LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 215
Date of Decision: 2014-10-06
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Soda & Tonic Inc. against registration No. TMA699,568 for the trade-mark TONIC in the name of Côté Tonic Inc.
[1] At the request of Soda & Tonic 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 September 26, 2012 to Côté Tonic Inc. (the Registrant), the registered owner of registration No. TMA699,568 for the trade-mark TONIC.
[2] The Mark is registered for use in association with the following services:
Services de communication-marketing nommément des services de planification et d'achats de placement média, production de pièces publicitaires imprimées, des services promotionnels de vente et marketing et marketing direct, nommément élaboration et gestion de campagnes publicitaires pour les tiers, promotion de marchandises et de services pour des tiers, services de design graphique et de création reliés aux promotions, aux publicités dans les journaux, électroniques, radiophoniques ou télévisuelles, services techniques, de consultation et d'aviseurs en relations avec le marketing et les communications; services de cueillette d'information de marchés et de leur conservation dans des banques de données.
[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 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 September 26, 2009 and September 26, 2012.
[4] For the purposes of this decision, the relevant definition of use is set out in section 4(2) of the Act:
4. (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.
[5] It is well established that mere assertions of use are not sufficient to demonstrate use in the context of a section 45 proceeding [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is quite low [Woods Canada Ltd v Lang Michener et al (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the wares or services specified in the registration during the relevant period.
[6] In response to the Registrar’s notice, the Registrant filed affidavits of Anita Dong, the CEO of We Are Tonic Inc., the Registrant’s licensee and Jean Côté, the founder, president and sole shareholder of the Registrant.
[7] Only the Registrant filed written representations.
Was the Mark used during the relevant period?
[8] In his affidavit, Mr. Côté makes the sworn statement that the Registrant has used the Mark continuously in the normal course of trade in Canada in association with the registered services since at least as early as June 17, 2005, thus encompassing the relevant period.
[9] Mr. Côté states that the Registrant advertises its marketing services both on its website and through personalized presentations which it gives to current and prospective customers which are accompanied by promotional materials displaying the Mark. In support of this statement, Mr. Côté attaches a sample presentation entitled “Bonne pratiques d’innovation TONIC” which he states is representative of the manner in which the Mark has been displayed in association with these promotional presentations (Exhibit JC-1). I note that Mr. Côté does not clearly state that this undated document is representative of those used in the relevant period.
[10] Mr. Côté provides two documents which he states were used during the relevant period to advertise the Registrant’s marketing services to customers in the “Agri-Food, Health and Nutrition” industry. He provides both an English language version which he states was targeted to the Anglophone segment of this industry (Exhibit JC-2) and a French language version used to target the Francophone segment (Exhibit JC-3). I note that both of these documents display the Mark, and were used during the relevant period.
[11] Mr. Côté also attaches to his affidavit a document which he states was prepared during the relevant period with the “Conseil de la transformation alimentaire et des produits de consommation (CATC)” to describe in detail the services and expertise offered by the Registrant under the Mark in Canada (Exhibit JC-4). While this document displays the Mark and provides details as to the nature of the Registrant’s services, it is not clear that this is an external facing document that was used in association with the provision or promotion of the registered services.
[12] Mr. Côté also attaches to his document two sample cover pages which he states accompany print and electronic documents used by the Registrant in the provision of its marketing services in Canada (Exhibit JC-5). I note that Mr. Côté does not clearly state that this undated document is representative of those used in the relevant period.
[13] The Registrant also provides evidence of use of the Mark by a licensee. Specifically, in her affidavit, Ms. Dong provides evidence supporting a finding that use of the Mark by her company, We Are Tonic Inc., accrues to the Registrant in accordance with section 50(1) of the Act. To this end, Ms. Dong provides a copy of the license agreement which provides clear information regarding the direct control exercised by the Registrant over the character and quality of the services provided by We Are Tonic Inc. (Exhibit A).
[14] Ms. Dong attaches printouts from We Are Tonic Inc.’s website displaying the Mark in association with promotion of the marketing services as offered by the Registrant’s licensee (Exhibits B and C). Ms. Dong states that the version of the website attached to her affidavit as Exhibit B has been accessible to the public since September 24, 2012 and Exhibit C since June 11, 2012. Thus all of the materials attached to Ms. Dong’s affidavit emanate from within the relevant period.
[15] I am satisfied that the services advertised correspond to the services as registered.
[16] When the evidence is reviewed as a whole I am satisfied that the services advertised by the Registrant and its licensee correspond to the services as registered. Furthermore, I am satisfied that the Registrant has established that the registered services were available to be performed in Canada and that the Mark was displayed in the advertisement thereof.
[17] Based on the foregoing, I am satisfied that the Registrant has demonstrated use of the Mark in association with the registered services within the meaning of sections 4 and 45 of the Act.
Disposition
[18] In view of the foregoing, 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.
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office