LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 10
Date of Decision: 2016-01-20
IN THE MATTER OF A SECTION 45 PROCEEDING
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Rhodia Operations |
Requesting Party |
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and |
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Oleon, naamloze vennootschap |
Registered Owner |
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TMA258,027
for RADIACID |
Registration |
[1] At the request of Rhodia Operations (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 December 6, 2013 to Oleon, naamloze vennootschap (the Owner), the registered owner of registration No. TMA258,027 for the trade-mark RADIACID (the Mark).
[2] The Mark is registered for use in association with the goods:
(1) Chemical products used in industry, science, photography, agriculture, horticulture, forestry (with the exception of fungicides, insecticides and weed-killers); namely: artificial and synthetic resins in raw form, raw plastics (in the form of powders, liquids or pastes); manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry; chemical products derived from natural and synthetic fatty matters, namely: fatty acids, distilled and/or hydrogenated acids, polyunsaturated acids, selectively hydrogenated fatty acids, glycerine, glycerides, fatty alcohols and industrial derivatives of these products, namely metallic soaps, esters, condensates, epoxidation products, amines and greases (other than edible oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels, namely motor spirit and illuminants; candles, tapers, night lights and wicks.
[3] The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with the goods specified in the registration, at any time between December 6, 2010 and December 6, 2013. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last used and the reasons for the absence of use since that date.
[4] The relevant definition of use with respect to goods is set out in section 4(1) of the Act as follows:
4(1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
[5] 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 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 goods specified in the registration during the relevant period.
[6] In response to the Registrar’s notice, the Owner furnished the affidavit of Moussa Naciri, the CEO of the Owner, sworn in June 2014 in Rieme, Belgium. Only the Owner filed written representations; an oral hearing was not requested.
The Owner’s Evidence
[7] In his affidavit, Mr. Naciri states that he has been employed as the Chief Executive Officer of the Owner since June 2013, and he has been employed by the Sofiproteol group, the parent company of the Owner, since February 2007.
[8] Mr. Naciri states that the Owner is the leading producer of oleochemicals in Europe. He explains that these products include fatty acids, glycerine, esters, dimers, technical oils, specialty oleochemicals, and biodiesel. Mr. Naciri states that the Owner manufactures and sells its products under various brand names, including under the Mark. RADIACID brand products are identified by product codes that include the Mark and a numerical suffix which denotes chemical products or acids of different characteristics.
[9] Mr. Naciri sets out that the Owner’s products have been sold in Canada in association with the Mark for decades by the Owner and its North American subsidiary, Oleon Americas Inc. (Oleon Americas). Mr. Naciri explains that Oleon Americas maintains warehousing facilities in Somerset, New Jersey to facilitate prompt delivery of the Owner’s products to customers located in the Americas. He states that the Owner manufactures all RADIACID brand products and “maintains direct control over the character and quality of the goods at all times”.
[10] Mr. Naciri explains that since the Mark cannot be practically applied to oleochemicals themselves or to their shipping containers, the Mark is displayed to customers in the normal course of trade as part of the product codes shown in the Owner’s product catalogues and in documents provided to customers at the time an order is placed or when customers take possession of an order. In particular, he explains that commercial invoices and Canadian customs invoices (CCI) are handed over to the customer when the goods are picked up in Canada. I note that one of the purchase orders at Exhibit 2 of Mr. Naciri’s affidavit includes the instructions, “please ensure the following documents accompany the shipment … B/L … CofA … CCI or commercial invoice”.
[11] Mr. Naciri explains that when placing an order by telephone or other means, customers often have the product catalogue in front of them and will indicate what product they wish to purchase by identifying a product by its name, which includes the Mark. He further states that each sale made to a Canadian company is accompanied by a variety of documents which identify the product using the Mark, and which may include a purchase order, bill of lading, customs invoice, and/or packing list.
[12] Attached at Exhibit 1 to Mr. Naciri’s affidavit are excerpts from one of the Owner’s product catalogues. Mr. Naciri states that this was distributed during the relevant period and that these excerpts identify RADIACID brand products manufactured by the Owner generally, as well as several particular types of RADIACID oleochemicals, including:
• RADIACID 0628, which Mr. Naciri states is “a distilled fatty acid”. The catalogue indicates that its product type is “coco oil type fatty acid distilled”, and it is listed under the heading, “Lauric Fatty Acids”.
