Citation: 2010 TMOB 25
SECTION 45 PROCEEDINGS
TRADE-MARK: TORRE & TAGUS DESIGN
REGISTRATION NO: TMA 628,242
[1] At the request of Ann Carlsen & Company (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 January 9, 2008 to Torre & Tagus Designs Ltd. (the “registrant”), the registered owner of the referenced trade-mark (the “Mark”).
[2] The Mark is registered in association with the following wares:
Vases; bowls; plates; platters; candle holders; picture frames; home storage boxes; home decorative items (statues, object d'arte [sic]); incense holders; candles; lanterns; drinking glasses; serving pitchers; wine glasses; cordial glasses; napkin rings; oil burners; jewelry boxes [sic]; Christmas ornaments; wine buckets; ice buckets; tabletop place holders; cushions; blankets; throws; pillows; wine bottle gift bags; placemats; napkins; coasters; champagne buckets; salt & pepper shakers; tea pots; coffee pots; serving trays; wine racks; salad bowls; salad servers; serving trays; serving plates; fondue pots; serving bowls; storage canisters; cutlery; serving utensils; mugs; baskets; cocktail stir sticks; cocktail forks; wine glass charms; martini shakers; wine chillers; ice crushers; serving trays; bar cart; wine bottle toppers; liquor flasks; ashtray; CD storage boxes; clocks; money clips; key chains; executive game sets; desk calculator; desk clocks; card holders; stationary sets [sic]; clock radios; travel radios; manicure sets; grooming sets; magnets; aromatherapy products, namely: candles, bath salts, incense, hand soap, bath soap, lotions, room fragrance spray, room scent diffuser oils, potpourri, pouches, sachets, pillows, creams; bathroom soap dishes & pumps; glass flasks; waste bins; mirrors; bathtub accessories, namely: bathtub drain plugs, sink drain plugs, soap holders, floating soap dishes, bath mats, towel racks, towel holders; laundry bins; rugs; shelves; lamps; chairs; tables; stools; magazine racks; CD racks; umbrella rack; coat rack; floor mirrors; occasional tables; log baskets; fireplace tools; gardening tools; gardening accessories, namely: flower pots, watering cans, window flower boxes, cachepot, gardening shovel, gardening rake, name marking sticks; pet accessories, namely: food dishes, water bowls, food storage containers, hair brushes, pet beds, pet blankets, pet sweaters, pet food placemats, dog house, cat house, cat scratching trees; shopping bags; desk stationary books & paper [sic].
[3] 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 within the three year period immediately preceding the notice date and, if not, to provide the date when it was last in use and the reason for the absence of use since that date. Here, the relevant period for showing use is any time between January 9, 2005 and January 9, 2008.
[4] Use in association with wares is set out in subsection 4(1) of the Act as follows:
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.
Subsections 4(2) and 4(3) of the Act refer to use in association with services and the export of wares, respectively, and do not apply in the present proceedings.
[5] In response to the Registrar’s notice, the registrant submitted the affidavit of Tim Kroetsch, sworn on June 9, 2008, together with Exhibits A through D. Both parties filed written submissions; an oral hearing was not requested.
[6] With respect to the manner in which the Mark was associated with the wares at the time of sale during the relevant period, Mr. Kroetsch has attached a copy of the sticker applied to all wares sold by the registrant as Exhibit D. He further attests at paragraph 8 of his affidavit that this sticker is affixed to the bottom of all wares sold by the registrant in Canada. I note that the copy of the sticker attached as Exhibit D clearly displays the Mark in question. The words “Made in China” that encircle the Mark do not affect its recognisability since clearly these words have a descriptive function.
[7] I am therefore prepared on a fair reading of the affidavit as a whole, to conclude that the all of the wares that have been demonstrated to have been sold in Canada through the relevant period, were marked as described with the Mark.
[8] In support of use in the normal course of trade during the relevant period, Mr. Kroetsch provides a large volume of sale invoices to Canadian retailers for the years 2005, 2006, and 2007, attached as Exhibits A, B, and C, respectively. Mr. Kroetsch provides a detailed chart of wares and corresponding invoice numbers; in many instances multiple invoices for each ware were provided. I note, however, that some of the referenced invoices were missing from the exhibits as filed with the registrar. However, since evidence of a single sale suffices for wares (Gowling Lafleur Henderson v. Supertex Industrial (2002), 26 C.P.R. (4th) 251 (T.M.H.O.)), and since, (with one exception – discussed below), there is at least one invoice for each ware, the absence of some of the referenced invoices is not determinative.
