Canadian Intellectual Property Office
Citation: 2023 TMOB 133
Date of Decision: 2023-07-31
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Montréal Production Inc.
Registered Owner: Harley-Davidson Motor Company, Inc.
Registration: TMA524,013 for HARLEY-DAVIDSON
Introduction
[1] This is a decision involving a summary expungement proceeding with respect to registration No. TMA524,013 for the trademark HARLEY-DAVIDSON (the Trademark) currently standing in the name of Harley-Davidson Motor Company, Inc. (the Owner).
[2] The Trademark is registered for use in association with numerous consumer goods such as printed products, toys, jewelry, bags, cases and luggage, and personal care products. The statement of goods is reproduced in its entirety in Schedule A to this decision.
[3] For the reasons that follow, I conclude that the registration ought to be amended.
Record
[4] On October 12, 2021, at the request of Montréal Production Inc. (the Requesting Party), the Registrar of Trademarks issued a notice pursuant to section 45 of the Trademarks Act, RSC 1985, c T‑13 (the Act) to H-D U.S.A., LLC, the previous owner of the subject registration. On May 5, 2023, the Registrar recorded a change in title from this entity to the Owner, due to a merger effective December 31, 2022. I am satisfied that this change in title is not at issue in this proceeding and, for simplicity, will refer to both the Owner and its predecessor-in-title as “the Owner”.
[5] The notice required the Owner to show whether the Trademark was used in Canada in association with each of 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 the Trademark 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 October 12, 2018 and October 12, 2021.
[6] In response to the Registrar’s notice, the Owner submitted the affidavit of Adraea M. Brown, Vice President and Assistant General Counsel for the Owner, sworn on May 12, 2022, together with Exhibits AB‑1 to AB‑22.
[7] Only the Owner filed written representations and was represented at an oral hearing.
[8] The hearing in this proceeding was held concurrently with hearings in summary expungement proceedings with respect to registration Nos. TMA640,988 for the trademark H-D, and TMA455,834 for the trademark HARLEY-DAVIDSON. Separate decisions will issue for those registrations.
Evidence
[9] Ms. Brown states that the Owner’s main activity is the manufacture and sale of motorcycles, but its activities also extend to “a range of products and services ancillary to motorcycling such as clothing, jewelry, toys, finance and insurance, touring and servicing” [para 9].
[10] The Owner markets its products and services in Canada under the Trademark either directly, or through licensees and distributors. During the relevant period, the Owner exercised direct or indirect control over the character or quality of the registered goods sold in association with the Trademark [paras 10 and 15].
[11] With respect to the Owner’s distribution chain, Ms. Brown states that goods are ordered either online or through catalogues, by direct customers and by “distributors/dealers”. When goods are ordered by distributors/dealers, they are subsequently sold to direct customers, such as through Harley-Davidson dealership stores [paras 11 and 12].
[12] As for evidence of transfers, Ms. Brown provides sales figures for “retail sales and wholesales” of registered goods bearing the Trademark [para 18]. The sales figures are provided as cumulative sales over the entire relevant period, and are broken down by categories, identified by Ms. Brown as:
·“Print products (e.g. books, manuals, posters, calendars, stickers, decals, wrapping paper, greeting cards, etc)”,
·“Toys and Games (e.g. toys, playing cards, toy vehicles, dolls, dartboards, puzzles, darts, balls, etc.)”,
·“Jewelry (e.g. necklaces, earrings, anklets, bracelets, charms, pins, rings, etc.)”,
·“Watches and watchbands”,
·“Belt buckles”,
·“Bags and luggage (e.g. backpacks, luggage, suitcases, duffel bags, purses, wallets, money clips, etc.)”,
·“Lighters and other smoking paraphernalia”,
·“Home décor (e.g. art, prints, clocks, etc.)”,
·“Holiday decor”, and
·“Other”.
[13] In the subsequent paragraph of her affidavit, Ms. Brown asserts that “at least one unit of each of the [registered goods] referenced above bearing the Trademark were sold in the normal course of trade, in Canada during the Relevant Period” [para 19].
[14] In terms of direct evidence of transfers, Ms. Brown provides representative invoices issued by the Owner’s licensees Citizen Watch Canada Ltd and MOD Jewelry Group, evidencing the sale of jewelry during the relevant period [para 17, Exhibit AB‑22].
