LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 56
Date of Decision: 2016-04-06
IN THE MATTER OF A SECTION 45 PROCEEDING
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M. Capewell & Associates Inc. |
Requesting Party |
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Philhobar Design Canada Ltd. |
Registered Owner |
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TMA572,106 for FREE FALL |
Registration |
[1] This is a decision involving a summary expungement proceeding with respect to registration No. TMA572,106 for the trade-mark FREE FALL (the Mark), owned by Philhobar Design Canada Ltd. (the Owner).
[2] The Mark is registered for use in association with the following goods:
Men’s, women’s and children’s clothing namely, shirts, T-shirts, sweaters, pants, shorts, vests, jackets, robes, dresses, skirts, overalls, sleepwear, housecoats, dressing gowns, scarves, hats, mittens and gloves.
[3] For the reasons that follow, I conclude that the registration ought to be amended to delete all goods other than men’s and children’s shorts and jackets.
The Proceeding
[4] On March 12, 2014, the Registrar of Trade-marks sent a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) to the Owner. The notice was sent at the request of M. Capewell & Associates Inc.
[5] The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between March 12, 2011 and March 12, 2014 (the Relevant Period), in association with each of the registered goods. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last used and the reasons for the absence of use since that date.
[6] Section 4(1) of the Act sets out the relevant definition of “use” in association with goods:
4(1) A trade-mark 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.
[7] It has been well established that the purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for clearing the register of “deadwood”. The criteria for establishing use are not demanding and an overabundance of evidence is not necessary. Nevertheless, sufficient evidence must still be provided to allow the Registrar to conclude that the Mark was used in association with each of the registered goods specified in the registration [Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270]. Any ambiguity in the evidence should be interpreted against the registered owner as it bears the full burden of proof [Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184, 90 CPR (4th) 428 at para 16]. Furthermore, mere statements of use are insufficient to prove use [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)].
[8] In response to the Registrar’s notice, the Owner filed the affidavit of Antoinette Fanizza, sworn on September 22, 2014. Ms. Fanizza identifies herself as “director” responsible for “operations” at the Owner.
[9] Only the Owner filed written representations; a hearing was not requested.
The Owner’s Evidence
[10] In her affidavit, Ms. Fanizza states that the Owner is one of Canada’s leading suppliers of apparel, and that it manufactures and sells men’s, women’s and children’s clothing under various brand names, including under the Mark [paras 2‑3 of the affidavit].
[11] In paragraph 4 of her affidavit, Ms. Fanizza asserts that the Owner has used the Mark in association with each of the goods listed in the registration “for over a decade”. It is of note, however, that Ms. Fanizza does not unequivocally assert that the Mark has been used in association with each of the registered goods during the Relevant Period in particular.
[12] Indeed, in paragraph 5 of her affidavit, Ms. Fanizza asserts that the Owner “has sold men’s, and children’s clothing, namely, shirts, T-shirts, sweaters, pants, shorts, vests, jackets, scarves, hats, mittens and gloves” in Canada in association with the Mark throughout the Relevant Period and “continues to make such sales”.
[13] Ms. Fanizza attests that the Mark “appears on labels affixed to all of the FREE FALL clothing sold in Canada”. As an example, Ms. Fanizza provides, as Exhibit “A” to her affidavit, photographs of “representative FREE FALL branded clothing” which she attests were sold by the Owner in Canada during the Relevant Period [para 6 of the affidavit].
[14] While it is not clearly stated by Ms. Fanizza in her affidavit, in its written representations the Owner submits that Exhibit “A” contains photographs of men’s and children’s shorts and jackets. Having reviewed the seven exhibited photographs, I note that they seem to be for a variety of styles of shorts and jackets. Furthermore, since the Owner also submits that the exhibited photographs show the Mark on labels, I should point out the following:
• the first photograph shows FREEFALL, in a stylized script, in the inside waistband of shorts;
• each of the shorts shown by the second and third photographs has an inner label on which I can see a logo. However, the Mark is not visible, nor is any wording visible, on the labels;
• each of the jackets shown by the fourth and fifth photographs has an inner label displaying FREEFALL in a design form; and
• the last two photographs are for shorts with an inner label displaying FRƎƎFALL.
