Trademark Opposition Board Decisions

SECTION 45 PROCEEDINGS

TRADE-MARK: INTERNATIONAL-LAMONT

REGISTRATION NO: TMA610,931

[1]                           On July 6, 2007, at the request of De Grandpré Chait LLP (the “Requesting Party”), the Registrar forwarded a notice under s. 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”) to Indeck Boiler Corporation (the “Registrant”), the registered owner of the above-referenced trade-mark (the “Mark”). The Mark is registered for use in association with “hot water boilers, steam boilers and thermal oil heaters” (the “Wares”).

[2]                           Section 45 of the Act requires the registered owner to show whether the trade-mark has been used in Canada in association with each of the wares and/or 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 use since that date. In this case, the relevant period for showing use is any time between July 6, 2007 and July 6, 2004 (the “Relevant Period”).

[3]                           “Use” in association with wares is set out in subsections 4(1) and 4(3) of the Act:

In this case, ss. 4(1) applies.

[4]                           In response to the Registrar’s notice, the Registrant furnished the affidavit of Mr. André Granger, General Manager – Canadian Operations of the Registrant, together with Exhibits P-1 to P-5. Both parties filed written submissions and were represented at an oral hearing.

[5]                           In his affidavit, Mr. Granger states that the Registrant is a Nova Scotia corporation having as its main business activity the manufacturing and distribution of boilers and fluid heating devices in Canada. The Registrant is a wholly-owned subsidiary of Indeck Power Manufacturing Inc. (“Indeck USA”), a United States corporation, which Mr. Granger states is amongst the world’s largest steam generation systems manufacturers and distributors.

[6]                           Mr. Granger states that the Registrant and its predecessors in title, Volcano and IBW, have continuously used the Mark during the Relevant Period throughout Canada, and also since at least as early as the date claimed in the subject registration, namely December 1989.

[7]                           In support of his statements of use of the Mark, Mr. Granger attaches the following exhibits:

•        Exhibit P-2, which consists of an undated specimen of letterhead that shows at the bottom of the page, various trade-marks, including the Mark. While Mr. Granger states that the letterhead has been used by the Registrant at all times during the Relevant Period, and was used for all correspondence with the Registrant’s Canadian customers, I note that it refers to “Indeck – Power Equipment Company” corporate office’s address in Illinois, USA. It also bears the address of a “plant” in St-Hyacinthe, Québec;

•        Exhibit P-3, which consists of an undated “marketing piece” that shows on the front, various trade-marks, including the Mark. While Mr. Granger states that this marketing piece was distributed during the Relevant Period to the Registrant’s Canadian customers, I note that it refers to “Indeck” corporate office’s address in Illinois, USA. As for the specimen of letterhead, this marketing piece originates from Indeck Power Equipment Company, a United States corporation. At the bottom of the brochure, reference is made to Indeck Keystone Energy, LLC, a United States corporation described as “Engineering Offices” in Erie, Pennsylvania, and to the Registrant as “Manufacturing Facility” in St-Hyacinthe, Québec;

•        Exhibit P-4, which consists of an undated catalogue that gives a description of the INTERNATIONAL-LAMONT boilers and heaters. While Mr. Granger states that this catalogue was distributed during the Relevant Period to the Registrant’s Canadian customers, I note that it originates from its predecessor in title IBW, a United States corporation located in Pennsylvania. I have no indication as to when IBW became or merged with the Registrant. The catalogue seems somewhat outdated. The mention “Bulletin 3400B. IM-8-90” appearing at the bottom right corner of the front page of the catalogue may indicate that it was conceived in August 1990, although this may not be the case and does not, in any event, necessarily lead to the conclusion that the catalogue was not in use during the Relevant Period. The front cover of the catalogue shows photographs of five campus central plant installations, including one for St-Clair Community College, in Windsor, Ontario. The date of the installation is not provided though; and

•        Exhibit P-5, which consists of a picture of a plate that is placed on the Registrant’s products. Mr. Granger states that this exhibit “clearly shows the [Mark] on the plate, as well as the information that the boiler unit was built in 2005, i.e. during the [R]elevant [P]eriod, and sold shortly thereafter.”

[8]                           Mr. Granger states in paragraph 15 that “[i]n the boiler industry, and especially in the market segment occupied by the INTERNATIONAL-LAMONT boilers, products are sold for tens and even hundreds of dollars each, and as such, it is inevitable that, in a marketplace like Canada, very few units are sold”.

[9]                           Mr. Granger further states in paragraph 17 that “[g]iven the nature of the [W]ares – the size, the  price, the fact that there are only a few boilers sold every year – there are no stickers, labels or any logos affixed to the boilers, except for the plates”.