[15] As exhibits to her affidavit, Ms. Brown attaches copies of catalogue excerpts and webpage printouts showing representative examples of registered goods available and sold to Canadians during the relevant period [Exhibits AB‑1 to AB‑16, and AB‑18 to AB‑21]. With the exception of webpage printouts from the Walmart website located at walmart.ca [Exhibit AB-10], Ms. Brown explains that the exhibited catalogues and websites are those of the Owner’s licensees and sublicensees [para 15].
[16] Ms. Brown also provides a “screen capture of Canadian [web]page displaying the 2020 Harley-Davidson Owner’s Manual: Softail Models”. While the webpage was captured in 2022, Ms. Brown states that this website was accessible and accessed by Canadians during the relevant period. The source of this webpage is not clear, though I note that the webpage header reads “H-D Service Information Portal” and the footer contains a copyright notice, namely “© 2022 Harley-Davidson Motor Company Inc.” [para 15(q), Exhibit AB-17].
[17] Ms. Brown does not provide specific references to products depicted in the exhibits and their correlation to registered goods. However, her affidavit includes a “non-exhaustive list of references to the [registered goods] as located in Exhibits” [para 16]. The list correlates some of the registered goods with exhibit numbers; the particular products depicted in those exhibits will be discussed in greater detail in the analysis section below.
Preliminary Remarks
[18] As a preliminary matter, I note that some of the exhibits attached to the Brown affidavit display the design mark reproduced below (the “Cycles Logo”):
[19] I find that the Trademark, displayed prominently at the centre of the design, stands out from the additional material such that the public as a matter of first impression would perceive the Trademark per se as being used [Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)].
[20] As a result, I consider that the display of the Cycles Logo constitutes display of the Trademark.
Reasons
[21] The relevant definition of “use” in this case is set out in section 4(1) of the Act as follows:
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.
[22] 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. As such, the evidentiary threshold that the registered owner must meet is quite low; the registered owner must simply establish a prima facie case of use within the meaning of section 4 of the Act [Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184].
[23] The Owner submits that the evidence is sufficient to show use of the Trademark in association with each of the registered goods. I disagree. Although there is no particular type of evidence that must be provided in a section 45 proceeding and the evidence need not be perfect, the evidence in this case does not permit me to form an opinion on the use of the Trademark in association with each of the registered goods [see Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448].
[24] Moreover, I am not persuaded by an argument made by Owner that the statement of goods is grouped into categories of goods which are “closely related”, such that evidenced use of the Trademark in association with some of the goods within each group is sufficient to show use for the entire group [per Saks & Co v Canada (Registrar of Trade-marks) (1989), 24 CPR (3d) 49 (FCTD)].
[25] While I agree that certain groups consist of goods which are mostly related, such as goods (4) comprising of various types of bags, cases and luggage, I note certain groups covering a range of seemingly unrelated goods. For example, I do not consider that “road atlases” are closely related to “paper napkins” in goods (1). Likewise, “jewelry” and “matches” in goods (2) are not closely related, nor are “dolls” and “fishing rods” in goods (3).
[26] I will now turn to each group of goods in turn.
Goods (1)
[27] The first group of goods reads as follows:
(1) Books, bumper stickers, checkbook covers, playing cards, calendars, decalcomanias, photo albums, posters, road atlases, service manuals for motorcycles, parts catalogs for motorcycles, accessory catalogs and lists, instruction books and handbooks, greeting cards, banners relating to motorcycling, note paper, pens and pencils, paper hats, paper table covers, paper napkins, photographs, pictures, bags of paper or plastic for wrapping and packaging.
