Canadian Intellectual Property Office
Citation: 2023 TMOB 136
Date of Decision: 2023-07-31
[UNREVISED ENGLISH
CERTIFIIED TRANSLATION]
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Gestion IDAAM Inc.
Registered Owner: Manufacturiers Technomarine Inc./Technomarine Manufacturing Inc.
Registration: TMA774,197 for TECHNO MARINE & Design
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. TMA774,197 for the trademark TECHNO MARINE & Design (the Mark), shown below:
[2] The Mark is registered for use in association with the following:
Wares:
[3] For the reasons that follow, I conclude that the registration ought to be maintained.
The Proceeding
[4] At the request of Gestion IDAAM Inc. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on July 29, 2021, to Manufacturiers Technomarine Inc./Technomarine Manufacturing Inc. (the Owner), the registered owner of the Mark.
[5] The notice required the Owner to show whether the trademark was used in Canada in association with each of the goods and services listed 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 July 29, 2018 to July 29, 2021.
[6] The relevant definitions of use are set out in section 4 of the Act as follows:
[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 affidavit of Eric Sanderson, sworn on October 26, 2021, together with exhibits A to F.
[9] Only the Requesting Party submitted written representations, and no oral hearing was held.
The evidence
[10] In his affidavit, Mr. Sanderson identifies himself as the President and Chief Executive Officer of Technomarine Group Inc. (the Group), a company based in the United States. He also identifies himself as the President of the Owner, a subsidiary of the Group based in Quebec and headquartered in Montréal [paras 1–6].
[11] Mr. Sanderson states that the Owner specializes in the building and design of custom marinas systems and provides construction and development services for turnkey marinas. He also states that the goods sold and services offered by the Owner are intended for private or municipal marinas and owners of private, residential and business quays in Canada [paras 7–8].
[12] Mr. Sanderson describes the goods specified in the registration and lists their primary components. In this regard, he states the following:
“As stated in the registration, the [Mark] is associated with a system of quays and floating breakwaters. The main components of the system are floats, floor panels, fins, cleats, anchorages, and various connectors. These components can be sold together as a system or individually as spare parts or additional parts that can be added to a previously sold system” [para 11].
[13] In addition, he confirms that the Mark is prominently displayed on the components and on the system.
[14] Mr. Sanderson states that the Owner sold products bearing the Mark in its normal course of trade and offered its services to Canadian clients during the relevant period. In this regard, he notes that the sales of products and services in association with the Mark in Canada during this period generated more than CAD$1,500,000. Specifically with respect to the services, Mr. Sanderson states that the Owner advertised them through brochures and data sheets available in print or online on its website technomarineusa.com. He estimates that more than 250 people viewed his brochures in Canada during the relevant period [paras 10–18].
[15] In support of his affidavit, Mr. Sanderson attached the following relevant exhibits:
·A photograph of a floater bearing the Mark [Exhibit B]. Mr. Sanderson states that this photograph illustrates one of the components of the system and that it is representative of goods sold under the Mark in Canada during the relevant period.
·A technical drawing of a “500 Series” cleat model [Exhibit C]. Mr. Sanderson states that this cleat was sold as an integral part of the system in Canada during the relevant period. The Mark is prominently displayed on the top and side of the cleat.
·A 17-page brochure [Exhibit D]. Mr. Sanderson states that this brochure illustrates how the cleat, shown in Exhibit C, is inserted into the system. The brochure shows the “500 Series” quay systems with several breakwater finishes. The first page of the brochure refers to the public or commercial use of the systems. The brochure then details systems 520, 535, and 550, specifying the characteristics of their components and the possible applications of these systems; for example, system 535 applies to marinas for larger yachts and ferry terminals, while system 520 applies to marinas for pleasure craft. The brochure also states that the series 200 and 500 floats and anchorages adapt to all floating quay systems. The Mark is prominently displayed on the first page of the brochure and on the pages illustrating each system and component. The date of September 30, 2009, is shown at the bottom of each page.
·Two invoices issued by the Owner to addresses in Canada during the relevant period [Exhibit E]. Mr. Sanderson states that these invoices are examples of sales made in the Owner’s normal course of trade to customers in Canada during the relevant period. He confirms that the components described in these invoices are part of the system sold in association with the Mark [para 15]. The first invoice—issued on August 29, 2020, to the City of Colborne, Ontario—describes five boxes of “Flexi-Block” and 50 ST-200-12 model cleats. The second—issued on September 30, 2018, to Meta-For in Quebec—describes 1,015 hours of engineering design and calculations provided between July 1 and September 30, 2018. The Mark is displayed at the top of the invoices, in addition to the Owner’s corporate name and its corporate information.
