LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 237
Date of Decision: 2011-11-23
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Aird & Berlis LLP against registration No. TMA563,276 for the trade-mark IDENTITY ONLINE in the name of Kent Allan Design Group Inc.
[1] At the request of Aird & Berlis LLP (the Requesting Party), the Registrar of Trade-marks issued a notice under s. 45 of the Trade-marks Act R.S.C. 1985, c. T-13 (the Act) on February 9, 2009 to Kent Allan Design Group Inc., the registered owner (the Registrant) in respect of registration No. TMA563,276 for the trade-mark IDENTITY ONLINE (the Mark).
[2] The Mark is registered for use in association with the following wares:
(1) Computer software for publishing information about standards and procedures relating to corporate graphics over computer networks; computer readable media containing information about standards and procedures relating to corporate graphics; templates for electronic documents; and, customized libraries of corporate graphics in computer readable form. (2) Publications, namely informational letters, sheets, documents and circulars on the subject of corporate graphics provided in printed form, provided by means of an online computer network, and/or provided on computer readable media (the Wares).
[3] The Mark is also registered for use in association with the following services:
(1) Consulting services in the field of the selection and use of uniform graphic standards for names, logos, letterhead, signage, typography and/or other corporate graphic imagery; developing and implementing standards for corporate graphics. (2) Educational services, namely, training others in the use and selection of corporate graphics and, training others in the use of computer software relating to corporate graphics (the Services).
[4] Section 45 of the Act requires the registered owner of the trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares and services 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 such use since that date. In this case, the relevant period for showing use is between February 9, 2006 and February 9, 2009 (the Relevant Period).
[5] The definition of “use” is set out in section 4 of the Trade-marks Act:
4. (1) A
trade-mark is deemed to be used in association with wares if, at the time of
the transfer of the property in or possession of the wares, in the normal
course of trade, it is marked on the wares themselves or on the packages in
which they are distributed or it is in any other manner so associated with the
wares that notice of the association is then given to the person to whom the
property or possession is transferred.
(2) A trade-mark is deemed to be used in association with services if it is
used or displayed in the performance or advertising of those services.
(3) A trade-mark that is marked in Canada on wares or on the packages in which
they are contained is, when the wares are exported from Canada, deemed to be
used in Canada in association with those wares.
[6] It is well established that the purpose and scope of s. 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. As stated by Mr. Justice Russell in Performance Apparel Corp. v. Uvex Toko Canada Ltd. (2004), 31 C.P.R. (4th) 270 (F.C.) at 282:
[…] We know that the purpose of s. 45 proceedings is to clean up the "dead wood" on the register. We know that the mere assertion by the owner that the trade mark is in use is not sufficient and that the owner must “show” how, when and where it is being used. We need sufficient evidence to be able to form an opinion under s. 45 and apply that provision. At the same time, we need to maintain a sense of proportion and avoid evidentiary overkill. We also know that the type of evidence required will vary somewhat from case to case, depending upon a range of factors such as the trade-mark owners’ business and merchandising practices.
[7] In response to the Registrar’s notice, the Registrant filed the affidavit of Myrna Cobb, Vice-President, Brand Identity Management of the Registrant (the Affiant), sworn on May 7, 2009. Neither party filed written arguments; an oral hearing was not requested.
[8] In her affidavit, the Affiant states the Registrant is a communications design firm based in western Canada, providing strategic corporate positioning and identity management systems for major corporations. The Registrant offers a comprehensive selection of services to address clients’ identity and branding requirements, including research and strategic planning, design, implementation and management. As part of its services, the Registrant offers web-based identity management systems of guidelines and templates to assist clients in maximizing the ongoing value of their brand identities.
[9] The Affiant states that the Registrant has continuously used the Mark in association with Wares (1) and Services (1) as registered since as early as May 1, 1998, and expanded to include Wares (2) and Services (2) between 1998 and 2002.
[10] In support of the Registrant’s assertion of use, attached as Exhibit A to the affidavit is a screen print of the main login page to the Registrant’s secure website, www.identityonline.ca; the Affiant attests that it is through this website that the Registrant’s clients can access their brand information and materials. I note that the Mark is prominently displayed in the centre of the page and in the top right hand corner of the page.
[11] The remaining evidence provided relates primarily to a representative client, Catalyst Paper. Attached as Exhibit B to the affidavit are screen prints of 47 pages from the section of the Registrant’s website dedicated to Catalyst Paper. I note that the Mark is displayed in the top right hand corner of each page. The Affiant states that while the substantive content of the information and materials provided therein has changed over the course of time, the Mark appeared continuously as shown throughout the Relevant Period.
[12] With respect to the Services offered during the Relevant Period, the Affiant states that employees of the Registrant provided consulting services to Catalyst Paper in the field of selection and use of uniform graphic standards for names, logos, letterhead, signage, typography and other corporate graphic imagery, as well as developing standards for corporate graphics. This involved going through the client’s section of the website (such as that shown in Exhibit B) during the consultation process, where the Mark was visible on every page of the website throughout the time services were being provided. Similarly, the Registrant provided workshops to authorized users of its client, training them in the use of the website. Training information and materials were displayed and shown on the website, with each page displaying the Mark as noted above.
[13] With respect to the Wares, the Affiant states that the Registrant developed computer software files, such as computer readable media containing information about standards and procedures relating to Catalyst Paper’s corporate graphics, templates for electronic documents, customized libraries of corporate graphics and publications on the subject of corporate graphics. The Registrant posted these files on the client’s section of the website for download and all downloadable pages displayed the Mark. I note that pages 23 to 46 of Exhibit B include links and information with respect to such downloadable files.
[14] As proof of sales, the Affiant attests that between February 9, 2006 and the end of 2008, the Registrant’s employees spent approximately 620 hours of service at an hourly rate and provided the related Wares to Catalyst Paper for a total remuneration of approximately $93,000, which the Affiant states is normal in the Registrant’s trade.
[15] Although the Registrant has not provided sales records for each of the Wares, I would observe that the case law is clear that the absence of invoices is not fatal in a section 45 proceeding [Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr (1988) 21 C.P.R. (3d) 483 (F.C.T.D.); Gowling Lafleur Henderson LLP v. Neutrogena Corp. (2009) 74 C.P.R. (4th) 153 (T.M.O.B.)]. In the present case, given the clear statements in the affidavit and the nature of the Wares, there is more than a mere bald assertion of use with respect to the Wares.
[16] Given all of the foregoing, I am satisfied that the Registrant has evidenced use of the Mark in association with all of the Wares and Services within the meaning of s. 45 and s. 4 of the Act during the Relevant Period.
[17] Accordingly, pursuant to the authority delegated to me under s. 63(3) of the Act, the registration will be maintained in compliance with the provisions of s. 45 of the Act.
______________________________
Andrew Bene
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office