[28] The references to exhibits listed at paragraph 16 of Ms. Brown’s affidavit allow me to confirm that many of the goods which are specified in the first group of goods are also depicted in the exhibited materials. In particular, I note the following:
bumper stickers and decals in a January 2020 catalogue for Global Products Inc. [Exhibit AB‑1];
playing cards in a 2021 catalogue for Game Gear by Dart World [Exhibit AB‑5];
a wall calendar and various framed posters in a catalogue for Trends International LLC [Exhibit AB-9];
a “Harley-Davidson ® Motorcycles banner pub sign wood” on a webpage from the online store of The Rock Harley-Davidson dealership [Exhibit AB‑15];
a canvas print on a webpage from the online store of the Pfaff Harley-Davidson dealership [Exhibit AB-16];
hardcover books in 2020 and 2021 catalogues for The Quartro Group [Exhibit AB-18];
gift bags in a Spring 2021 catalogue of ACE Branded Products [Exhibit AB‑19];
greeting cards, pens, notepads, journals, pub signs, LED signs, neon signs, and wall décor including canvas prints in a Fall 2020 catalogue of ACE Branded Products [Exhibit AB‑19]; and
a leather checkbook cover in a 2020 catalogue of The Leather Accessory Source [Exhibit AB‑21].
[29] The products listed above plainly correlate to registered goods, namely “Books, bumper stickers, checkbook covers, playing cards, calendars, decalcomanias, … posters, … greeting cards, banners relating to motorcycling, note paper, pens and pencils, … photographs, pictures, bags of paper or plastic for wrapping and packaging”. The Trademark is displayed on the goods themselves and throughout the catalogues, including catalogue cover pages.
[30] As such, having regard the evidenced sales figures for print products, games and home décor, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with the above-listed goods.
[31] With respect to the registered goods “instruction books and handbooks” and “service manuals for motorcycles”, Ms. Brown references Exhibit AB‑17, namely the screen capture showing an excerpt of the owner’s manual for 2020 Harley-Davidson® Softail® Models [para 16(a)]. Considering the sales figure for “print products” which according to Ms. Brown include “manuals”, I am therefore satisfied that the Owner has met its prima facie burden to show use of the Trademark in association with “service manuals for motorcycles” within the meaning of sections 4 and 45 of the Act.
[32] However, use evidenced with respect to one specific good cannot generally serve to maintain multiple goods in a registration; having distinguished particular goods in the registration, the Owner was obligated to furnish evidence with respect to each of the listed goods accordingly [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. With that in mind, I am not satisfied that the evidence is sufficient to also conclude that the Owner used the Trademark in association with “instruction books and handbooks”. As the Owner has provided no special circumstances that would excuse non-use of the Mark, those goods will be deleted from the statement of goods.
[33] As for the registered goods “parts catalogs for motorcycles” and “accessory catalogs and lists”, the Owner confirmed at the hearing that such documents were not sold, but rather distributed to consumers to enable them to order parts and accessories. In my view, such distribution is akin to the free distribution of a good merely to promote one’s own brand and, therefore, does not constitute a transfer in the normal course of trade [see, for example, Smart & Biggar v Sutter Hill Corp, 2012 TMOB 12; and Riches, McKenzie & Herbert LLP v Park Pontiac Buick GMC Ltd (2005), 50 CPR (4th) 391 (TMOB)].
[34] For the free distribution of a good to qualify as a transfer in the normal course of trade, the evidence must show that the good was delivered, not merely as a means of promoting other products or services, but as an object of trade in itself, leading to some kind of payment or exchange for such goods or in anticipation of securing future orders of those goods [see, e.g., Bremont Watch Company Limited v Bremont Homes Corporation, 2016 TMOB 102].
[35] Given that the documents were not distributed as objects of trade, I am not satisfied that the Owner has shown use of the Trademark in association with “parts catalogs for motorcycles” and “accessory catalogs and lists” within the meaning of the Act. In the absence of special circumstances excusing non-use, those goods will be deleted from the statement of goods.
[36] Finally, regarding the remaining registered goods “photo albums,… road atlases,… paper hats, paper table covers, paper napkins”, the Owner confirmed at the hearing that it was unable to locate such goods in the exhibits. Moreover, the examples listed by Ms. Brown in respect of the evidenced sales figures do not encompass those goods.
[37] Without more specific evidence in respect of such goods, I do not consider Ms. Brown’s broad assertion of “sales in the normal course of trade” of “at least one unit” of each of the registered goods to be of much assistance to the Owner, nor am I prepared to infer transfers from the catch-all sales figure provided for “other” goods. I am therefore not satisfied that the Owner has shown use of the Trademark in association with those remaining goods within the meaning of sections 4 and 45 of the Act. As there is no evidence before me of special circumstances excusing non-use of the Trademark, the registration will be amended accordingly.
