LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 193
Date of Decision: 2014-09-15
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Gowling Lafleur Henderson LLP against registration No. TMA169,544 for the trade-mark SAPPHIRE in the name of Wertex Hosiery Incorporated
[1] At the request of Gowling Lafleur Henderson LLP (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on March 15, 2013 to Wertex Hosiery Incorporated (the Owner), the registered owner of registration No. TMA169,544 for the trade-mark SAPPHIRE.
[2] The Mark is registered for use in association with the following wares: (1) Hosiery and tights; (2) Panty hose, body shirts, sweaters, blouses, ladies’ slacks and skirts.
[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 specified in the registration at any time within the three year period immediately preceding the date of the notice and, if no such use has occurred, to identify the date when the trade-mark was last in use and the reason for the absence of use since that date.
[4] In this case, the relevant period for showing use is between March 15, 2010 and March 15, 2013.
[5] The relevant definition of “use” in association with wares is set out in section 4(1) of the Act:
4(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.
[6] It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is quite low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the wares specified in the registration during the relevant period.
[7] In response to the Registrar’s notice, the Owner furnished the affidavit of Albert Werner, Vice-President of the Owner, sworn on June 12, 2013. Both parties filed written representations; an oral hearing was not held.
[8] In his affidavit, Mr. Werner explains that the Owner is a Montreal-based company that manufactures and sells a variety of hosiery and other garment products. In addition to exporting its products, the Owner sells wholesale to Canadian retailers who in turn sell the Owner’s products to individual consumers.
[9] Although he asserts use of the Mark in association with all of the registered wares, Mr. Werner’s evidence focuses on hosiery, in the form of “trouser socks”, and panty hose. In support, Mr. Werner attaches photographs of the Owner’s hosiery products (Exhibit A) and sample invoices (Exhibit B).
[10] Exhibit A consists of five pictures of sample packaging of trouser socks and panty hose taken from the Owner’s inventory. The Mark is displayed prominently on the packaging and Mr. Werner confirms that the packaging reflects the appearance of the Mark displayed on the Owner’s products sold in Canada during the relevant period. The retailer is identified on the packaging (Sears Outlet Store for the socks and Dollarama for the panty hose); however, Mr. Werner confirms that codes appearing on the packaging correspond to the Owner’s product codes, identifying it as the manufacturer.
[11] With respect to transfers during the relevant period, Mr. Werner states that, during 2012 alone, the Owner sold several thousand units of socks and several hundred thousand units of panty hose in Canada in association with the Mark. He further states that during the relevant period, the Owner sold “hundreds of thousands of SAPPHIRE branded Wares in Canada representing several hundred thousand dollars’ worth of sales”. Exhibit B consists of seven sample invoices showing sales by the Owner to Canadian retailers during the relevant period of socks and panty hose, “among other things”. I note that the invoices are heavily redacted, and that where the product description is not clearly for “trouser socks” or “pantyhose”, the style numbers appearing on the invoices correspond to the style numbers appearing on the panty hose product packaging shown in Exhibit A.
[12] In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in association with the registered wares “hosiery” and “panty hose” within the meaning of sections 4 and 45 of the Act.
[13] With respect to the remaining wares, I agree with the Requesting Party that, at best, the evidence is ambiguous as to whether the Mark was actually used by the Owner during the relevant period. In this respect, the Requesting Party submits that the Owner only alleges use of the Mark specifically with “trouser socks” and “panty hose”, and that the exhibits should be construed as supporting use in relation to those wares only.
[14] In its written representations, the Owner submits that a registered owner does not have to provide corroborative documentary evidence of use of its trade-mark in association with “every last ware” listed in the registration, so long as there is evidence of use in association with wares of the same general class.
[15] Although invoices are not mandatory in order to satisfactorily reply to a section 45 notice [Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD); Gowling Lafleur Henderson LLP v Neutrogena Corporation (2009), 74 CPR (4th) 153 (TMOB)], use must be shown in association with all of the wares as registered [John Labatt Ltd v Rainier Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)]. Some evidence of transfers in the normal course of trade in Canada is necessary. Such evidence can be in the form of invoices, but can also be satisfied by clear sworn statements.
[16] In this case, however, Mr. Werner only makes a clear statement regarding quantity and amount of sales for socks and panty hose for 2012. With respect to the remaining wares, as noted above, he simply makes the broad statement that, during the relevant period, the Owner “sold hundreds of thousands of SAPPHIRE branded Wares in Canada representing several hundred thousand dollars’ worth of sales.” It is not clear whether this statement encompasses all of the registered wares, some of the registered wares or just to socks and panty hose.
[17] Given the nature of the wares for which exhibits and clear statements were provided, being inexpensive footwear products, nothing in the evidence clearly demonstrates that the Owner is also in the business of manufacturing larger and more expensive clothing products such as sweaters, blouses and skirts. Had the Owner provided some further evidence such as pictures or invoices with respect to sweaters, for example, it would have helped show that the Owner manufactured and sold products other than hosiery.
[18] Furthermore, at paragraph 10 of his affidavit, Mr. Werner states that “When the Trade-mark appears on the Wares, it is shown on the packaging of the Wares”. Whether intended or not, this statement implies that at least some of the products sold by the Owner did not necessarily display the Mark as it was shown in Exhibit A for socks and pantyhose. Indeed, as representative evidence, I consider it unlikely that the packaging depicted in Exhibit A for socks and panty hose would be the same as or similar to packaging used for sweaters or other larger garments.
[19] This leaves it ambiguous as to which of the remaining wares, if any, were in fact transferred in the normal course of trade in association with the Mark by the Owner during the relevant period.
[20] In any event, although not specifically relied on by the Owner, I do not consider Saks & Co v Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FCTD) applicable in the present case. In Saks, there were 28 distinct categories of wares and services, furnishing evidence for all of which would have placed an unreasonable burden on the registered owner. In the present case, there are only a handful of wares. Thus, I do not find it unreasonable to expect the Owner to furnish some evidence of transfers in the normal course of trade with respect to each of the registered wares. It should have been a simple matter to either provide a representative invoice for each of the registered wares or provide a statement regarding transfers of each of the registered wares, as was done with socks and panty hose.
[21] In view of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with the wares “tights, body shirts, sweaters, blouses, ladies’ slacks and skirts”. Furthermore, there is no evidence of special circumstances excusing non-use of the Mark before me.
Disposition
[22] Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be amended to delete “and tights” from wares (1) and “body shirts, sweaters, blouses, ladies’ slacks and skirts” from wares (2).
[23] The amended statement of wares will be as follows: (1) Hosiery; (2) Panty hose.
______________________________
Andrew Bene
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office