[10]                       Mr. Granger concludes his affidavit by stating that the Registrant “has sold during the [R]elevant [P]eriod, and continues to sell, hot water boilers, steam boilers and thermal boilers, in association with the [Mark]”.

[11]                       The Requesting Party submits that Mr. Granger’s affidavit does not show use of the Mark during the Relevant Period, nor does it evidence any special circumstance excusing the absence of use. I agree.

[12]                       The Registrant’s normal course of trade in Canada is unclear. While Mr. Granger states that the Registrant is a wholly-owned subsidiary of Indeck USA as well as a successor in title of IBW, the fact remains that he does not explain which entity does what, and when, nor does he refer to any oral or written licence agreement between the Registrant and Indeck USA with respect to use of the Mark. It is well established that corporate structure alone is insufficient to establish use of the Mark under proper licence and control of the Registrant in Canada [see MCI Communications Corp. v. MCI Multinet Communications Inc. (1995), 61 C.P.R. (3d) 245 and Dynatech Automation Systems Inc. v. Dynatech Corp. (1995), 64 C.P.R. (3d) 101].

[13]                       Exhibits P-2 to P-4 do not provide any assistance in clarifying the Registrant’s normal course of trade nor as to which entity(ies) is(are) using the Mark. Furthermore, letterhead and marketing brochures such as the ones referred to in these exhibits do not qualify as use in association with wares [see Burroughs Wellcom Inc. v. Kirby, Shapiro, Eades & Cohen, (1983) 73 C.P.R. (2d) 13]. These materials do not show how the Mark is affixed on the Wares themselves or on their packages or is in any other manner so associated with the Wares. There is also no evidence that Exhibits P-2 to P-4 accompany the Wares at the time of the transfer of the property of the Wares.

[14]                       Exhibit P-5 does not assist further the Registrant as it establishes no more than that a boiler was built in 2005. No information such as the identity of the customer or the date of the sale has been provided by Mr. Granger. It is noteworthy that Mr. Granger does not provide any information whatsoever as to the Registrant’s sales figures, nor does he provide any sample invoices evidencing Canadian sales of the Wares.

[15]                       Furthermore, while there is no minimum amount of commercial activity required in order to maintain a registration [see Vogue Brassiere Inc. V. Sim & McBurney (2000), 5 C.P.R. (4^th) 537 at 549 (F.C.T.D.)], I find that Mr. Granger statements in paragraphs 15 and 17 of his affidavit reproduced above, are somewhat ambiguous. On one hand, Mr. Granger states that in the market segment occupied by the INTERNATIONAL-LAMONT boilers, very few units are sold. On the other hand, he states that given the nature of the Wares, there are only a few items sold “every year”. It is unclear whether Mr. Granger is attempting to rely on the expensive and sophisticated nature of the Wares sold by the Registrant as an exceptional circumstance excusing the absence of use of the Mark during the Relevant Period.

[16]                       While I have no difficulty understanding that highly expensive and sophisticated wares such as the Registrant’s Wares may not be sold every day and indeed, may not be sold for a lengthy period of time [see Country-Wide Automotive Ltd. v. CWA Constructions S.A., (1994) 57 C.P.R. (3d) 435 (T.M.O.B.)], the evidence as a whole does not enable me to make the necessary inferences to conclude that there has been use of the Mark within the meaning of ss. 4(1) of the Act in association with the Wares during the Relevant Period nor that there has been exceptional circumstances excusing the absence of use.

[17]                       While it is true that evidentiary overkill is not required in s. 45 proceedings, there must be sufficient facts from which a conclusion of use can be made. An affidavit must also be considered from the point of view of what it does no say. As stated in Aerosol Fillers Inc. v. Plough (Canada) Ltd. (1980), 45 C.P.R. (2d) 194 at 198:

“The allegations in an affidavit should be precise and more particularly so with respect to an affidavit under s. 44(2) [now 45(2)] because that is the only affidavit to be received. It should not be susceptible to more than one interpretation and if it is then the interpretation adverse to the interest of the party in whose favour the document was made should be adopted.”

[18]                       Mr. Granger’s statements constitute bald assertions of use as opposed to assertions of facts showing use.

[19]                       Pursuant to the authority delegated to me under s. 63(3) of the Act, the registration will be expunged in compliance with the provisions of s. 45 of the Act.

DATED AT Montréal, Québec, THIS 9^TH DAY OF November 2009.

Annie Robitaille

Member

Trade-marks Opposition Board