Goods (2)
[38] The second group of goods reads as follows:
(2) Jewelry, ankle bracelets, bracelets, earrings, necklaces, tie tacks, ornamental lapel pins, stick pins, clocks, watches, rings, charms, key fobs, belt buckles of precious metal, watchbands, money clips, collar tips, boot chains, hat pins, pewter plates, figurines of precious metal, cigarette cases, cigarette lighters, snuff can holders, ashtrays not of precious metal, holders for cigarette lighters, matches, cigarette filters, and books of cigarette papers.
[39] As was the case with goods (1), many of the goods listed above are depicted in the exhibited materials. I note the following products bearing the Trademark:
metal money clips, key chains, pins and lapel pins in the January 2020 catalogue for Global Products Inc. [Exhibit AB‑1];
bracelets, ankle bracelets, earrings, necklaces, rings, charms, and other jewelry such as ride bells in 2020 Fall-Winter, 2020 Spring-Summer, and Summer 2021 catalogues for MOD Jewelry Group Inc. [Exhibit AB-13];
clocks in the Spring 2021 and Fall 2020 catalogues of ACE Branded Products [Exhibit AB‑19]; and
metal money clips and leather money clips in the 2020 catalogue of The Leather Accessory Source [Exhibit AB‑21].
[40] First, having regard to the evidenced sales figures for jewelry, home décor and bags and luggage, together with the examples given by Ms. Brown for those categories, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with “Jewelry, ankle bracelets, bracelets, earrings, necklaces, … ornamental lapel pins, … clocks, … rings, charms, key fobs, … money clips”.
[41] Second, with respect to the registered goods “watches” and “watchbands”, I note many wristwatches bearing the Trademark depicted in a Fall 2020 Bulova Watch Collection catalogue [Exhibit AB‑8]. As for evidence of transfers, the Owner provides aggregated sales figure for “Watches and watchbands”, as well as invoices issued by Citizen Watch Canada [Exhibit AB‑22].
[42] The Owner submitted at the hearing that it sells watchbands as a component of watches, and confirmed that the exhibited materials do not depict watchbands separately. However, having distinguished between watches and watchbands in the registration, the Owner was obligated to furnish evidence with respect to both [John Labatt, supra; for similar conclusions regarding components, see McMillan LLP v Orange Brand Services Ltd, 2016 TMOB 111 at paras 72-73; Vermillion Intellectual Property Corp v Vermillion Energy Inc, 2017 TMOB 24 at para 69].
[43] Otherwise, based on my review of the evidence, I note that certain Exhibit AB-22 invoices list products identified with the terms “strap” and “bracel”, such as STRAP M W ST BK and BRACEL M W BR BL. That being said, even if I were to accept that they correspond to “watchbands”, the Trademark is not associated with any products listed in the invoices, nor is there evidence to reasonably infer that the Trademark was in any other manner associated with them.
[44] Accordingly, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with “watches”, but not in association with “watchbands”.
[45] Third, with respect to smokers’ articles, I first note that the Owner was only able to locate the registered goods “cigarette lighters” and “holders for cigarette lighters” in the exhibited materials, namely products depicted in a 2020 catalogue for Zippo Manufacturing Company and identified therein as “lighter” and “lighter pouch” [Exhibit AB‑7]. The Trademark is displayed on both. Having regard to the sales figure for “Lighters and other smoking paraphernalia”, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with those two registered goods.
[46] However, given that the remaining smokers’ articles are nowhere found in the evidence, I am not prepared to accept the aggregated sales figure as sufficient to evidence transfers for “cigarette cases, … snuff can holders, ashtrays not of precious metal, …matches, cigarette filters, and books of cigarette papers”.
[47] Fourth, for the remaining goods (2), the Owner confirmed at the hearing that it was unable to locate “tie tacks,… stick pins, … belt buckles of precious metal, …collar tips, boot chains, hat pins, pewter plates, figurines of precious metal” in the exhibits. Again, the examples given by Ms. Brown in respect of the sales figures do not encompass those goods.