·Several screenshots of the technomarineusa.com website [Exhibit F]. Mr. Sanderson states that these screenshots are representative of the use of the Mark in the advertisement of the services in Canada during the relevant period [para 16]. The Mark is displayed on each screenshot. Contact information for the Group and the Owner appear on the “Contact Us” page. The tabs related to turnkey engineering, manufacturing, and construction are shown in the screenshots. In this regard, I note that two quays in Canada (those in Alma and Québec City) are among the completed projects under the manufacturing tab.
Analysis and reasons
Preliminary remarks: facts and exhibits not introduced into evidence
[16] In its written representations, the Requesting Party refers to facts that are not in evidence, and it attached exhibits in support of its submissions; for example, the Requesting Party claims that one of the invoiced companies has been expunged since 2009, and it attached a copy of the Quebec Entreprise Register [item i.]. However, pursuant to section 45(2) of the Act, in section 45 proceedings, the Registrar may only receive evidence provided by or on behalf of the registered owner [Ridout & Maybee LLP v Encore Marketing International, Inc (2009), 72 CPR (4th) 204 (TMOB)]. In addition, section 45 proceedings are not intended to try contested issues of fact that are to be dealt with under section 57 of the Act [see Meredith & Finlayson v Canada (Registrar of Trademarks) (1991), 40 CPR (3d) 409 (FCA)]. Therefore, I will not consider these facts and exhibits in my decision.
[17] Otherwise, the Requesting Party’s written representations contain numerous objections to the Owner’s evidence. These objections are raised (i) generally, (ii) specifically with respect to the goods, or (iii) specifically with respect to the services.
General objections to the evidence
[18] First, the Requesting Party challenges all the evidence on the basis that the Owner’s address identified in the affidavit and those shown on the invoices do not match the address in the Register [item a.]. However, the fact that the addresses in evidence differ from the one in the Register is of no consequence in this case. The Owner is clearly identified as such in the affidavit and invoices. Moreover, the Owner may have more than one establishment in Canada.
[19] With respect to the evidence of display of the Mark, the Requesting Party considers that the photograph, the technical drawing, and the brochure in evidence are irrelevant. In particular, it alleges that the photograph and the technical drawing are not dated, and that the pamphlet precedes the relevant period [items e. and g.]. However, Mr. Sanderson states that the photograph is representative and that the cleat depicted in the technical drawing was sold as an integral part of the system in Canada during the relevant period. In addition, he associates this cleat with the brochure by stating that it illustrates how it fits into the system. In this regard, it is well established that an affiant’s sworn statements are to be accepted at face value, and statements in an affidavit must be accorded substantial credibility in a section 45 proceeding [Oyen Wiggs Green & Mutala LLP v Atari Interactive, Inc, 2018 TMOB 79 at para 25 [Oyen Wiggs Green]]. Furthermore, the approach of dissecting and examining each piece of evidence presented by the Owner separately is inappropriate. Evidence must be considered as a whole [see Kvas Miller Everitt v Compute (Bridgend) Ltd (2005), 47 CPR (4th) 209 (TMOB); and Fraser Milner Casgrain LLP v Canadian Distribution Channel Inc (2009), 78 CPR (4th) 278 (TMOB)]. Thus, the exhibits must be considered in light of the information provided in Mr. Sanderson’s affidavit, not as separate documents.
[20] With respect to the evidence of sales, the Requesting Party questions the validity of the invoices in evidence by stating that the invoice number of the goods is lower than the invoice number for the services, whereas this invoice number predates it [item i.]. However, I find that the fact reported by the Requesting Party is insufficient in itself to exclude these invoices, especially because two years have passed between these invoices and their style is different. In addition, one invoice is for goods while the other is for services.
[21] Therefore, I find that the affidavit and exhibits B, C, D, and E filed in its support are relevant and valid in this proceeding.
The goods
[22] The Requesting Party challenges all evidence of transfer and the correlation of the evidence with the statement of goods.
[23] With respect to the evidence of transfer, the Requesting Party submits that the sales figures provided by Mr. Sanderson are not corroborated [item h.]. However, the principle established in Oyen Wiggs Green, above, applies here. It further alleges that the sale of the goods in Canada is unclear on the basis that the currency indicated on the invoice is in US dollars [item ii.]. However, I believe that the payment in foreign currency is not fatal in itself. The Owner is required to demonstrate that the goods bearing the Mark were sold in Canada during the relevant period, regardless of the currency used in the payment. In view of the recipient of the invoice, I find that the Owner has demonstrated the sale in Canada of the goods described on this invoice even though they were paid in US dollars.