[9] I note that some of the wares listed in the invoices are described differently than in the subject registration. However, after a detailed review of the invoices, I am satisfied that any differences in description (with respect to the following wares) are minor, and that use in the normal course of trade during the relevant period is clearly demonstrated for the following:
Vases; bowls; plates; platters; picture frames; home storage boxes; incense holders; candles; lanterns; drinking glasses; wine glasses; cordial glasses; napkin rings; oil burners; jewelry boxes [sic]; wine buckets; ice buckets; cushions; throws; pillows; placemats; coasters; champagne buckets; salt & pepper shakers; tea pots; wine racks; salad bowls; salad servers; fondue pots; serving bowls; mugs; baskets; cocktail forks; martini shakers; wine chillers; bar cart; wine bottle toppers; CD storage boxes; clocks; money clips; key chains; desk clocks; card holders; stationary sets [sic]; manicure sets; magnets; bathroom soap dishes & pumps; waste bins; mirrors; laundry bins; shelves; lamps; chairs; tables; stools; magazine racks; CD racks; umbrella rack; coat rack; floor mirrors; log baskets; fireplace tools; gardening tools; candle holders; home decorative items (statues, object d’arte [sic]); serving pitchers; Christmas ornaments; tabletop place holders; blankets; wine bottle gift bags; serving trays; serving plates; storage canisters; liquor flasks; cutlery; desk calculator; clock radios; travel radios; glass flasks; laundry bins; occasional tables; desk stationary books & paper.
The registration will be maintained for these wares.
[10] The chart in the affidavit references only one invoice for the ware “wine glass charms”, and this invoice was not included in the exhibits attached to the affidavit; however, in considering the evidence as a whole including the affiant’s statement of the sale and reference to a specific invoice number, and the intent and purpose of section 45 of the Act, I am prepared to accept sales of “wine glass charms”. Accordingly, the registration will also be maintained for “wine glass charms”.
[11] The registered statement of wares includes several general categories of wares followed by a list of specific wares in the categories. The categories are: “aromatherapy products”, “bathtub accessories”, “gardening accessories”, and “pet accessories”. Mr. Kroetsch directs us to invoices that support the sale of some of the wares in those categories. Again, while the wares as they are referenced in the invoices are not all in the exact terms of the registration, I am nonetheless prepared, on a reasonable reading of the invoices, since the differences are minor, to accept that the following wares were sold by the registrant during the relevant period:
• Aromatherapy products, namely: candles,…incense, hand soap, bath soap, lotions, room fragrance spray, room scent diffuser oils, potpourri, pouches, pillows, creams;
• Bathtub accessories, namely:...towel racks, towel holders, bathtub drain plugs ( rubber duck with stopper), sink drain plugs (robber duck with stopper), soap holders (soap dish);
• Gardening accessories, namely: flower pots, watering cans, window flower box (window vase), cachepot (flowerpot);
• Pet accessories, namely: food dishes, water bowls, food storage containers, pet beds, dog house.
[12] With respect to the remaining items in these categories for which no invoices were listed, the registrant submitted that as per Saks & Co. v. Canada (Registrar of Trademarks) (1989), 24 C.P.R. (3d) 49 (F.C.T.D.), direct proof demonstrating use is not required for each ware in a category, when the registration contains several categories of wares that are “logically and properly categorized”. I note that in the Saks case, although use for wares in categories was found without supporting documentation for each ware, the affiant had provided a statement of use with respect to all of the wares in each category. This is not the case in the present circumstances.
[13] In fact, I find the affiant’s statement (in paragraph 6 of his affidavit), with respect to these particular wares somewhat puzzling and ambiguous. Mr. Kroetsch states with respect to the wares for which no invoices were listed in the affidavit “either I was not able to find an invoice evidencing the sale of such wares in Canada during the period January 9, 2005 to January 9, 2008 or such wares were not ordered by the customers of Torre & Tagus” (emphasis mine). In view of this admission that some of these wares might not have been sold, and in the absence of explanation as to why not, I am unable to apply the principle of the Saks decision to the facts in this case. This statement (in paragraph 6) also refers to some wares (for which no invoices were provided) that are not in larger categories (napkins; ice crushers; ashtray; executive game sets; grooming sets; rugs; shopping bags).
