SECTION 45 PROCEEDINGS
TRADE-MARK: STITCHING DESIGN
REGISTRATION NO.: 142,607
On January 22, 2003, at the request of Aird & Berlis LLP, the Registrar forwarded a Section 45 notice to Levi Strauss & Co., the registered owner of the above-referenced trade-mark registration.
The trade-mark is shown below and is registered for use in association with the following wares:
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“garments namely jeans”.
The trade-mark consists of the stitching creating a single loop design.
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 January 22, 2000 and January 22, 2003.
In response to the notice, the affidavit of Ellen Baker together with exhibits has been furnished. Each party filed a written argument and was represented at the oral hearing.
In her affidavit, Ms. Baker states that she is employed by Levi Strauss & Co. (Canada) Inc. (hereinafter “LSC”) which is a wholly owned subsidiary and a licensee of the registered owner. She states that she is employed as the Trade-mark Specialist of LSC and that in that position she is responsible for trade-mark matters of LSC including co-ordinating registration and enforcement of the trade-marks of LSC and LS & Co. in Canada. One of her responsibilities is to provide evidence relating to use of the trade-marks of LSC and LS & Co. in Canada when such evidence is required. She has access to corporate records kept in the normal and ordinary course of the business of LSC relating to such use. She adds that her evidence is based on personal knowledge, corporate records where necessary and corporate knowledge which she has gained through her employment with LSC.
She then states that during the period from the Spring of 1998 until the end of 2001, such garments were manufactured by Jack Spratt Inc. under license from LSC and that Jack Spratt Inc. used the STITCHING Design trade-mark on the garments it manufactured.
She specifies that since then, the garments have again been manufactured and sold by LSC under license by the registered owner and she specifies that under the license the registered owner has control over the character and quality of the wares manufactured by LSC. She then describes the manner the trade-mark is affixed to the jeans and she states that jeans sold by LSC during the relevant period bore the trade-mark style Nos. 10838, 10818 and 10828. She then provides invoices dated October 25, 2002 and November 8, 2002 showing sales by LSC of jeans bearing these style numbers.
Concerning the affiant Ellen Baker, taking into consideration her responsibilities and the fact that she has indicated that she has personal and corporate knowledge of the matters deposed to in her affidavit, I totally agree with the registrant that she is a proper affiant and that she is in a position to have knowledge of the use of the trade-mark by the registrant’s licensees.
Concerning the use shown by the evidence I am satisfied that the use by the licensee “LSC” is use that accrued to the registered owner.
As LSC is a “licensed user” of the trade-mark and as Ms. Baker has indicated that the registered owner has control over the character and quality of the wares manufactured by LSC, I conclude that for purposes of Section 45, that is all that is required to permit me to conclude that the use by LSC satisfies the requirements of Section 50(1) of the 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). Consequently, I conclude that the use by “LSC” is use that accrued to the registrant.
Concerning use of the trade-mark by LSC during the relevant period, from the evidence as a whole and the invoices furnished it can be concluded that sales of the wares having the trade-mark affixed to them were made to retailers in Canada. Further, I am satisfied that the sales were made in the normal course of trade.
Consequently, in view of the evidence furnished, I conclude that the trade-mark registration ought to be maintained.
Registration No. 142,607 will be maintained 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