Canadian Intellectual Property Office
Citation: 2023 TMOB 128
Date of Decision: 2023-07-27
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Jensen IP
Registered Owner: Mamiye IP Holdings LLC
Registration: TMA332742 for LITTLE ME
Introduction
[1] At the request of Jensen IP (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 29, 2022, to Mamiye Brothers, Inc. (Mamiye), the registered owner at that time of registration No. TMA332742 for the trademark LITTLE ME (the Mark).
[2] The Mark is registered for use in association with the following goods:
[3] The notice required the registered owner to show whether the Mark was used in Canada in association with 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 March 29, 2019 to March 29, 2022.
[4] The relevant definition of use is 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.
[5] In the absence of use, pursuant to section 45(3) of the Act, the registration is liable to be expunged, unless the absence of use is due to special circumstances.
[6] Subsequent to the issuance of the notice, a change in title to Mamiye IP Holdings LLC (the Owner) was recorded by the Registrar. This change in title is not at issue in this proceeding.
[7] In response to the Registrar’s notice, the Owner furnished the affidavit of Hyman Mamiye, sworn on June 27, 2022 (the Mamiye Affidavit).
[8] Both parties submitted written representations. Although the Requesting Party requested an oral hearing, neither party attended.
The Owner’s Evidence
[9] In his affidavit, Mr. Mamiye attests that he is the Manager of the Owner and that, prior to April 2022, he was the President of the Owner’s predecessor, Mamiye [para 1]. He states that Mamiye is a family-owned and operated designer, distributor manufacturer and marketer of apparel for women, children and infants, headquartered in New York [para 7]. He confirms that his affidavit describes use of the Mark during the relevant period by Mamiye and that, as of the date of his affidavit, Mamiye is now licensed by the Owner to use the Mark in Canada in association with the registered goods pursuant to a license agreement [paras 5 and 6].
[10] Mr. Mamiye asserts that “Mamiye had sold in Canada, in the normal course of trade, the Registered Goods marked with [the Mark] during the Relevant Period” [para 8]. He states that Mamiye’s normal course of trade in Canada during the relevant period was through i) direct sales to Canadian retailers (including The Bay and Pharmasave) who, in turn, sold the registered goods directly to Canadian consumers; ii) through licensees (including Shalom International Inc.) that sold directly to Canadian retailers; and iii) through its own website, littleme.com [paras 9 to 11]. He confirms that Mamiye’s licensees were licensed to use the Mark in association with the registered goods in Canada during the relevant period, and that Mamiye maintained care and control over the nature and quality of such registered goods [para 12].
[11] Mr. Mamiye attests that, during the relevant period in Canada, the Owner had sales of the registered goods in association with the Mark in excess of 4.6 million USD [para 16].
[12] In support, the following exhibits are attached to the Mamiye Affidavit:
· Exhibit A consists of seven photographs showing various items of children’s clothing, that Mr. Mamiye states “are images of a sampling of the Registered Goods in association with [the Mark] … representative of the manner in which [the Mark] appeared on the Registered Goods sold in Canada by Mamiye during the Relevant Period” [para 13]. I note that the Mark appears in stylized form on tags and labels that are attached or affixed to the depicted clothing items.
· Exhibit B consists of five screenshots that Mr. Mamiye attests are printouts of Mamiye’s website, littleme.com, from September 2020, obtained from the Internet Archive Wayback Machine [para 14]. The webpages advertise various categories of products available for sale, including “Baby Basics For Him”, “Pajamas” and “Outerwear”.
· Exhibit C consists of a dozen website screenshots that Mr. Mamiye attests are printouts from The Bay’s webpage, thebay.com, “which feature some of [the Owner’s] Goods marked with [the Mark] that are available for sale in Canada … representative of the manner in which [the Mark] appeared on the Registered Goods as they were available for sale on The Bay’s webpage during the Relevant Period” [para 15].
Analysis
[13] In its representations, the Requesting Party argues that the Owner’s evidence has “significant deficiencies” [para 7]. In particular, the Requesting Party submits that no information is provided “as to which exact Goods were allegedly sold in Canada” [para 7(b)] and that no information on unit sales numbers or unit costs was provided, nor does the Owner furnish even a single invoice, purchase order or shipping receipt [para 7(c)].
[14] The Requesting Party notes that, although Mr. Mamiye attests that the Exhibit A images are representative of the manner in which the Mark appeared, he does not necessarily clearly state that the items of clothing shown in Exhibit A were, in fact, sold to customers in Canada during the relevant period [para 7(d), referencing paragraph 13 of the Mamiye Affidavit].
[15] While a registered owner is not obligated to provide invoices for each registered good, sufficient evidence must nonetheless be provided to allow the Registrar to conclude that transfers in the normal course of trade actually occurred in Canada with respect to each of the registered goods [Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)]. By way of example, in the absence of invoices, such evidence can include statements regarding volumes of sales, dollar value of sales, or equivalent factual particulars [see, for example, 1471706 Ontario Inc v Momo Design srl, 2014 TMOB 79; and Gowling Lafleur Henderson LLP v Wertex Hosiery Incorporated, 2014 TMOB 193].
[16] As such, indeed, the evidence in this case is not ideal; Mr. Mamiye provides only cumulative annual sales figures and neither he nor the Owner in its written representations attempts to correlate any of the exhibited images with the registered goods.
[17] Nevertheless, in the context of a section 45 proceeding, the evidence as a whole must be considered and focusing on individual pieces of evidence is not the correct approach [Kvas Miller Everitt v Compute (Bridgend) Limited (2005), 47 CPR (4th) 209 (TMOB)]. The evidence need not be perfect; a registered owner need only evidence facts from which a conclusion of use may follow as a logical inference [per Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184 at para 9].
[18] In view of such principles, I do not consider it appropriate to disregard the Exhibit A images as suggested by the Requesting Party, given that Mr. Mamiye does attest to significant sales of the registered goods, all of which are in the same “children’s wear” category. In my view, in the context of the affidavit as a whole, the exhibited images in combination with that sworn statement amounts to a sufficient factual basis to conclude that the goods depicted in Exhibit A, at least, were sold in Canada during the relevant period.
[19] I further accept that those depicted clothing items generally correlate with the registered goods as specified in the statement of goods, and are representative of the manner in which the Mark was displayed in association with such goods sold during the relevant period in Canada. In this respect, the exhibited images clearly depict various kinds of identifiable children’s wear. For example, I accept that the second image, depicting three different pants/shirt/bowtie combinations, reasonably correlates with the registered goods “suits”.
[20] As such, despite the risk taken by the Owner in providing neither correlations nor sales information particular to each good, the evidence is nonetheless sufficient for purposes of this proceeding.
[21] In view of the foregoing, I accept that the evidence as a whole is sufficient to demonstrate use of the Mark in association with all of the registered goods within the meaning of sections 4 and 45 of the Act.
Disposition
[22] Accordingly, 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.
___________________________
Andrew Bene
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: No hearing held
AGENTS OF RECORD
For the Requesting Party: Heidi Jensen
For the Registered Owner: Riches, McKenzie & Herbert LLP