SECTION 45 PROCEEDINGS
TRADE-MARK: TAB DESIGN
REGISTRATION NO.: 156,915
On November 27, 2002, at the request of Aird & Berlis, the Registrar forwarded a Section 45 notice to Levi Strauss & Co.(hereinafter LS & Co.), the registered owner of the above-referenced trade-mark registration.
The trade-mark WHITE TAB Design (shown below) is registered for use in association with the following wares:
“men’s, women’s and children’s clothing namely, overalls, trousers, shirts, jackets, all being with or without patch pockets”.
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Trade-mark description and colour claim:
“The trade mark comprises a small marker or tab of textile material or the like coloured white appearing on and affixed permanently to the exterior of the garment in a position that the white tab is visible while the garment is being worn, the trade mark being applied to the goods by stitching an end of the white marker or tab into one of the regular structural seams of a hip pocket of the garment so that the stitching of said seam secures one end of the marker or tab to the garment with a portion thereof extending visibly from the edge of the seam. The representation of the portion of a pair of trousers does not form part of the mark except insofar as it shows the relationship of the marker or tab to a seam of one of the pockets.”
Section 45 of the Trade-marks 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/or services listed on 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. The relevant period in this case is any time between November 27, 1999 and November 27, 2002.
In response to the notice, the affidavit of Ellen Baker together with exhibits has been furnished. Each party has filed a written argument and was represented at the oral hearing.
Concerning the evidence furnished the requesting party submits that it:
(a) does not show any use that accrues to the registrant.
(b) contains bald assertions.
(c) fails to show use of the trade-mark in the normal course of trade in association with each of the wares.
(d) demonstrate that there is a difference in the mark as registered and the mark as used.
(e) fails to show special circumstances excusing non-use.
I will address each of the above-mentioned issues.
(a) use does not accrue to the registrant.
The requesting party submits that the Baker affidavit is prepared on behalf of an employee of a company related to the registered owner and deposes that the registered owner has licensed the use of the trade-mark and controls the character and quality of the wares produced by the licensee. The requesting party argues that as Ms. Baker is an employee of Levi Strauss & Co. (Canada) Inc. and not of the registered owner the evidence fails to show use by the registrant or that accrues to the registrant. Further, concerning the use by licensee, it argues that there is insufficient evidence to satisfy the requirements set out in Section 50 of the Act. Consequently, it submits that the use by the licensee does not accrue to the registrant.
Concerning the affiant Ellen Baker, as she is responsible for the trade-mark matters of LSC including coordinating registration and enforcement of the trade-marks of LSC and of the registered owner in Canada which includes the responsibility to provide evidence relating to use of the trade-marks of her company and of the registered owner in Canada, and as she has sworn that her evidence is based on personal knowledge, corporate records where necessary and corporate knowledge which she has gained through her employment, I find it can be concluded that Ms. Baker is in a position to have knowledge of the use of the trade-mark by the registrant’s licensee.
Further, as she has sworn that the use of the trade-mark in association with the wares is under license by the registered owner and that the owner controls the character and quality of the wares manufactured by the licensee, I accept that for purposes of Section 45, this is sufficient to satisfy the requirements of Section 50(1) of the Trade-marks Act (see Fitzsimmons, MacFarlane v. Caitlin Financial Corp. N.V., 79 C.P.R. (3d) 154 at page 157 and Sim & McBurney v. Lesage Inc., 67 C.P.R. (3d) 571) with respect to license and control . Accordingly, I conclude that the use of the trade-mark by the licensee is use accruing to the registrant .
(b) Bald assertions in the affidavit furnished, (c) failure to show use of the trade-mark in the normal course of trade and in association with each of the wares and (d) difference in the mark as registered and the trade-mark as used (e) failure to
show special circumstances excusing non-use
Having considered the Baker affidavit, I conclude that it contains more than bald assertions, it contains assertions of facts showing use in association with the wares “men’s, women’s and children’s clothing namely overalls, trousers, shirts all being with or without patch pockets” (Mantha & Associates v. Central Transport Inc., 64 C.P.R. (3d) 354).
