Canadian Intellectual Property Office
Citation: 2023 TMOB 129
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: TMA409639 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. TMA409639 for the trademark LITTLE ME (the Mark).
[2] The Mark is registered 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 35 photographs showing various products, 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, for the most part, the Mark appears in stylized form on tags attached to the products, such as infants’ clothing, but is also displayed directly on some of the products (or packaging thereof), such as storage boxes and picture frames.
· 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] Indeed, in my view, the evidence is not ideal. In this respect, 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.
[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] Furthermore, as noted by the Requesting Party in its written representations, a trademark owner takes a risk when it leaves correlations between the evidence and the registered goods to the Registrar [para 7(d), citing Vermillion Intellectual Property Corporation v Vermilion Energy Inc, 2017 TMOB 24].
[17] This issue of correlation is most obvious with respect to the last image at Exhibit A, which appears to be that of a thick decorative sign (bearing the Mark in stylized form), resting on a shelf. It is not clear whether this image is meant to be representative of the registered “wall art…” goods as well as any undepicted “sculpture” products actually sold by the Owner, or whether Mr. Mamiye is perhaps conflating the one product with both registered goods.
[18] In resolving this issue, I note the following guidance of the Federal Court in Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448 at para 45]:
It is worth bearing in mind that the number of items in [the registration] are relatively few, so that it would not have required a great deal of trouble to “show” examples for each of them”. This would not be requiring evidentiary overkill.
[19] As in Uvex Toko with respect to the issue of whether “underwear can be designated as pants” [para 47], although Mr. Mamiye attests that all of the registered goods were sold in Canada, what the affidavit in this case does not reveal is whether – as far as Mr. Mamiye is concerned – any of the depicted products, including the depicted sign, can be designated as a kind of sculpture, much less “sculptures made of plastic, wood and plaster” in particular. Echoing Uvex Toko at para 48, given that the number of items in question is small and there would be little extra effort in providing corroborative examples of use for each item, it is not clear why the Owner failed to furnish any exhibited images (or, alternatively, specific evidence of transfers) with respect to “sculptures made of plastic, wood and plaster”.
[20] In its written representations, the Requesting Party further notes that, although Mr. Mamiye attests that the Exhibit A images are representative of the manner in which the Mark was displayed, he does not necessarily clearly state that the products shown at Exhibit A were, in fact, sold to customers during the relevant period [at para 7(e), referencing paragraph 13 of the Mamiye Affidavit]. However, I do not consider it appropriate to disregard the Exhibit A images as a whole on this basis, given that Mr. Mamiye does attest to significant sales of the registered goods. In my view, in the context of the affidavit as a whole, the exhibited images in combination with such 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.
[21] As such, I am satisfied that the Owner has demonstrated use of the Mark in association with “wall art, namely, decorative wall art made of wood for hanging on a wall and for leaning against a wall” within the meaning of sections 4 and 45 of the Act. However, in view of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered “sculptures…” goods within the meaning of sections 4 and 45 of the Act.
[22] Similarly, I am unable to correlate any of the exhibited images with “step stools” from goods (3). As such, even accepting Mr. Mamiye’s general statement that all of the registered goods were sold in Canada during the relevant period, although Mr. Mamiye states that the images are “representative” of the manner in which the Mark was displayed on the registered goods, in the absence of any images or reference otherwise specific to “step stools”, I am not prepared to conclude that such goods were sold or transferred in the normal course of trade in Canada during the relevant period, in association with the Mark or otherwise.
[23] As such, I am not satisfied that the Owner has demonstrated use of the Mark in association with “step stools”, within the meaning of sections 4 and 45 of the Act. As there is no evidence of special circumstances excusing non-use of the Mark, the registration will be amended accordingly.
[24] With respect to the remaining goods, however, I accept that the Exhibit A images generally correlate with goods (1), (2) and the remainder of goods (3) as set out 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, notwithstanding the risk taken by the Owner in not providing clear correlations, I accept that the exhibited images depict, inter alia, a variety of infants’ clothing, linens, and boxes or containers.
[25] Accordingly, in combination with Mr. Mamiye’s general statement that all of the registered goods were sold in Canada during the relevant period, I accept that the evidence as a whole is sufficient to demonstrate use of the Mark in association with goods (1), (2) and the remainder of goods (3) within the meaning of sections 4 and 45 of the Act.
Disposition
[26] 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 will be amended to delete “step stools; sculptures made of plastic, wood and plaster” from goods (3). The amended statement of goods will read as follows:
(1) Infants' clothing namely sleepwear, shirts, pants, jumpsuits, coveralls, jackets, buntings, sweaters, creepers, hats, sweatsuits, bibs, dresses, booties, sunsuits, bathing suits, sacques, kimonos, robes, vests and leotards; infant's bed and bathing linens.
(2) Cardboard storage boxes and cardboard containers; photo albums; brag books; stationery, namely, paper and pencils.
(3) Plastic storage boxes and plastic storage containers; picture frames; wall art, namely, decorative wall art made of wood for hanging on a wall and for leaning against a wall.
___________________________
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