TRADUCTION/TRANSLATION SECTION 45 PROCEEDINGS TRADE-MARK: SYSTÈME PAVEMAX REGISTRATION NO: TMA388,434 On June 9, 2005, at the request of Smart & Biggar (the "Applicant"), the Registrar issued the notice prescribed by section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the "Act") to Groupe Solmax Inc., the registered owner of registration No. TMA388,434 for the trade-mark SYSTÈME PAVEMAX (the “Mark”) registered for use in association with “Non-woven geotextile material needled and calendered on one side and emulsion comprised of thermoplastic polymeric bitumen used to slow down the cracking process in pavement resurfacing” (hereafter referred to in the same manner as it is referred to by the registered owner’s affiant, Pierre Rompré, who refers to it as [TRANSLATION] “Geotextile Material”). Section 45 of the Act requires the registered owner of a trade-mark to show whether the trade-mark has been used in Canada in association with each of the wares or services specified in the registration at any time during the three-year period immediately preceding the date of the notice, and if not, the date when it was last so in use and the reason for the absence of use since that date. The relevant period in this case is any time between June 9, 2002 and June 9, 2005. Use in association with wares is set out in subsections 4(1) and 4(3) of the Act: (1) 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. (3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares. In this case, only subsection 4(1) of the Act applies. 1
In response to the Registrar's notice, the registered owner furnished the affidavit of Pierre Rompré, sworn on December 7, 2005. Both parties filed written arguments and attended an oral hearing. Mr. Rompré identified himself as the secretary of Groupe Solmax Inc. as well as the company’s director of human resources and legal affairs. Mr. Rompré states in paragraph 3 of his affidavit that [TRANSLATION] “Groupe Solmax Inc. marketed its Geotextile Material in Canada in the normal course of trade both before June 9, 2002, and between that date and June 9, 2005, and it has done so since June 9, 2005.” [TRANSLATION] “As an example of its Geotextile Material and the way in which the Mark is associated with its Geotextile Material,” and in support of paragraph 4 of his affidavit, Mr. Rompré attaches Exhibit PR-1, namely [TRANSLATION] “a data sheet on which the Mark appears as a trade-mark on several occasions.” The Applicant is contesting that this is use of the Mark as registered, because it feels that the Mark referred to on the sheet consists of the word “PAVEMAX” used on its own rather than in combination with the word “SYSTÈME,” the latter being used on the sheet not as a part of the Mark, but rather in a descriptive manner, always being preceded by the articles “le” and “du”. Exhibit PR-1 is undated. Mr. Rompré also provides no explanation as to when this “data sheet,” which, in fact, looks more like a simple two-page advertising pamphlet than a technical document, is given to clients and in which manner it accompanies the Geotextile Material. Nothing indicates that this pamphlet was used during the relevant period or that it was included with the Geotextile Material at the time of the transfer of the property in the wares. In these circumstances, such a pamphlet cannot be said to be an acceptable specimen of use in association with the wares within the meaning of section 4 of the Act. Hence, I do not feel that it is necessary for me to determine to what extent the use of the Mark made in the pamphlet corresponds to the Mark as registered. 2
Mr. Rompré states in paragraph 5 of his affidavit that the company Solmax-Texel Géosynthétiques Inc. is licensed by Groupe Solmax Inc. to use the Mark in association with its Geotextile Material. In paragraph 8, he states that [TRANSLATION] “Groupe Solmax Inc., as owner of the Mark, exercises direct or indirect control over the features and qualities of the Geotextile Material in association with which the Mark is marked or associated.” Mr. Rompré states in paragraph 7 that Solmax-Texel Géosynthétiques Inc. is held by Groupe Solmax Inc. and Texel Inc. and that Groupe Solmax Inc. and Solmax-Texel Géosynthétiques Inc. both share the same president, who is also a director for each of the companies, and have another director in common. I am of the view, keeping in mind the purpose and intent of section 45, that, as a whole, Mr. Rompré’s assertions establish the existence of a licence for use of the Mark by Solmax-Texel Géosynthétiques Inc. [Automobility Distribution Inc. v. Jiangsu Electronics Industries Ltd. (2005), 43 C.P.R. (4th) 157] With regard to this licensed use , Mr. Rompré filed Exhibit PR-2, a brief excerpt from the Internet site operated by Solmax-Texel Géosynthétiques Inc., dated December 2, 2005, in support of paragraph 5 of his affidavit. No more than the “data sheet” discussed above, does this excerpt show use of the Mark in association with the Geotextile Material. The mere reference to the SYSTÈME PAVEMAX Geotextile Material, which is described very briefly as a [TRANSLATION] “system using a Geotextile Material impregnated with bituminous binder, which can be used to delay the appearances of cracks and create a water barrier at the interface of the old and new surfaces”, does not constitute use within the meaning of section 4 of the Act. Mr. Rompré’s other assertions do not provide any further explanation of the manner in which the Mark is used in association with the Geotextile Material. Although Mr. Rompré provides in paragraph 6 of his affidavit a table showing the [TRANSLATION] “sales in Canada in the normal course of trade of the Geotextile Material in association with the Mark” and states that the invoices had been issued by Solmax-Texel Géosynthétiques, he provides no specimens of these invoices. Mr. Rompré also fails to provide any information on the normal course of trade in which such sales 3