[15] In view of the above, the trade-mark actually used as shown in five of the exhibited photographs, namely FREEFALL or FRƎƎFALL, differs from the Mark as registered. However, in applying the principles as set out in Canada (Registrar of Trade Marks) v Cie international pour l’informatique CII Honeywell Bull, SA (1985), 4 CPR (3d) 523 (FCA), I consider the display of the Mark in one word rather than two words to be a minor deviation. As such, the identity of the Mark is preserved and the deviation would not, in my opinion, mislead an unaware purchaser. Likewise, in spite of the inversion of the letters “EE” (“ƎƎ”) in the trade-mark as used, I consider that the Mark did not lose its identity and remained recognizable. Thus, I ultimately conclude that three of the exhibited photographs show shorts displaying the Mark whereas two of the exhibited photographs show jackets displaying the Mark.
[16] Finally, Ms. Fanizza provides, as Exhibits “B” and “C” to her affidavit, “representative invoices showing the sale of FREE FALL branded clothing to Costco Wholesale – Canada” [para 7 of the affidavit]. Ms. Fanizza explains that each invoice is accompanied with a “Detailed Order Worksheet”. Making a correlation between style numbers shown on the invoices and the worksheets, Ms. Fanizza goes on to explain that the invoice filed as Exhibit “B”, dated October 24, 2011, relates to the sale of jackets, and the invoice filed as Exhibit “C”, dated July 3, 2013, relates to the sale of shorts [paras 8‑9 of the affidavit].
Analysis
[17] At the outset, I note that at no point in its written representations does the Owner contend that the affidavit of Ms. Fanizza establishes use of the Mark in association with each of the registered goods during the Relevant Period. Rather, the Owner contends that the affidavit provides sufficient facts to permit the Registrar to conclude to the use of the Mark in Canada, in association with men’s and children’s shirts, T‑shirts, sweaters, pants, shorts, vests, jackets, scarves, hats, mittens and gloves, during the Relevant Period.
[18] Thus, the Owner appears to concede that the evidence does not establish use of the Mark in association with “women’s clothing” as well as “robes”, “dresses”, “skirts”, “overalls”, “sleepwear”, “housecoats”, and “dressing gowns” for men and children. Indeed, Ms. Fanizza does not specifically assert that the Owner has sold these goods in association with the Mark during the Relevant Period and provides no evidence of special circumstances excusing non-use of the Mark in association with such goods. Accordingly, the registration will be amended to delete these goods.
[19] I now return to the Owner’s contention that sufficient evidence has been provided to establish use of the Mark during the Relevant Period in association with men’s and children’s shirts, T‑shirts, sweaters, pants, shorts, vests, jackets, scarves, hats, mittens and gloves.
[20] In support of its contention, the Owner submits that Ms. Fanizza: (i) has clearly stated under oath that the Owner has sold each of the goods in Canada, during the Relevant Period, in association with the Mark; (ii) has described the manner the Mark was associated with the goods at the time of sale; (iii) has provided representative samples of use of the Mark in association with men’s and children’s clothing; and (iv) has provided representative invoices concerning the sale of such goods. Citing Etigson v KPM Industries Ltd, 2001 CanLII 37767, 15 CPR (4th) 411 (TMOB) (Etigson), the Owner submits that it was not required to furnish samples of use of the Mark and invoices for each of the men’s and children’s clothing sold during the Relevant Period.
[21] In other words, the Owner submits that Ms. Fanizza’s assertions along with the exhibited photographs and invoices do not only support a finding of use of the Mark in association with men’s and children’s shorts and jackets, but they also support a finding of use in association with men’s and children’s shirts, T‑shirts, sweaters, pants, vests, scarves, hats, mittens and gloves.
[22] Taking at face value Ms. Fanizza’s assertion that the Owner has sold men’s and children clothing during the Relevant Period, and considering the exhibited photographs and invoices, I am satisfied that sufficient evidence has been provided to demonstrate use of the Mark in Canada, within the meaning of sections 4(1) and 45 of the Act, in association with men’s and children’s shorts and jackets.
[23] However, for the reasons that follow, I am not satisfied that the affidavit sets out sufficient facts to demonstrate use of the Mark, within the meaning of sections 4(1) and 45 of the Act, in association with men’s and children’s shirts, T‑shirts, sweaters, pants, vests, scarves, hats, mittens, and gloves (the Remaining Goods).
