure below:
[25] The breast prostheses invoiced are also identified with trademarks other than the Mark [Exhibit ML-14]. For instance, the breast prosthesis invoiced on December 14, 2020, is identified by the mark “Amoena”.
[26] Without further evidence, I am not satisfied that the Owner has provided sufficient evidence to establish use of the Mark in association with [translation] “prostheses of the trunk” within the meaning of sections 4(1) and 45 of the Act. Given that the evidence does not indicate any special circumstances to justify the non-use of the Mark in association with these two goods, the registration will be amended accordingly.
Orthopaedic footwear, namely boots and shoes; insoles
[27] The Owner provided photographs of [translation] “boots” [ML-4], “shoes” and “insoles” [Exhibit ML-6] displaying the Mark. It also provided invoices showing the transfer in Canda during the relevant period of orthopaedic footwear [exhibits ML-5 and ML-6] and of insoles [Exhibit ML-5].
[28] I am therefore satisfied that the Owner has provided sufficient evidence to establish use of the Mark in association with [translation] “orthopaedic footwear, namely boots and shoes; insoles” within the meaning of sections 4(1) and 45 of the Act.
The Services
[29] As a preliminary point, I note that services (1), (2), (4), (5), (7) and (8) refer to three classes of goods: medical equipment, supports and orthopaedic devices. Similarly, services (3) refer to two classes of goods: medical equipment and orthopaedic devices. I also note that, although Mr. Lanctôt draws a link between the parts and each of the services (1) to (5) and (7) to (8), it does not extend to the goods in the classes cited above. However, in light of the evidence as a whole and without written or oral observations from the Requesting Party, I find that the [translation] “medical equipment” class of goods includes the wheelchairs, power lift chairs and scooters shown in the advertising, brochures and screenshots from the Owner’s website [exhibits ML-12, ML-15, ML-21, and ML-22]. I also find that the [translation] “supports” class of goods includes the walkers, grab bars, crutches and canes shown in the advertising, brochures and screenshots from the Owner’s website [exhibits ML-12, ML‑21 and ML‑22]. Moreover, based on the statement of goods, I find that the [translation] “orthopaedic devices” class of goods includes prostheses and footwear. Finally, I find that the [translation] “medical equipment” class of goods listed in services (3) reasonably corresponds to the “medical equipment” listed in services (1), (2), (4), (5), (7) and (8). The following analysis takes into account those correspondences.
Services (1), (4) and (7)
[30] The Owner provided brochures, advertising and screenshots of its website showing the advertising of services related to medical equipment, supports and orthopaedic devices, more specifically services related to the sales, distribution, repair and installation of those types of goods and counselling services. Those brochures, advertising and screenshots display the Mark. The Owner also provided photographs showing the Mark displayed inside a store and photographs of goods displaying the Mark inside a store and in manufacturing shops. Mr. LanctĂ´t also asserted that the Owner offers consulting when providing its services or selling its goods [para 38]. I therefore find that the Owner has shown the advertising of the following services, with their respective parts, in Canada during the relevant period:
[Translation]
(1) Sale and distribution of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear [exhibits ML-4, ML-6, ML-8 and ML-9]
(4) Repair and installation of all kinds of medical equipment [exhibits ML-15 and ML-17], orthopaedic devices, prostheses, supports and footwear [Exhibit ML‑23].
(7) Consulting on the adoption of medical equipment [Exhibit ML-21], orthopaedic devices, prostheses [Exhibit ML-6], supports [Exhibit ML-21] and footwear [Exhibit ML-6].
[31] In other words, I am satisfied that the Owner has provided sufficient evidence to establish use of the Mark in association with services (1), (4) and (7) within the meaning of sections 4(1) and 45 of the Act.
Services (2) and (3)
[32] Mr. Lanctôt briefly referred to services (2), stating that [translation] “medical equipment financing services” were offered under an agreement between the Owner and Caisse Desjardins and were available to Canadian patients during the relevant period [emphasis added, para 39.]. With respect to services (3), Mr. Lanctôt also stated that the Mark was used in association with the processing of compensation claims. In support of his statements, he provided compensation claims for goods and invoices for the repair of medical equipment, prostheses, orthoses and footwear [exhibits ML-5 and ML-16]. He explains that those claims indicate the work done and are accompanied by the necessary supporting documents (para 39–40). He also provides three pages of advertising displaying the Mark and promoting scooters, walkers, wheelchairs, power lift chairs, i.e. medical devices (the Advertising) [Exhibit ML-22].