were/are conducted. The table provided by Mr. Rompré has only three columns: the first reports the dates of eight sales that were made, the second, units of measure in m 2 , and the third, the amounts invoiced excluding taxes. Mr. Rompré ends his affidavit by stating in paragraph 9 that the [TRANSLATION] “Mark is an important asset of Groupe Solmax Inc. and has been used in Canada in a continued, regular manner as part of the normal course of trade since at least July 1991 by both Groupe Solmax Inc. and its licensee Solmax-Texel Géosynthétiques Inc.” This is the entire evidence provided by the registered owner. Although section 45 has been abundantly described in case law as “a summary procedure which is essentially designed to clear the Register of registrations of trade-marks that have fallen into disuse and that are to some extent dead wood” [Progolf Inc. v. Marks & Clerk (1993), 54 C.P.R. (3d) 451 (F.C.A.)] and the test to be met by a registered owner with respect to evidence under section 45 is not a heavy one [see, for example, Mantha & Associés/Associates v. Central Transport, Inc. (1995), 64 C.P.R. (3d) 354 (F.C.A.)], the fact remains that this evidence should not only “claim” use of the mark in association with the wares described in the registration, but also “show” use of it during the relevant period. Use of the mark within the meaning of section 4 of the Act must be demonstrated, meaning “the use of which evidence is required is ... the mark being marked on wares or their packages or associated with wares at the time of their sale or delivery in the normal course of trade and for the purpose of distinguishing the wares as those manufactured or sold by the owner of the trade mark from the goods of others.” [Aerosol Fillers Inc. v. Plough (Canada) Ltd. (1981), 53 C.P.R. (2d) 62]. Mr. Rompré’s affidavit is lacking in this respect. As is shown by the extracts from his affidavit reproduced above, Mr. Rompré’s assertions, most of which are vague, are not corroborated by any convincing evidence. Mr. Rompré fails to explain what the “normal course of trade” involves, although he is obliged to do so under section 45 [see Progolf, supra]. On this point, I would like to reproduce a few passages from a decision rendered by my colleague Jill W. Bradbury of the Trade-marks Opposition Board in Ogilvy Renault v. Bakor Inc., 2007 CarswellNat 4062, concerning a proceeding under section 45, 4
in which all the wares specified in the registration for the BUILDING ENVELOPE SYSTEMS (“BES”) mark, essentially, fibrated and non-fibrated asphalt and/or resin based insulation coatings for various applications, were deleted from the registration, with only the services to operate a business for the sale of construction and building material products being maintained under the proceeding: As pointed out by the requesting party, one might expect a mark to be used in association with wares such as the registrant's coatings etc. by the appearance of the mark on the packaging in which the coatings are delivered or in their accompanying invoices. This however is not the case at hand. Instead, the registrant's affiant attests as follows concerning the registrant's normal course of trade. . . . Due to the nature of commercial building construction products, it is often difficult, impractical or overly costly to package or label each product. For instance, air, vapour, waterproofing and roofing membranes for commercial use are typically not packaged or labeled as conventionally merchandised retail goods, but are shipped in container drums or on wooden skids directly to building construction sites for installation by qualified building contractors. It is for these reasons that Bakor's sales and marketing efforts for its BES Products are "front loaded" on building architects and consulting engineers during the early stages of the building design process. As noted above, building architects and consulting engineers, through written design specifications, determine whether Bakor's BES Products will be used in the construction of a particular building. As these design specifications must be followed by building contractors, in essence, Bakor's sales and marketing interactions with architects and consulting engineers constitute the effective "point of sale" for BES Products. Thus, we are presented with an out-of-the-ordinary situation and I must assess whether the facts relayed satisfy the requirement that at the time of the transfer of the property in or possession of the wares, in the normal course of trade, the mark is so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. I find that I cannot reach such a conclusion because the registrant has not evidenced that the mark is in any way associated with its wares at the time that the building contractor either purchases or receives the registrant's wares. While I appreciate that it might be problematic for the registrant to label its wares, there is no explanation as to why it could not list its trade-mark in the body of its invoices or packing slips or associate it with the wares by some other means at the time of transfer or purchase. ... Regardless of the unique aspects of the registrant's normal course of trade, the fact remains that it is essentially promoting its wares in association with its mark, and advertisement of wares in association with a mark is not use pursuant to s. 4. 5
The registrant has not argued that the non-use of its mark in association with its registered wares was justified by any special circumstances, nor is there any evidence that supports such an argument. I therefore see no need to address that possibility. (Emphasis added) In the present case, the registered owner has provided no conclusive evidence to corroborate its vague assertions of use and show use of the Mark in association with the Geotextile Material at the time of the transfer of the property within the meaning of section 4 of the Act. Given the lack of evidence indicating a clear association between the Mark and the Geotextile Material, I cannot find that use was established in this case. In view of all of the foregoing, it is my conclusion that the registration No. TMA388,434 for the SYSTÈME PAVEMAX mark ought to be expunged pursuant to subsection 45(5) of the Act. DATED AT MONTREAL, QUEBEC, THIS 22ND DAY OF APRIL 2008. Annie Robitaille Member, Trade-marks Opposition Board Certified true translation Michael Palles 6
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