LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 74
Date of Decision: 2016-05-13
IN THE MATTER OF A SECTION 45 PROCEEDING
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88766 Canada Inc.
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Requesting Party |
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Kabushiki Kaisha BANDAI NAMCO Entertainment (also trading as BANDAI NAMCO Entertainment Inc.) |
Registered Owner |
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TMA316,606
POLE POSITION |
Registration |
[1] At the request of 88766 Canada Inc. (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on February 20, 2014 to Kabushiki Kaisha Bandai Namco Games (Namco Bandai Games Inc.), the registered owner at the time of registration No. TMA316,606 for the trade-mark POLE POSITION (the Mark).
[2] The Mark is registered for use in association with “video games”.
[3] The notice required the registered owner to furnish evidence showing that the Mark was in use in Canada, in association with the goods specified in the registration, at any time between February 20, 2011 and February 20, 2014.
[4] The relevant definition of use with respect to goods is set out in section 4(1) of the Act as follows:
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.
[5] 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 and, as such, the evidentiary threshold that the registered owner must meet is quite low [Uvex Toko Canada Ltd v Performance Apparel Corp (2004), 31 CPR (4th) 270 (FC)].
[6] Subsequent to the issuance of the notice, the Registrar recorded a change of name of the subject registration from Kabushiki Kaisha Bandai Namco Games (Namco Bandai Games Inc.) to Bandai Namco Games Inc. on May 1, 2014, effective April 1, 2014. I note that the Registrar recorded a further change of name from Bandai Namco Games Inc. to Kabushiki Kaisha BANDAI NAMCO Entertainment (also trading as BANDAI NAMCO Entertainment Inc.) on April 7, 2016, effective April 1, 2015. These changes are not at issue in this proceeding.
[7] In response to the Registrar’s notice, Bandai Namco Games Inc. (Namco) furnished the affidavit of Satoshi Oshita. Both parties filed written representations; only the registered owner was represented at the hearing.
[8] As a preliminary matter, the Requesting Party submits in its written representations that the affidavit of Satoshi Oshita is inadmissible as Mr. Oshita did not sign the document in the presence of a commissioner of oaths or a notary public. In particular, the Requesting Party submits that there is no confirmation from a commissioner of oaths or a notary public that Mr. Oshita signed the written declaration after having attested to the truth of the information. In support, the Requesting Party points to two documents attached to Mr. Oshita’s affidavit as evidence that a person by the name of Hiroshi Okutani attested in the presence of a notary public that Mr. Oshita signed the affidavit, but that there is no indication of Mr. Oshita himself having appeared before a notary public.
[9] I note that the Requesting Party appears to be referencing information that is found in the first document, which is set out entirely in Japanese with what appears to be a notary stamp. The document is not accompanied by a translation. In contrast, the second document is set out in both Japanese and English with another stamp and a seal from the Ministry of Foreign Affairs, Japan. The English text includes the following:
“Registration No. 608
CERTIFICATE
This is to certify that the annexed Notarial Certificate has been executed by Notary, duly authorized and practising in Tokyo, Japan, and that the Official seal appearing on the same is genuine.
Date OCT. 17. 2014
Kazuhiro ISHIDA
Director of the Tokyo Legal Affairs Bureau
[10] In response, Namco submitted at the hearing and in its written representations that a foreign affidavit is generally acceptable as long as it meets the requirements of the country where it was sworn in and that in this case, there is no indication that Mr. Oshita’s affidavit does not meet the requirements of Japan.
[11] I agree. The Registrar generally accepts affidavits sworn in foreign jurisdictions as long as they meet the requirements of that jurisdiction [see, for example, Dubuc v Montana (1991), 38 CPR (3d) 88 (TMOB) and Bull, Housser & Tupper LLP v Sacha London, SL, 2013 TMOB 112 (CanLII), 113 CPR (4th) 371].
[12] In the presence case, I see no reason, for the purpose of this proceeding, to find the furnished evidence inadmissible as there is no indication, nor did the Requesting Party allege, that Mr. Oshita’s affidavit would not be considered to be a properly sworn affidavit in Japan.
[13] In his affidavit, Mr. Oshita states that he is the President and CEO of Namco and that as such, he can access and is familiar with corporate files and records maintained by Namco in the ordinary course of business related to the use of the brands it sells in Canada, including POLE POSITION.
[14] Mr. Oshita states that the POLE POSITION video game was released in 1982 and is regarded as one of the most influential video games of all time, establishing the conventions of the racing game genre.
[15] Attached as Exhibits “A” and “B” to Mr. Oshita’s affidavit are two printouts dated July 24, 2014 and August 17, 2014 respectively of iTunes Canada sales pages, the latter of which is shown to be last updated on December 17, 2013, for games identified as “Pole Position: Remix Lite” and “Pole Position: Remix”, both by NAMCO BANDAI Games. The printouts include screenshots of the game as seen on mobile phones. Mr. Oshita states that the printouts are representative of the manner in which the Mark appears in association with the video games at the time of purchase by consumers during the relevant period.