[48] In view of all of the above, and in the absence of evidence of special circumstances excusing non-use of the Trademark, the registration will be amended to delete “tie tacks,… stick pins, … belt buckles of precious metal, watchbands, …collar tips, boot chains, hat pins, pewter plates, figurines of precious metal” and “cigarette cases, … snuff can holders, ashtrays not of precious metal, …matches, cigarette filters, and books of cigarette papers” from the statement of goods.
Goods (3)
[49] The third group of goods reads as follows:
(3) Stuffed toy animals, toy banks, model kits, rocking horses, darts, dartboards, toy trucks, remote controlled vehicles, toy vehicles, scale model vehicles, trains and airplanes, snow sleds, model trains, model kits of vehicles, play balloons, puzzle games, billiard tables, pinball machines, aerial discs, inflatable toys, ornaments for Christmas trees, remote control toy vehicles, fishing rods and tackle, dolls, doll clothes, parlor games, and balls for games.
[50] Again, many of the goods listed above are depicted in the exhibited materials. In particular, I note the following products bearing the Trademark:
plush toy animals in 2019 and 2020 catalogues for SGI Apparel Group [Exhibit AB-12];
piggy banks on the webpage from the online store of the Pfaff Harley-Davidson dealership and in the Spring 2021 catalogue of ACE Branded Products [Exhibits AB‑16 and AB‑19];
darts, dart boards, playing cards, puzzles, domino game sets, dice games, and golf balls in the 2021 catalogue for Game Gear by Dart World [Exhibit AB‑5];
a radio controlled toy motorcycle, toy motorcycles and cars, as well as scale model motorcycles, cars and trucks in a Summer 2020 catalogue of Maisto International, Inc. [Exhibit AB‑20];
pool tables and billiard balls in the Spring 2021 catalogue of ACE Branded Products [Exhibit AB‑19];
a small metal ornament with a woven rope for hanging on a webpage from the online store of the Clare’s Harley-Davidson of Niagara dealership [Exhibit AB‑11]; and
Barbie dolls on a webpage printout from the Walmart website [Exhibit AB‑10].
[51] Having regard to the evidenced sales figures for toys and games, and holiday décor, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with “Stuffed toy animals, toy banks, … darts, dartboards, toy trucks, … toy vehicles scale model vehicles, …. puzzle games, billiard tables,… ornaments for Christmas trees, remote control toy vehicles, … parlor games, and balls for games”.
[52] With respect to dolls shown on the Walmart website, the evidence is silent as to the relationship between Walmart and the Owner. In this regard, it is settled law that use of a trademark within the meaning of sections 4 and 45 of the Act must be use by the registered owner of that trademark or by another person whose use accrued to the owner’s benefit [Lindy v Canada (Registrar of Trade Marks) (1981), 57 CPR (2d) 127 (FCTD) at 131-32, rev’d on other grounds; BCF SENCRL v Spirits International BV, 2012 FCA 131 at para 7; Live! Holdings, LLC v Oyen Wiggs Green & Mutala LLP, 2020 FCA 120 at para 21]. In this case, even if I were to accept that dolls were sold by Walmart, there is insufficient evidence to conclude that such use of the Trademark accrued to the benefit of the Owner.
[53] Otherwise, aside from a recitation of the registered goods in Ms. Brown’s affidavit, the remaining goods are nowhere depicted or specifically referenced in the evidence. I do not consider the evidenced sales figures, such as those for “toys and games”, to be sufficient establish transfers of those remaining goods and I am therefore not satisfied that the Owner has shown use of the Trademark in association with those goods within the meaning of sections 4 and 45 of the Act.
[54] As there is no evidence before me of special circumstances excusing non-use of the Trademark, the registration will therefore be amended to delete “model kits, rocking horses, … remote controlled vehicles, … [scale model] trains and airplanes, snow sleds, model trains, model kits of vehicles, play balloons, … pinball machines, aerial discs, inflatable toys, … fishing rods and tackle, dolls, doll clothes”.
Goods (4)
[55] The fourth group of goods reads as follows:
(4) Saddlery, purses, wallets, backpacks, duffle bags, motorcycle saddlebags, key fobs and key holders made of leather, garment bags, key cases, suitcases, tote bags, briefcases, attache cases, checkbook clutches, luggage, travel bags, leather beverage container holders; handbags, hip bags, haversacks, satchels, rucksacks, umbrellas, and parasols, valises, trunks, pouches, and note pad holders made of leather.