[24] With respect to the correlation of the evidence, the Requesting Party submits that the invoice in evidence describes goods that are not specified in the registration and that the sale of the components is not equivalent to the sale of the system [item d.].
[25] However, it has been established that the issue of whether a trademark was used in association with the goods specified in the registration must be decided on a case-by-case basis [see Clark Wilson LLP v Greenland Sales Limited, 2022 TMOB 38, citing Express File Inc v HRB Royalty Inc, 2005 FC 542].
[26] In accordance with this principle, given the Owner’s activities and the description of the goods made by Mr. Sanderson [paras 7–8 and 11], I consider that the sale of the components of the system is sufficient to demonstrate the use of the Mark in association with the goods specified in the registration. This is especially true given that the system applications, as described in the brochure [Exhibit D], support Mr. Sanderson’s statements and are consistent with the statement of goods.
[27] In this case, Mr. Sanderson has provided a representative photograph of a component of the system bearing the Mark. He has also provided a representative invoice issued in Canada during the relevant period and confirms that the goods described on this invoice are components of the system. In addition to this invoice, he has provided sales figures that, while combined with the services, include the goods sold in Canada during the relevant period.
[28] In short, in light of the evidence as a whole, I find that the Owner has met its burden of demonstrating that components of the system bearing the Mark were sold in Canada during the relevant period.
[29] Thus, I am satisfied that the Owner has sufficiently demonstrated use of the Mark in association with the goods specified in the registration within the meaning of sections 4(1) and 45 of the Act.
The services
[30] The Requesting Party alleges that the evidence of the advertisement of the services in Canada is unclear. In this regard, it contends that there is no evidence that Canadian customers of the Owner had access to the brochure during the relevant period [item k.]. It also contends that the Owner’s website is not for Canadians because it is hosted in the United States. Furthermore, the Requesting Party submits that the evidence of the performance of the services is irrelevant. Specifically, it alleges that the Québec and Alma quay projects (the Projects), referred to on the Owner’s website, were completed prior to the relevant period [item j.]. Furthermore, it submits that the description of the services on the invoice does not match the services specified in the registration [item i.].
[31] To begin with, I agree with the Requesting Party that Mr. Sanderson does not expressly state that the Canadians who saw the brochure are customers of the Owner.
[32] That said, Mr. Sanderson expressly states that the Owner advertised its services on its website. He has provided representative screenshots of the website bearing the Mark and displaying the Owner’s contact information. In addition, the website contains clear references to the services specified in the registration; for example, under the “Services” tab, the website states:
“From production to delivery and installation, our engineering excellence efforts are highlighted in every marina renovation project we manage. Starting with the assessment of current conditions and due diligence reports to special studies and feasibility assessments, our engineering team guides clients through the planning and design process….” [Exhibit F, page 43]
[33] And under the “Construction” tab:
“The [Owner]’s staff are highly qualified and experienced in turnkey design and construction projects ... We have the technical and communication skills needed to effectively manage construction projects, ensuring quality and efficiency are a priority for each project.” [Exhibit F, page 46]
[34] Although the website’s web pages cannot be physically distributed like printed advertisements, they can still be an advertisement if they have been distributed or are available to potential customers. A clear statement to that effect may constitute sufficient evidence of distribution or, failing that, some evidence to infer that clients or potential clients have visited the web pages may be sufficient [see, for example, Shift Law v Jefferies Group, Inc, 2014 TMOB 277; see also Ridout & Maybee LLP v Residential Income Fund LP, 2015 TMOB 185 at para 47]. However, the mere existence of archived web pages online is insufficient to establish that they were visited by Canadians during the relevant period.
[35] In this case, although the Owner did not provide data on access to its website, it provided sales figures in Canada during the relevant period, and these figures include services. I can therefore infer that at least a few Canadians have had access to the web pages shown in the screenshots during the relevant period.
[36] Therefore, I am satisfied that the Owner has demonstrated use of the Mark in the advertisement of the services specified in the registration within the meaning of sections 4(2) and 45 of the Act.
[37] In addition to the advertisement of the services specified in the registration, based on the content of the website, I find it reasonable to conclude that the exhibited invoice demonstrates the performance of the services for the “design of marinas, feasibility studies and preparation of plans for quays, gangways and marina breakwaters” in Canada during the relevant period.
Decision
[38] 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 maintained.
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Canadian Intellectual Property Office
Certified translation
Daniel Lepine