[16] In its written representations, the Requesting Party submits that the evidence does not show use of the Mark, but rather of POLE POSITION: REMIX or POLE POSITION: REMIX LITE.
[17] I note that in each printout, the Mark appears prominently with a trade-mark symbol in the first screenshot of the game, followed by the term “REMIX” on a separate line, in a different size and font, as shown below.
[18] In the present case, I am satisfied that the Mark is being used in such a way that it has not lost its identity and remains recognizable in view of its positioning, font and size in the design used [Canada (Registrar of Trade-marks) v Compagnie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 (FCA); Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)]. Thus, I find that the use of the above design would likely be perceived by consumers as use of the Mark.
[19] The Requesting Party further states that the evidence shows use of a trade-mark with “games”, not with the registered goods “video games”. The Requesting Party did not elaborate on its concerns in this regard. In his affidavit, Mr. Oshita states that the POLE POSITION video game can be played on “arcade cabinets, gaming consoles, personal computers, handheld electronic devices, and mobile phones” and attaches in support, the printouts showing screenshots of the game in question, including screenshots of a graphic rendition of a car race, sold online for mobile phones as discussed above. When the evidence is viewed in its entirety, I am satisfied that Mr. Oshita has provided evidence of use of the Mark in association with “video games”.
[20] The Requesting Party submits that any use of the Mark shown is that of iTunes, not of Namco, and that the relationship between “Namco Bandai Games America Inc.”, who is identified as the seller of the game, and Namco is unclear. In his affidavit, Mr. Oshita states that the POLE POSITION video game was sold in Canada by Namco “through its North American trading arm Namco Bandai Games America Inc.” during the relevant period. This is consistent with what appears on the iTunes Canada sales pages attached as Exhibits “A” and “B” where “Namco Bandai Games America Inc.” is identified as the “seller”. But more importantly, the same printouts include screenshots of the game identifying “NAMCO BANDAI Games Inc.” in the copyright notice at the bottom of the screen, not iTunes or Namco Bandai Games America Inc. Thus, I am satisfied that the evidence shows use of the Mark by Namco.
[21] In terms of sales, Mr. Oshita states that the POLE POSITION video games were sold in Canada during the relevant period. In support, attached as Exhibit “C” is a printout showing the sales report for the POLE POSITION: REMIX game taken from the “appfigures” website. I note that the printout shows 1,139 downloads of POLE POSITION: REMIX between February 1, 2011 and February 28, 2014 in Canada, with a graph showing the amount of profits grouped in regular intervals throughout the relevant period.
[22] The Requesting Party submits that Namco cannot rely on this third party report of “downloads” and “updates” of the game as evidence of its sales of the video game in the normal course of trade in Canada.
[23] Once again, I disagree. It is trite law that the evidence as a whole must be considered and that focusing on individual pieces of evidence without context is not the correct approach [Kvas Miller Everitt v Compute (Bridgend) Limited (2005), 2005 CanLII 78281 (CA COMC), 47 CPR (4th) 209 (TMOB)]. While the report attached as Exhibit “C” might not be an invoice or a proper financial statement, Mr. Oshita clearly states in his affidavit that the third party report is used by Namco to track sales of its products across media platforms, which include the sale of its POLE POSITION video game for mobile phones and other handheld electronic devices. I am prepared to give weight to the report since it appears to have been provided to Namco in the normal course.
[24] In any case, I note that Mr. Oshita clearly states that “during the relevant period 1,139 copies of POLE POSITION [video games] were sold in Canada”, which is consistent with the number of “downloads” of the game shown in the printout, next to the sales figures described as “profits” in the report.
[25] When Mr. Oshita’s statements regarding the availability of the POLE POSITION video game across multiple media platforms is read in conjunction with evidence of continuous sales of the game as an app that has been purchased and downloaded by consumers in Canada during the entire stretch of the relevant period, I am satisfied that Namco has provided evidence of sales of the POLE POSITION video game in the normal course of trade in Canada.
[26] In view of the foregoing, I am satisfied that Namco has demonstrated use of the Mark in association with the registered goods “video games” in the normal course of trade in Canada during the relevant period within the meaning of sections 4 and 45 of the Act.
[27] Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be maintained in compliance with the provisions of section 45 of the Act.
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Pik-Ki Fung
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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HEARING DATE: April 5, 2016
APPEARANCES
Monique Couture For the Registered Owner
AGENTS OF RECORD
Robic For the Requesting Party
Gowling WLG (Canada) LLP For
the Registered Owner