• RADIACID 0908, which Mr. Naciri states is “a fatty acid and, more specifically, an isotearic acid”. The catalogue indicates that its product type is “isotearic acid”, and it is listed under the heading, “Branched Fatty Acids & Alcohol”.
• RADIACID 0950, which Mr. Naciri states is “a fatty acid and, more specifically, a dimer acid, which can include polyunsaturated acids”. The catalogue indicates that its product type is “standard dimer acids”, and it is listed under the heading, “Dimers”.
[13] As well, attached at Tabs A to E of Exhibit 2 to Mr. Naciri’s affidavit are five packets of documents that include a combination of purchase orders, packing lists, bills of lading, invoices, custom invoices, and certificates of analysis. Mr. Naciri states that these documents are representative samples of the Owner’s Canadian sales made in the normal course of trade, and indicates that each packet of document corresponds to an individual sale of RADIACID oleochemicals to a Canadian company during the relevant period.
[14] At paragraph 9 of his affidavit, Mr. Naciri provides a table summarizing the representative examples of sale of RADIACID 0628, and one instance of sale each of RADIACID 0908 and RADIACID 0950 to Canadian companies detailed in Tabs A to E. He also states that the shipments of these sales were all delivered to Canada within the relevant period.
[15] I note that at Tabs A, B, D, and E of Exhibit 2, Mr. Naciri provides invoices proving sales within the relevant period. Three invoices show the sale of “RADIACID 0628” and one invoice show the sale of “RADIACID 0908” by Oleon Americas to Canadian companies in Rexdale and Toronto, Ontario. Further, the product code “RADIACID 0628” or “RADIACID 0908” is clearly displayed as part of the item description on these invoices.
[16] Furthermore, at Tab C of Exhibit 2, Mr. Naciri includes a customs invoice and other documents all dated within the relevant period and all relating to the sale and shipment of a 19.38kg bulk container of “RADIACID 0950”. I note that all the documents clearly identify the Owner as the source of the goods, with the ultimate purchaser identified as Afton Chemical Canada of Toronto, Ontario. Again, the product code “RADIACID 0950” is clearly displayed on these documents.
Analysis
Licensed Use of the Mark
[17] As stated by the Federal Court, there are three main methods by which a trade-mark owner can demonstrate the requisite control pursuant to section 50(1) of the Act: first, by clearly attesting to the fact that it exerts the requisite control; second, by providing evidence demonstrating that it exerts the requisite control; or third, by providing a copy of the license agreement that provides for the requisite control [Empressa Cubana Del Tabaco Trading v Shapiro Cohen (2011), 91 CPR (4th) 248 at para 84].
[18] In this case, Mr. Naciri clearly attests to the requisite control and adequately explains the relationship between the Owner and Oleon Americas as set out in paragraph 9 of this decision. For purposes of this proceeding, that is all that is required to satisfy section 50(1) of the Act. As such, I am satisfied that any use of the Mark by Oleon Americas enures to the benefit of the Owner.
Use of the Mark Pursuant to Section 4
[19] Mr. Naciri’s evidence indicates that the Mark was not displayed on the Owner’s RADIACID oleochemicals, or on their packaging. As such, it falls on the Owner to establish that the Mark was, pursuant to section 4(1) of the Act, “in any other manner so associated” with the registered goods at the time of transfer.
[20] In this respect, the Owner submits in its written representations that “the Mark is displayed to customers in the normal course of trade … in product catalogues viewed by customers at the time of purchase and in documents provided to customers when they receive the goods”. As well, the Owner submits that “in either case, the Mark is used to identify the goods, along with varying numerical suffixes depending on each product’s particular characteristics.”
[21] Indeed, the Mark appears as part of the product codes for the Owner’s RADIACID oleochemicals in the Exhibit 1 catalogue and in all of the Exhibit 2 documents, which include invoices that accompany the goods. While the catalogue and invoices that accompany the goods all show RADIACID followed by a numerical code rather than the Mark per se, I am satisfied that the Mark is being used in such a way that it has not lost its identity and remains recognizable as the dominant and essential feature of the Mark has been maintained [Canada (Registrar of Trade-marks) v Compagnie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 (FCA); Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)]. Thus, I consider the use of RADIACID 0628, RADIACID 0908, and RADIACID 0950, to be use of the Mark as references to 0628, 0908, 0950 would likely be perceived by consumers as identifiers and not part of the trade-mark per se [see Borden Ladner Gervais LLP v Planet of Sound Hifi Inc, 2015 TMOB 144 at para 11].