[33] Upon reviewing the Advertising, I note that four motorized scooters are marked with a colour label indicating the monthly payment amounts, ranging from $22 to $77. I also note that the last page of the Advertising sets the financing term at 60 months. In light of the above and without submissions by the Requesting Party, I find that the Owner has established prima facie the advertising of the Mark in association with the [translation] “financing of any kind of medical equipment” services.
[34] That said, given the limited number of goods shown in the Advertising and the fact that Mr. Lanctôt asserts that the financing is related solely to [translation] “medical equipment”, without further evidence, I cannot conclude that the Mark was used or displayed in association with the other services related to the other goods referred to in services (2), namely [translation] “orthopaedic devices, prostheses, supports and footwear”.
[35] With respect to services (3), upon reviewing the Advertising submitted in support of the financing service (2), I find it reasonable to conclude that, to finance medical devices such as the scooters advertised, the Owner had to first process its clients’ financing applications. I therefore find that, by providing the financing services for these devices, the Owner incidentally provided the application processing service first. In this regard, it has been established that certain services may include incidental or ancillary services [Société Nationale des Chemins de Fer Français SNCF v Venice Simplon‑Orient-Express, 2000 CanLII 16547, 9 CPR (4th) 443 (FCTD) [Venice Simplon‑Orient-Express]. Moreover, upon reviewing the supporting documents accompanying the compensation claims in evidence, it appears that these claims were related solely to orthopaedic devices, namely prostheses and footwear.
[36] Thus, all the evidence submitted in support of services (3) is silent concerning [translation] “supports”. Indeed, the Advertising is related only to medical devices and the compensation claims refer only to orthopaedic devices, prostheses and footwear.
[37] In short, I am satisfied that the Mark was displayed in the advertising for [translation] “financing of all kinds of medical equipment...” and “processing of claims for compensation or financial support for medical devices, orthopaedic devices, prostheses ... and footwear” services within the meaning of sections 4(2) and 45 of the Act.
[38] However, I am not satisfied that the Owner provided sufficient evidence to establish use of the Mark in association with services (2) in relation to [translation] “orthopaedic devices, prostheses, supports and footwear” or in association with services (3) in relation to “supports”. Given that the evidence does not indicate any special circumstances to justify the non-use of the Mark in association with services related to those goods, the registration will be amended accordingly.
Services (5)
[39] The Owner provided photographs and screenshots from its website that clearly establish the advertising of services (5), the design of orthopaedic devices, prostheses and footwear. For example, it provided photographs of prostheses, boots and orthopaedic footwear being manufactured in a shop, all displaying the Mark [exhibits ML-4 and ML-6].
[40] I am therefore satisfied that the Owner has shown use of the Mark in the advertising of services (5) in relation to orthopaedic devices, prostheses and footwear within the meaning of sections 4(2) and 45 of the Act.
[41] This is not the case for the design of [translation] “medical equipment” and “supports”. Indeed, either the exhibits produced in support of services (5) do not refer specifically to those goods, or the services related to them seem to correspond more to adjustment, installation or repair services better described by services (4). For example, the screenshot advertising home adaptation refers only to the sale and installation of equipment [exhibits ML-17, page 248, and ML-11, page 207]. In addition, one of the invoices describes only the repair service [Exhibit ML-11, page 208]. Another invoice describes a [translation] “toilet elevation”, which suggests that the equipment was not designed but installed or repaired on-site [Exhibit ML-11, page 206]. Moreover, although the [translation] “grab bar” identified on one of the invoices may be considered a “support”, the invoice mentions only the installation service [Exhibit ML-1, page 207]. In addition, upon reviewing one of the brochures displaying third-party trademarks in the section on power lift chairs, walkers and scooters, I find that the evidence instead shows that that medical equipment and those supports were designed by third parties [Exhibit ML-6, pages 135 to 14 and 147 to 150].