[56] I note the following products bearing the Trademark in the exhibited materials:
umbrellas, key chains, and a black vinyl padfolio with notepad in the January 2020 catalogue for Global Products Inc. [Exhibit AB‑1];
backpacks, belt bags, hip packs, totes, helmet bags, tour packs, toiletry kits, duffel bags, garment bags, luggage, in 2019, 2020, and 2021 catalogues of Athalon Sportsgear, Inc. [Exhibit AB‑2];
the “Premium Touring Luggage Collection”, including various luggage items such backpacks, overnight bags, day bags, tail bags, messenger bags, saddlebag “travel-paks” and a saddlebag cooler, in a Harley-Davidson® Genuine Motor Parts + Accessories” catalogue [Exhibit AB‑3];
a “desk accessory set” including a note paper holder, and a leather-wrapped beverage flask in the Fall 2020 catalogue of ACE Branded Products [Exhibit AB‑19]; and
purses, shoulder bags, hip bags, coin pouches, satchels, backpacks, totes, messenger bags, crossbody bags, wallets, a trifold clutch wallet with checkbook compartment, and leather key fobs in the 2020 catalogue of The Leather Accessory Source [Exhibit AB‑21].
[57] Having regard to the evidenced sales figure for bags and luggage, I am satisfied that the Owner has shown use of the Trademark within the meaning of sections 4 and 45 of the Act in association with each of goods (4).
Goods (5)
[58] The fifth group of goods reads as follows:
(5) Ornaments for hair and clothing not of precious metal, belt buckles not of precious metal, embroidery, buttons, slide fasteners, pins other than jewellery, badges and medallions.
[59] I note the following products bearing the Trademark in the exhibited materials:
pins, lapel pins, ribbon hair ties and hair scrunchies in the January 2020 catalogue for Global Products Inc. [Exhibit AB‑1];
coins, dog tags, magnets, pins, badges and embroidered patches in a 2021 catalogue for SymbolArts [Exhibit AB-4]; and
wallet chains, vest extenders and belt buckles in a Fall/Winter 2020 catalogue for 5H Accessories [Exhibit AB‑6].
[60] At the hearing, the Owner confirmed that the registered goods “buttons” and “slide fasteners” are not depicted in the exhibited materials, nor specifically referenced in Ms. Brown’s affidavit. The Owner also submitted that goods (5) are encompassed in the aggregated sales figure for “other” goods.
[61] I find that the Owner has met its prima facie burden to show use of the Trademark within the meaning of sections 4 and 45 of the Act in association with those goods which are depicted in the exhibited materials, namely “Ornaments for hair and clothing not of precious metal, belt buckles not of precious metal, embroidery” and “pins other than jewellery, badges and medallions”.
[62] However, without more specific evidence regarding “buttons” and “slide fasteners”, I am not prepared to infer transfers of those goods on the basis of the aggregated sales figure for “other” goods. In the absence of special circumstances excusing non-use, the registration will be amended accordingly.
Goods (6)
[63] The last group of goods reads as follows:
(6) After-shave lotion and cologne, perfume and soap.
[64] At the hearing, the Owner indicated that while personal care products are not presented in the evidence, the Exhibit AB-3 “Harley-Davidson® Genuine Motor Parts + Accessories” catalogue contains a section for motorcycle “surface care” products, including bike soap. The Owner submitted that goods (6) are encompassed in the aggregated sales figure for “other” goods.
[65] As was the case for “buttons” and “slide fasteners”, above, I am not prepared to infer transfers of “After-shave lotion and cologne, perfume” goods on the basis of the aggregated sales figure for “other” goods.. That being said, I find that the Owner has met its prima facie burden to show use of the Trademark in association with “soap”. In the absence of special circumstances excusing non-use, the registration will be amended accordingly.