[14] Accordingly, the following wares will be deleted from the registration:
• Aromatherapy products, namely: bath salts, sachets;
• Bathtub accessories, namely: floating soap dishes, bath mats;
• Gardening accessories, namely: gardening shovel, gardening rake, name marking sticks;
• Pet accessories, namely: hair brushes, pet blankets, pet sweaters, pet food placemats, cat house, cat scratching trees;
• Napkins; ice crushers; ashtray; executive game sets; grooming sets; rugs; shopping bags;
[15] I note that the invoice provided for “Key Chain Velvet Pouch” as evidence of an “aromatherapy product - pouches” is not a sale per se, but a replacement, for no charge. The date of actual sale to the retailer by the registrant is not provided; however, the invoice states the conditions for which claims and returns must be made, including that arrangements for a replacement must be made within seven days of receiving merchandise. I am therefore prepared to infer that the sale of this item was within the relevant period.
[16] While one invoice was referred to as evidence of sale for the ware “coffee pots”, it does not clearly indicate such a ware and the closest item listed is a “coffee cup”. In the absence of additional explanation or evidence, I am not prepared to infer that a “coffee cup” is an ‘coffee pot”.
[17] The ware “serving utensils” is listed in each of the referenced invoices as “salad servers”. However, “salad servers” is listed independently of “serving utensils” in the registration and accordingly, these wares must be considered different from each other (John Labatt Ltd. v. Rainer Brewing Co. (1984), 80 C.P.R. (2d) 228 (F.C.A.)). Thus, evidence of sale of “salad servers” is only evidence of use of the ware “salad servers”, not “serving utensils”.
[18] The ware “cocktail stir sticks” was not explicitly listed in some of the referenced invoices, but is referred to in one simply as “stir sticks” - a more general term that could include other types of stir sticks, such as stir sticks used to stir coffee or tea. As the registration refers specifically to “cocktail stir sticks”, a determination of use of the subject trade-mark on “cocktail stir sticks” cannot be made.
[19] In view of the foregoing, I am satisfied that there was use of the Mark within the meaning of section 45 and subsection 4(1) of the Act in association with:
Vases; bowls; plates; platters; candle holders; picture frames; home storage boxes; home decorative items (statues, object d'arte [sic]); incense holders; candles; lanterns; drinking glasses; serving pitchers; wine glasses; cordial glasses; napkin rings; oil burners; jewelry boxes [sic]; Christmas ornaments; wine buckets; ice buckets; tabletop place holders; cushions; blankets; throws; pillows; wine bottle gift bags; placemats; coasters; champagne buckets; salt & pepper shakers; tea pots; serving trays; wine racks; salad bowls; salad servers; serving trays; serving plates; fondue pots; serving bowls; storage canisters; cutlery; … mugs; baskets; cocktail forks; wine glass charms; martini shakers; wine chillers; serving trays; bar cart; wine bottle toppers; liquor flasks; CD storage boxes; clocks; money clips; key chains; desk calculator; desk clocks; card holders; stationary sets [sic]; clock radios; travel radios; manicure sets; magnets; aromatherapy products, namely: candles, …incense, hand soap, bath soap, lotions, room fragrance spray, room scent diffuser oils, potpourri, pouches, … pillows, creams; bathroom soap dishes & pumps; glass flasks; waste bins; mirrors; bathtub accessories, namely: bathtub drain plugs, sink drain plugs, soap holders, … towel racks, towel holders; laundry bins; shelves; lamps; chairs; tables; stools; magazine racks; CD racks; umbrella rack; coat rack; floor mirrors; occasional tables; log baskets; fireplace tools; gardening tools; gardening accessories, namely: flower pots, watering cans, window flower boxes, cachepot, …; pet accessories, namely: food dishes, water bowls, food storage containers, … pet beds, … dog house, …; desk stationary books & paper [sic].
Accordingly, and pursuant to the authority delegated to me under subsection 63(3) of the Act, registration for the trade-mark TORRES & TAGUS DESIGN TMA 628,242 will be amended to delete:
• Aromatherapy products, namely: bath salts, sachets;
• Bathtub accessories, namely: floating soap dishes, bath mats;
• Gardening accessories, namely: gardening shovel, gardening rake, name marking sticks;
• Pet accessories, namely: hair brushes, pet blankets, pet sweaters, pet food placemats, cat house, cat scratching trees;
• Napkins; ice crushers; ashtray; executive game sets; grooming sets; rugs; shopping bags;
• Serving utensils, cocktail stir sticks, coffee pots.
in compliance with the provisions of subsection 45(5) of Trade-marks Act, R.S.C. 1985, c. T-13.
DATED AT GATINEAU, QUEBEC, THIS 26TH DAY OF FEBRUARY 2010.
P. Heidi Sprung
Member, Trade-marks Opposition Board