[22] While the appearance of a trade-mark in a catalogue does not in itself constitute use in association with goods [see Clairol International Corp v Thomas Supply & Equipment Co Ltd (1968), 55 CPR 176 (Ex Ct)], it may constitute use under certain circumstances. For example, it has been established that notice of association between a trade-mark and goods can be made when customers place orders by way of a catalogue that displays the trade-mark in close proximity to the goods, and that notice of association continues when the goods are delivered and invoices are received [see Lapointe Rosenstein v Elegance Rolf Offergelt GmbH (2005), 47 CPR (4th) 196 (TMOB) and Swabey, Ogilvy Renault v Miss Mary Maxim Ltd (2003), 28 CPR (4th) 543 (TMOB)].
[23] In the present case, Mr. Naciri states that “customers will have the Oleon product catalogue … in front of them when placing orders for RADIACID brand products by telephone or other means”, and that “when placing an order, customers will indicate what product they wish to purchase by identifying a product by name, which includes the trade-mark RADIACID”. Furthermore, at paragraphs 6 and 9 of his affidavit, Mr. Naciri identifies three product numbers found on the Exhibit 2 documents that correspond to the product numbers found in the Exhibit 1 catalogue, namely RADIACID 0628, RADIACID 0908, and RADIACID 0950.
[24] Moreover, given Mr. Naciri’s statement that commercial invoices and Canadian customs invoices in particular are handed over to the customer when the goods are picked up in Canada, notice of association of the Mark would continue once the goods were received. Thus, having considered the nature and channels of the Owner’s trade and aforementioned jurisprudence, I am satisfied that sufficient notice of association between the Mark and the three above-mentioned RADIACID brand products has been demonstrated by the Owner. Further, the representative samples of commercial invoices provided at Exhibit 2 to Mr. Naciri’s affidavit relate to sales occurring during the relevant period.
[25] Given the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in association with products identified as RADIACID 0628, RADIACID 0908, and RADIACID 0950 within the meaning of sections 4(1) and 45 of the Act. Thus, the question becomes whether the Owner has demonstrated use of the Mark in association with each of the registered goods set out in the statement of goods.
Evidence of Use of Each Good
[26] In its written representations, the Owner submits that Mr. Naciri’s affidavit asserts use of the Mark in association with the following goods:
chemical products derived from natural and synthetic fatty matters, namely: fatty acids, distilled and/or hydrogenated acids, polyunsaturated acids, selectively hydrogenated fatty acids.
[27] Given that the evidence is silent with respect to the other registered goods and there is no evidence of special circumstances excusing such non-use, I will not discuss these goods further and the registration will be amended to delete them.
[28] With respect to the registered goods listed in paragraph 26, having distinguished each of the registered goods in the statement of goods, the Owner must produce evidence of use with respect to each of the registered goods [see John Labatt Ltd v Rainier Brewing Co et al (1984), 80 CPR (2d) 227 (FCA) and Sharp Kabushiki v 88766 Canada Inc (1997), 72 CPR (3d) 195 (FCTD)]. This is not to say that a registered owner is obliged to provide invoices for each registered good [see 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)]. However, in the absence of invoices, the Owner should have been prepared to furnish evidence regarding volumes of sales, dollar value of sales, or equivalent facts to allow the Registrar to conclude that transfers in the normal course of trade actually occurred in Canada with respect to each of the registered goods [see 1471706 Ontario Inc v Momo Design srl, 2014 TMOB 79, 2014 CarswellNat 2439; Gowling Lafleur Henderson LLP v Wertex Hosiery Incorporated, 2014 TMOB 193 at para 15, 2014 CarswellNat 4624].
Fatty acids
[29] With respect to the registered good, “fatty acids”, Mr. Naciri states that all three RADIACID brand products identified in the Exhibit 2 documents are fatty acids. Moreover, the product type and heading descriptions in the Exhibit 1 catalogue are consistent with this. For example, RADIACID 0908 is described as an “isotearic acid”, which is “the ideal fatty acid”. I am therefore satisfied that the evidence permits me to conclude that use of the Mark in association with RADIACID 0908 is use of the Mark in association with the goods described as “fatty acids”.