[24] While Ms. Fanizza clearly asserts that the Owner has sold the Remaining Goods in Canada in association with the Mark throughout the Relevant Period, use must be shown in association with each of the Remaining Goods. Since section 4(1) of the Act applies in this case, some evidence of transfers in the normal course of trade in Canada is necessary. Such evidence can be in the form of documentation such as invoices, but can also be through clear sworn statements of fact.
[25] 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 [see 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, CarswellNat 2439; and Gowling Lafleur Henderson LLP v Wertex Hosiery Incorporated, 2014 TMOB 193, CarswellNat 4624].
[26] I acknowledge that the evidence in the present case is somewhat similar to the evidence in Etigson. The evidence in that case, as in the present case, included a clear enumeration of each of the goods sold in association with the trade-mark during the relevant period; a description of the manner the trade-mark was associated with such goods at the time of sale; and representative invoices and packaging and labelling as examples of use. However, not only is it trite law that each case must be decided based upon its own merit, but the present case is distinguishable from Etigson.
[27] Indeed, in Etigson the evidence also included representative advertisements for the registered owner’s products and statements concerning the volume of sales for some of the products listed in the registration. In the present case, there is no evidence of advertisements from which I could reasonably infer sales of the Remaining Goods during the Relevant Period, or evidence of volume of sales for the Remaining Goods.
[28] I also acknowledge that the exhibited photographs are said to be “representative of FREE FALL branded clothing” sold in Canada during the Relevant Period. However, as I observed before, two exhibited photographs show shorts with a label displaying a logo, but not the Mark. Such exhibited evidence contradicts Ms. Fanizza’s statement that the Mark “appears on labels affixed to all of the FREE FALL clothing sold in Canada” (emphasis added) [para 6 of the affidavit]. At a minimum, this contradiction raises ambiguity in the evidence. While Ms. Fanizza might well have thought that her statement was, in a sense, true and justifiable, the fact that some of the exhibited shorts do not show a label displaying the Mark gives me a reason to doubt that each of the Remaining Goods would have been sold in association with the Mark. This further distinguishes the present case from Etigson, where the Registrar commented that there was no reason to doubt the affidavit’s enumeration of the particular goods sold.
[29] Finally, although not specifically relied on by the Owner, I do not consider Saks & Co v Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FCTD) applicable in the present case. In Saks, there were 28 distinct categories of goods and services; the Court considered that it would have placed an unreasonable burden on the registered owner to furnish detailed evidence for all of the registered goods and services. In the present case, there are not that many Remaining Goods. Thus, I do not find it unreasonable to expect the Owner to have furnished some evidence of transfers in the normal course of trade with respect to the Remaining Goods, especially since Ms. Fanizza asserts that such goods have been sold throughout the Relevant Period. Also, given Ms. Fanizza’s statement that the Owner continues to make such sales, it should have been a simple matter to furnish photographs for each of the Remaining Goods as representative examples of use of the Mark in association with such goods. Instead, curiously, the Owner chose to limit its evidence to only shorts and jackets in both respects.
[30] In view of the above, in the absence of supporting exhibits with respect to the Remaining Goods, as well as in the absence of any clear statements regarding volumes of sales, dollar values of sales or other particulars, I am not prepared to infer that the Remaining Goods for which Ms. Fanizza asserts use were, in fact, sold in the normal course of trade in Canada during the Relevant Period, in association with the Mark. Furthermore, there is no evidence of special circumstances excusing non-use of the Mark in association with the Remaining Goods. Accordingly, the registration will be amended to delete the Remaining Goods.
Disposition
[31] 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 section 45 of the Act, registration No. TMA572,106 will be amended to delete the following from the statement of goods:
[…] women’s […] shirts, T-shirts, sweaters, pants, […] vests, […] robes, dresses, skirts, overalls, sleepwear, housecoats, dressing gowns, scarves, hats, mittens and gloves.
[32] Accordingly, the amended statement of goods will be as follows:
Men’s, and children’s clothing namely, shorts and jackets.
______________________________
Céline Tremblay
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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No Hearing Held
AGENT(S) OF RECORD
Smart & Biggar FOR THE REGISTERED OWNER
Marie Capwell
(M. Capewell & Associates Inc.) FOR THE REQUESTING PARTY