Ms. Baker has clearly described the normal course of trade for these wares that is the wares are manufactured by the licensee and are sold in Canada by the licensee to retailers in Canada. Ms. Baker has explained the manner the trade-mark is affixed to the wares at the time of sale, she has provided examples of the manner the trade-mark is affixed to these wares and she has provided representative invoices showing sales of these wares to retailers in Canada during the relevant period. Consequently from the above it can be concluded that the licensee manufactures the wares, affixes the trade-mark to them and sells them to retailers in Canada for resale to the public.
Concerning “overalls”, Ms. Baker has clearly described in paragraph 8 of her affidavit the manner the trade-mark is affixed to such wares and has indicated that men’s overall are sold under, inter alia, style No. 56462 and boys’ overalls under style No. 52442. Further, she has clearly indicated that such garments were sold during the relevant period. In fact, invoice No. 467193 shows sales of overalls bearing style No. 52442 which I accept is a reference to boys’ overall bearing the WHITE TAB trade-mark and invoice No. 775689 shows a sale of a pair of “overalls” style No. 56462 which I accept is a reference to men’s overalls bearing the WHITE TAB Design in the manner described in the affidavit.
Concerning “trousers”, Ms. Baker indicates in paragraph 8 of her affidavit that men’s jeans bearing the trade-mark are sold under style No. 57401; women’s jeans bearing the trade-mark under style No. 57304 and women’s capri pants bearing the trade-mark are sold under style No. 57301.
Concerning the wares “shirts”, Ms. Baker in paragraph 8 refers to men’s shirts having been sold during the relevant period under style No. 60479. The requesting party has argued that the trade-mark used in association with “men’s shirts” is not the trade-mark as registered. It submits that the description of the trade-mark states that the tab of textile material is “applied to the goods by stitching an end of the white marker or tab into one of the regular structural seams of a hip pocket of the garment ...” while the evidence shows the trade-mark is stitched into the seam of the breast pockets of the shirts. The requesting party argues that since the description of the trade-mark specifically states “hip pockets”, use of the trade-mark of the breast pockets of shirts is not use of the registered trade-mark.
The registrant, on the other hand, has argued that as “shirts” do not have “hip pockets” the description of the trade-mark must be read taking that into consideration and it submitted that as long as one end of the WHITE TAB Design is affixed to one of the regular structural seams of a pocket, the use shown is use of the trade-mark. I agree. However, even if it is considered that the trade-mark as used is different from the registered trade-mark, I consider the change to be a minor one. Consequently, I consider the use shown to constitute use of the registered trade-mark.
As I am satisfied that the use of the trade-mark in association with “overalls, trousers and shirts” constitutes use in association with men’s, women’s and children’s clothing I conclude that the wares “men’s, women’s and children’s overalls, trousers and shirts all being with or without patch pockets” ought to be maintained on the trade-mark registration.
Concerning the remaining wares “jackets”, Ms. Baker has admitted in paragraph 10 of her affidavit that there has been no use of the trade-mark in association with jackets during the relevant period, the most recent sale having occurred in late 1997. Ms. Baker has stated that style trends and designers influence apparel companies to modify product lines and she submitted that therefore it is not unusual for an apparel manufacturer to intermittently use a particular design trade-mark on a particular type of garment. In my view, the reason provided for the absence of use amounts to a voluntary decision of the owner/licensee and is insufficient to excuse the absence of use for a period of almost five(5) years. Consequently, I conclude that the wares “jackets” ought to be deleted from the trade-mark registration.
In view of the above Registration No. 156,915 will be amended to delete the wares “jackets” from the statement of wares in compliance with the provisions of Section 45(5) of the Act.
DATED AT GATINEAU, QUEBEC, THIS 30TH DAY OF JUNE 2005.
D. Savard
Senior Hearing Officer
Section 45 Division