LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 183
Date of Decision: 2010-11-02
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Smart & Biggar against registration No. TMA610,758 for the trade-mark INDEX in the name of Town Shoes Limited
[1] At the request of Smart & Biggar (the “requesting party”), the Registrar forwarded a notice under section 45 of the Trade-marks Act R.S.C. 1985, c. T-13 (the Act). On December 19, 2008, to Town Shoes Limited (the Registrant), the registered owner of registration No. TMA610,758 for the trade-mark INDEX (the Mark) registered for use in association with “Footwear namely men’s, women’s and children’s shoes, boots and slippers” (the Wares).
[2] 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 specified in the registration at any time during the three-year period immediately preceding the date of the notice and, if not, the date on which it was last used and the reason for the absence of use since that date. In this case, the relevant period for showing use is any time between December 19, 2005 and December 19, 2008 (the Relevant Period).
[3] “Use” in association with wares is set out in subsections 4(1) and 4(3) 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.
[…]
(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.
In this case, ss. 4(1) applies.
[4] In response to the Registrar’s notice, the Registrant furnished the affidavit of Mr. Martin Seaton, Vice-President Finance and Administration of Town Shoes Limited, sworn on March 18, 2009. Attached to the affidavit are Exhibits “A” through “E”. Only the Registrant filed written submissions; an oral hearing was not requested.
[5] It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 (F.C.A.)]. Although the threshold for establishing use in these proceedings is quite low [Woods Canada Ltd. v. Lang Michener (1996), 71 C.P.R. (3d) 477 (F.C.T.D.) at 480], and evidentiary overkill is not required, sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with the wares or services specified in the registration during the relevant period.
[6] Mr. Seaton states that during the past three years, Town Shoes Limited has operated a division called “The Shoe Company”, a chain of retail stores operating in several of the provinces of Canada. Mr. Seaton attests that the Registrant has continuously sold in Canada a line of footwear in association with the trade-mark INDEX both through its retail stores, The Shoe Company, and online through The Shoe Company’s web site. Mr. Seaton attests that the INDEX line of footwear includes men’s dress and casual shoes, sandals, and slippers, and children’s dress and casual shoes, sandals and slippers.
[7] Mr. Seaton states that the Registrant sold over 18,000 pairs of INDEX footwear, namely men’s dress and casual shoes, sandals, and slippers, and children’s dress and casual shoes, sandals, and slippers in Canada in 2006 and 2007. In support of the evidence of sales of Canada, the affiant provides a statement of revenues and sales sheets demonstrating sales of INDEX men’s dress shoes, men’s casual/semi-dress shoes, men’s sandals, toddler shoes, and children’s sandals and slippers for the years 2006 and 2007.
[8] As for the manner in which the Mark was associated with the Wares at the time of transfer, Mr. Seaton states that the Mark appears on the shoe boxes and labels affixed directly on the inside of the sole of each of the Wares. Attached as exhibits is a photograph of a shoebox marked with the Mark, as well as a photograph of the inside of a children’s shoe marked with the Mark. I am satisfied that the Mark is clearly visible on the packaging of the Wares and on the Wares such that the requisite notice of association would have been provided to the transferee of the Wares.
[9] In view of all of the foregoing, I am satisfied that the Registrant has evidenced use of the Mark in Canada within the meaning of s.4(1) of the Act in association with “Footwear, namely men’s and children’s shoes, boots and slippers” during the relevant period. However, I find that there is no evidence of use of the Mark in association with “Footwear, namely women’s shoes, boots and slippers” during the relevant period nor any evidence with respect to the date the Mark was last in use in association with these wares and the reasons of the absence of use.
[10] Accordingly, and pursuant to the authority delegated to me under s.63(3) of the Act, Registration TMA610,758 for the trade mark INDEX will be amended by deleting “….women’s shoes, boots and slippers” from the Wares.
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Darlene H. Carreau
Chairperson
Trade-marks Opposition Board
Canadian Intellectual Property Office