Distilled and/or hydrogenated acids
[30] With respect to the registered good, “distilled and/or hydrogenated acids”, Mr. Naciri states that “RADIACID 0628 … is a distilled fatty acid”. Furthermore, the Exhibit 1 catalogue identifies its product type as “coco oil type fatty acid distilled” and includes a description that states, “coco and palm kernel based fatty acids can be offered as distilled, hydrogenated and fractionated fatty acids”. I am therefore satisfied that the evidence permits me to conclude that use of the Mark in association with RADIACID 0628 is use of the Mark in association with the goods described as “distilled and/or hydrogenated acids”.
Polyunsaturated acids
[31] With respect to the registered good, “polyunsaturated acids”, Mr. Naciri states that “RADIACID 0950 … is a fatty acid and, more specifically, a dimer acid, which can include polyunsaturated acids.” As well, RADIACID 0950 is listed under “Dimers” in the Exhibit 1 catalogue, which also includes a description that states, “dimer acids … are mainly used as polymer building block … [and] contribute to … properties of the final polymers … based upon these natural polymerized fatty acids.” I am therefore satisfied that the evidence permits me to conclude that use of the Mark in association with RADIACID 0950 is use of the Mark in association with the goods described as “polyunsaturated acids”.
Selectively hydrogenated fatty acids
[32] Finally, with respect to the registered good, “selectively hydrogenated fatty acids”, the fact that this good as specified in the registration is in some way related to “fatty acids” or “distilled and/or hydrogenated acids” is not sufficient to preserve the registration intact [see John Labatt, supra].
[33] Although I note that the Exhibit 1 catalogue includes a reference to the RADIACID oleochemical, “coco oil type fatty acid stripped hydrogenated” which may be considered selectively hydrogenated, Mr. Naciri provides no evidence of sale or transfers of such goods. In this respect, even if such goods were available for sale through the Exhibit 1 catalogue during the relevant period, it has been held that “offering for sale” is not the same as “selling” [see Michaels & Associates v WL Smith & Associates Ltd (2006), 51 CPR (4th) 303 (TMOB)], and that advertising alone is insufficient to establish use of the Mark in accordance with section 4(1) of the Act [see Riches, McKenzie & Herbert LLP v Cleaner’s Supply Inc, 2012 TMOB 211, CarswellNat 5229]. As such, I do not consider the fact that the Exhibit 1 catalogue was distributed during the relevant period to be sufficient to establish use of the Mark in association with “selectively hydrogenated fatty acids” in Canada.
[34] Further, given that the Owner itself has made a distinction between fatty acids, distilled and/or hydrogenated acids, polyunsaturated acids and selectively hydrogenated fatty acids, even if one or more of RADIACID 0628, RADIACID 0908, and RADIACID 0950 are selectively hydrogenated fatty acids, in order for the Owner to maintain its registration for “selectively hydrogenated fatty acids”, it had to show use in association with this good otherwise than by reference to evidence of use of the Mark in association with “fatty acids”, “distilled and/or hydrogenated acids” and “polyunsaturated acids” [see Sharp, supra].
Disposition
[35] Given the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended in compliance with the provisions of section 45 of the Act to delete the following goods:
(1) Chemical products used in industry, science, photography, agriculture, horticulture, forestry (with the exception of fungicides, insecticides and weed-killers); namely: artificial and synthetic resins in raw form, raw plastics (in the form of powders, liquids or pastes); manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry; chemical products derived from natural and synthetic fatty matters, namely: selectively hydrogenated fatty acids, glycerine, glycerides, fatty alcohols and industrial derivatives of these products, namely metallic soaps, esters, condensates, epoxidation products, amines and greases (other than edible oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels, namely motor spirit and illuminants; candles, tapers, night lights and wicks.
[36] The amended statement of goods will be as follows:
Chemical products derived from natural and synthetic fatty matters, namely: fatty acids, distilled and/or hydrogenated acids, polyunsaturated acids.
______________________________
Natalie de Paulsen
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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HEARING DATE: No hearing held
AGENTS OF RECORD
Smart & Biggar FOR THE REGISTERED OWNER
Robic FOR
THE REQUESTING PARTY