LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 169
Date of Decision: 2010-10-18
IN THE MATTER OF A SECTION 45 PROCEEDING requested by McCarthy Tétrault against registration No. TMA631,359 for the trade-mark LAWYERS WITHOUT BORDERS in the name of Lawyers Without Borders Inc.
[1] At the request of McCarthy Tétrault (the requesting party), the Registrar of Trade-marks forwarded a notice under section 45 of the Trade-marks Act on June 30, 2008 to Lawyers Without Borders, Inc., the registered owner of the above referenced trade-mark (the registrant).
[2] The trade-mark LAWYERS WITHOUT BORDERS (the Mark) is registered for use in association with “legal services”.
[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 June 30, 2005 and June 30, 2008 (the Relevant Period).
[4] “Use” in association with services is set out in s. 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 the purpose and scope of s. 45 of the Act is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register and as such, the evidentiary threshold that the registered owner must meet is quite low. As stated by Mr. Justice Russell in Performance Apparel Corp. v. Uvex Toko Canada Ltd. (2004), 31 C.P.R. (4th) 270 (F.C.) at 282:
[…] We know that the purpose of s. 45 proceedings is to clean up the "dead wood" on the register. We know that the mere assertion by the owner that the trade mark is in use is not sufficient and that the owner must "show" how, when and where it is being used. We need sufficient evidence to be able to form an opinion under s. 45 and apply that provision. At the same time, we need to maintain a sense of proportion and avoid evidentiary overkill. We also know that the type of evidence required will vary somewhat from case to case, depending upon a range of factors such as the trade-mark owners’ business and merchandising practices.
[6] In response to the Registrar’s notice, the Registrant furnished the affidavit of Christina Storm, Executive Director, President and Founder of the registrant. Both parties filed written submissions and were represented at an oral hearing.
[7] In her affidavit, Ms. Storm states that she has been employed by the registrant since March 2000 when she was appointed President. The affiant states that by virtue of her position, she is involved in trade-mark matters involving the registrant and Canada; she has reviewed the registrant’s files and records and has knowledge of the matters set out below.
[8] Ms. Storm states that globally the registrant has five paid employees and one retained outside consultant. She attests that the registrant has been providing “legal services” in Canada since October 15, 2003, and throughout the Relevant Period and continues to do so to date. The specific legal services are itemized as:
• Coordinating the provision of legal services which are either[sic] needed by Canadian organisations, including non-governmental organizations such as Los Pescadores de La Playita an NGO working in 2006 supported through law students at McGill University;
• Consulting with organizations and/or lawyers in Canada in the development and implementation of global rule of law programming using Canadian lawyers;
• Overseeing and managing Canadian lawyers working on global rule of law programming;
• Researching legal issues; and
• Consulting about the provision of pro bono legal services with Canadian law students and lawyers, legal organisations, Canadian granting agencies and members of the Canadian Judiciary.
[9] Ms. Storm states that representatives of the registrant promote its service using the Mark by attending programming at law schools, conferences and career fairs, and appearing on Canadian-based or Canadian listening area radio programming and international panels.
[10] Since at least 2003 the registrant has had a permanent representative in an office in Toronto, who has managed Canadian volunteers, diplomatic relationships and other Canadian involvement. Examples given of work managed by the representative relate to grant drafting and preparation, networking program funding opportunities, attending a diplomatic briefing/lunch meeting in Canada, and maintaining documentation and supporting individuals travelling through Canada from countries in which they may not be allowed to carry such documents.
[11] Ms. Storm provides that Canada represents one of the top three jurisdictions in the world for the provision of legal services and acquisition of legal resources for the registrant in association with the Mark.
[12] The registrant’s primary form of promotion and advertising if its legal services is through its website and newsletter. Ms. Storm attaches extracts from the website (Exhibit B), and states that it was in existence during the Relevant Period and continues to date. Statistics from 2007 and 2008 are provided regarding access from Canada; I note that in the first several months of 2007 there were in excess of 3900 hits from Canada. Ms. Storm states that the registrant estimates that approximately 13% of its website target audience originates from Canada.
[13] The subject Mark is clearly marked on the pages of the website provided. These pages provide information about LAWYERS WITHOUT BORDERS projects that are related to the delivering of books and supplies for students in law schools in developing nations, advocacy training programs, joining with teams of lawyers (in countries such as Uganda) to assist with trial advocacy and community access to justice issues. In addition, the registrant oversees trial observations, rule of law programming, inheritance and land ownership training, women’s empowerment programming; the registrant is also engaged with United Nations Committees.