[42] In short, without further evidence, I cannot conclude that services (5) related to [translation] “medical equipment” and “supports” have been advertised. Given that the evidence does not indicate any special circumstances to justify the non‑use of the Mark in association with services (5) in relation to these goods, they will be removed from the statement of services.
Services (6)
[43] The Owner provided photographs and screenshots from its website displaying the Mark and advertising biomechanical assessment services. For example, it provided photographs showing the inside of assessment rooms and the outside of a store advertising that type of service and displaying the Mark [exhibits ML-10, ML-19 and ML‑23].
[44] With respect to the rest of services (6) described as [translation] “assessment, design, programming and prescription of physical exercises” and “design of personalized, physical exercises”, I find that the evidence does not show advertising or delivery of them. Indeed, the photographs do not show the advertising of those services and the screenshots from the Owner’s website describe only the biomechanical assessment services. In addition, the invoice submitted for all services (6) describes only a [translation] “basic biomechanical assessment” [Exhibit ML-20].
[45] Thus, without further evidence, I cannot conclude that the [translation] “assessment, design, programming and prescription of physical exercises” and “design of personalized, physical exercises” services have been advertised within the meaning of sections 4(2) and 45 of the Act. Given that the evidence does not indicate any special circumstances to justify the non-use of the Mark in association with these services, the registration will be amended accordingly.
Services (8)
[46] The Owner provided a screenshot entitled [translation] “Equipment rental” showing the advertising of services (8) related to the rental of medical equipment [Exhibit ML-12]. I note the reference to [translation] “some examples” in the centre of the screenshot, followed by images of goods, including supports. Based on these findings, I find it reasonable to conclude that the other goods related to service (8) were also advertised.
[47] I am therefore satisfied that the Owner has shown advertising of services (8) in association with the Mark within the meaning of sections 4(2) and 45 of the Act.
[48] In short, I am satisfied that the evidence shows the use of the Mark in advertising the services that I have maintained. I also find that the Owner has shown that it was willing and able to provide each of these services in Canada during the relevant period [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR(2d) 20 (TMOB)] The invoices provided in exhibits ML-5, ML-11, ML-13, ML-14, ML-16, ML-18, ML-20 and ML-24 demonstrate this.
Decision
[49] 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 shall be amended to delete:
[Translation]
Goods
CI 10 (1) [Orthopaedic apparatus, namely...] orthoses and prostheses of the trunk.
Services
CI 36 (2) [Financing of all kinds of...] orthopaedic devices, prostheses, supports and footwear.
CI 36 (3) [Processing of claims for compensation or financial support for] ... supports...
CI 42 (5) [Design of] all kinds of medical equipment, ... supports, ...
CI 44 (6) Assessment, design, programming and prescription of physical exercises, ..., [design] of personalized, physical exercises, ...
[50] The statement of goods and services shall read as follows:
Goods
CI 10 (1) Orthopaedic apparatus, namely orthoses and prostheses of the lower and upper limbs; orthopaedic footwear, namely boots and shoes; insoles.
Services
CI 35 (1) Sale and distribution of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
CI 36 (2) Financing of all kinds of medical equipment.
CI 36 (3) Processing of claims for compensation or financial support for medical devices, orthopaedic devices, prostheses and footwear.
CI 37 (4) Repair and installation of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
CI 42 (5) Design of orthopaedic devices, prostheses and footwear.
CI 44 (6) Biomechanical assessment of static and dynamic motor movements; design of biomechanical and neuromuscular assessment reports and of posture assessments.
CI 44 (7) Counselling on the adoption of medical equipment, of orthopedic apparatus, of prostheses, of supports and of shoes.
CI 44 (8) Rental of all kinds of medical equipment, orthopaedic devices, prostheses, supports and footwear.
_____________________________________________
Maria Ledezma
Hearing Officer
Trademarks Opposition Board
Canadian Intellectual Property Office
Gerald Woodard
Certified true translation
Appearances and Agents of Record
HEARING DATE: No hearing held
For the Requesting Party: Clark Wilson LLP
For the Registered Owner: ROBIC
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