Disposition
[66] 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 amended to delete the following goods from the registration:
(1) … photo albums, … road atlases, … parts catalogs for motorcycles, accessory catalogs and lists, instruction books and handbooks,… paper hats, paper table covers, paper napkins, …
(2) … tie tacks, … stick pins, … belt buckles of precious metal, watchbands, … collar tips, boot chains, hat pins, pewter plates, figurines of precious metal, cigarette cases, … snuff can holders, ashtrays not of precious metal, … matches, cigarette filters, and books of cigarette papers
(3) …model kits, rocking horses, … remote controlled vehicles, … [scale model] trains and airplanes, snow sleds, model trains, model kits of vehicles, play balloons, … pinball machines, aerial discs, inflatable toys, … fishing rods and tackle, dolls, doll clothes
(5) … buttons, slide fasteners, …
(6) After-shave lotion and cologne, perfume and…
[67] The statement of goods will now read as follows:
(1) Books, bumper stickers, checkbook covers, playing cards, calendars, decalcomanias, posters, service manuals for motorcycles, greeting cards, banners relating to motorcycling, note paper, pens and pencils, photographs, pictures, bags of paper or plastic for wrapping and packaging.
(2) Jewelry, ankle bracelets, bracelets, earrings, necklaces, ornamental lapel pins, clocks, watches, rings, charms, key fobs, money clips, cigarette lighters, holders for cigarette lighters.
(3) Stuffed toy animals, toy banks, darts, dartboards, toy trucks, toy vehicles, scale model vehicles, puzzle games, billiard tables, ornaments for Christmas trees, remote control toy vehicles, parlor games, and balls for games.
(4) Saddlery, purses, wallets, backpacks, duffle bags, motorcycle saddlebags, key fobs and key holders made of leather, garment bags, key cases, suitcases, tote bags, briefcases, attache cases, checkbook clutches, luggage, travel bags, leather beverage container holders; handbags, hip bags, haversacks, satchels, rucksacks, umbrellas, and parasols, valises, trunks, pouches, and note pad holders made of leather.
(5) Ornaments for hair and clothing not of precious metal, belt buckles not of precious metal, embroidery, pins other than jewellery, badges and medallions.
(6) soap.
_______________________________
Eve Heafey
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
SCHEDULE A
goods
(1) Books, bumper stickers, checkbook covers, playing cards, calendars, decalcomanias, photo albums, posters, road atlases, service manuals for motorcycles, parts catalogs for motorcycles, accessory catalogs and lists, instruction books and handbooks, greeting cards, banners relating to motorcycling, note paper, pens and pencils, paper hats, paper table covers, paper napkins, photographs, pictures, bags of paper or plastic for wrapping and packaging.
(2) Jewelry, ankle bracelets, bracelets, earrings, necklaces, tie tacks, ornamental lapel pins, stick pins, clocks, watches, rings, charms, key fobs, belt buckles of precious metal, watchbands, money clips, collar tips, boot chains, hat pins, pewter plates, figurines of precious metal, cigarette cases, cigarette lighters, snuff can holders, ashtrays not of precious metal, holders for cigarette lighters, matches, cigarette filters, and books of cigarette papers.
(3) Stuffed toy animals, toy banks, model kits, rocking horses, darts, dartboards, toy trucks, remote controlled vehicles, toy vehicles, scale model vehicles, trains and airplanes, snow sleds, model trains, model kits of vehicles, play balloons, puzzle games, billiard tables, pinball machines, aerial discs, inflatable toys, ornaments for Christmas trees, remote control toy vehicles, fishing rods and tackle, dolls, doll clothes, parlor games, and balls for games.
(4) Saddlery, purses, wallets, backpacks, duffle bags, motorcycle saddlebags, key fobs and key holders made of leather, garment bags, key cases, suitcases, tote bags, briefcases, attache cases, checkbook clutches, luggage, travel bags, leather beverage container holders; handbags, hip bags, haversacks, satchels, rucksacks, umbrellas, and parasols, valises, trunks, pouches, and note pad holders made of leather.
(5) Ornaments for hair and clothing not of precious metal, belt buckles not of precious metal, embroidery, buttons, slide fasteners, pins other than jewellery, badges and medallions.
Appearances and Agents of Record
HEARING DATE: 2023-06-06
APPEARANCES
For the Requesting Party: No one appearing
For the Registered Owner: Charlotte MacDonald
AGENTS OF RECORD
For the Requesting Party: No agent appointed
For the Registered Owner: Gowling WLG (Canada) LLP