[14] Ms. Storm attaches as Exhibit C a sample copy of the quarterly newsletter Border Briefs (dated during the Relevant Period) which was distributed to 50 subscribers in Canada. The newsletter consists of four pages and the Mark appears clearly on the front page and in various places throughout. A review of the newsletter reveals that it relates to the provision of pro bono services relating to rule of law programs and projects similar to those on the website as noted above. Much of this work appears to be undertaken at the request of and in partnership with respective NGOs.
[15] The requesting party submitted that the “legal services” as itemized by the affiant and listed in paragraph [8] above appear to be related to consultation, recruitment and management of Canadian lawyers to provide services to others outside Canada, rather than the provision of legal services in Canada. I am in agreement with the requesting party with the exception, however, of the first services on that list; there are passages in the Newsletter and on the website which support the inference that the registrant offered and/or provided these services in Canada during the Relevant Period.
[16] Firstly, the website makes it clear that the registrant has created a model of providing legal support to non-profit organizations internationally, whereby the registrant enlists or enrolls members of the legal community to provide their services on a pro bono basis. While it is evident that most of the non-profit organizations will be involved in legal issues in developing nations, I see nothing that requires the organizations receiving the legal services to be resident organizations within those developing nations.
[17] Secondly, the website, (shown to be accessed by Canadians), contains a page called NGOs (non-governmental organizations) and includes an “NGO Intake Form” and the following words:
This section is dedicated to organizations, projects, initiatives or missions, in need of legal services including, but not limited to, organizational advice, tax advice and trans counsel, lawyer-prosecutor-defense counsel and judicial trainings, research, creation forms and documents, rights-based (victims, families or accused oriented) outreach and other legally oriented materials for in-country projects.
[18] This page goes on to provide instructions and advice in applying for and meeting the criteria for “Pro Bono Counsel” provided by the Registrant. In my view, the information on this page is a clear offer of legal services to any individual accessing the website and is not limited to any specific jurisdiction.
[19] It is well established that the interpretation of “performance of services in Canada” for the purposes of s. 4(2) is quite broad. As long as the services “are performed without the Canadian customer having to leave Canada”, and the trade-mark is used in association with the services, that is sufficient to demonstrate “use” (Saks & Co., supra, see also Bedwell v. Mayflower (1999), 2 C.P.R. (4th) 543, Société Nationale des Chemins de Fer Français SNCF v. Venice Simplon-Orient-Express, Inc. (2000), 9 C.P.R. (4th) 443 (F.C.T.D.) aff’g 64 C.P.R. (3d) 87). I do not agree with the Requesting Party’s contention that in order to provide “legal services” in Canada, one must be licensed to practice law in at least one jurisdiction in Canada; in my view such services could possibly be provided to Canadians in Canada facing legal issues in other jurisdictions (as in the recent decision in Norman M. Cameron Law Corp. v. CMS Cameron McKenna LLP 2009 CarswellNat 5044 (T.M.O.B.)).
[20] Further, while use of a trade-mark on advertising in Canada of services only available elsewhere does not satisfy the provisions of s. 4(2) (Porter v. Don the Beachcomber (1966), 48 C.P.R. 280 (Ex. Ct.)), where the trade-mark owner is offering and prepared to perform the services in Canada - use of the trade-mark on advertising of those services meets the requirements of s. 4(2)(see Wenward (Canada) Ltd. v. Dynaturf Co. (1976), 28 C.P.R. (2d) 20).
[21] In my view, the NGO intake form on the website, combined with the evidence of Canadians accessing the registrant’s website, and the fact that there were subscribers to the registrant’s newsletter in Canada, promotional appearances on Canadian radio broadcasts and law schools, as well as the statement by the affiant that a Canadian NGO has received such services, supports the finding that during the Relevant Period the registrant offered and provided its legal services to Canadians in Canada, and leads me to conclude that the Mark is not “deadwood” in Canada.
[22] In view of all of the foregoing, I am satisfied that the requisite use in Canada pursuant to s.45 and s. 4(2) has been shown. Accordingly, and pursuant to the authority delegated to me under s. 63(3) of the Act, the registration no.TMA631, 359 for LAWYERS WITHOUT BORDERS will be maintained in compliance with the provisions of s. 45 of the Act.
______________________________
P. Heidi Sprung
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office