LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 199
Date of Decision: 2010-11-17
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Goudreau Gage Dubuc LLP against registration No. TMA528,189 for the trade-mark WALLSTYLES in the name of Weyerhaeuser Company Limited
[1] At the request of Goudreau Gage Dubuc LLP (the Requesting Party), the Registrar of Trade-marks forwarded a notice under s. 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) on December 8, 2008 to Weyerhaeuser Company Limited (Weyerhaeuser or the Registrant), the registered owner of the above referenced trade-mark.
[2] The trade-mark WALLSTYLES (the Mark) is registered for use in association with the following wares “wood based panelling and wainscoting” (the Wares).
[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 December 8, 2005 and December 8, 2008 (the Relevant Period).
[4] “Use” in association with wares is set out in s. 4(1) and 4(3) of the Act. In this case, only s. 4(1) applies:
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.
[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 Uvex Toko Canada Ltd. v. Performance Apparel Corp. (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 Kevin Seward, sworn on June 2, 2009, together with Exhibits A through G. Each party filed a written argument; an oral hearing was not requested. I have disregarded the portions of the Registrant’s written argument that refer to facts not set out in Mr. Seward’s affidavit, as the Registrant is not permitted to rely on facts in its written argument that are not in evidence.
[7] In his affidavit, Mr. Seward states that he is the Tactical Product Manager of Specialty Building Products for Weyerhaeuser, and as such has personal knowledge of the matters deposed to therein, except where they are stated to be based on information and belief. He attests that he joined Weyerhaeuser in 1999 and has been working in his current position since 2005. Since 2007, he has been in charge of marketing functions, including marketing related to the Specialty Building Products Division, and his responsibilities include monitoring Weyerhaeuser’s brand requirements in the Canadian marketplace.
[8] Mr. Seward states that the Mark has been continually used in association with the Wares in Canada since at least April 2000. The evidence furnished tends to show that there were sales of the Wares during the Relevant Period in association with the Mark. However, there is an issue with respect to who was using the Mark. The Requesting Party argues that there is no reference in the evidence to the Registrant, and that the evidence shows Broadleaf Logistics Company as the source of the Wares. The Registrant on the other hand argues that the use shown is by the Registrant.
[9] As Exhibit A, the affiant submits three representative labels that “have been used in packaging the Wares which have been sold in Canada during the years 2005 through 2008.” The labels show the Mark with “styles” in a stylized font and the TM symbol printed above the words “primed MDF panelling” and “primed MDF wainscoting”. A detailed product description is printed below the Mark in English, French and Spanish. At the bottom of each label is a logo that includes the word “BROADLEAF”, and the phrases “Made in Chile” and “Printed in Chile”. As Exhibit B, he provides “a price list used for sales from September 2005 to early 2008” for a variety of geographic regions within Canada, and he explains that the numbers appearing in the left-hand column below the product names on the list are Weyerhaeuser’s product numbers for panelling and wainscoting. The Mark as it appears on the labels in Exhibit A also appears on this price list. Exhibit C includes a table indicating the volume of sales of Weyerhaeuser’s products in those regions during the years 2007 and 2008, and I note that the product numbers correspond to the product numbers on the price list.
[10] Exhibit D to the affidavit is a redacted copy of a representative invoice issued by “Broadleaf Logistics Company” from an address in Lasalle, Quebec in November 2008. “Broadleaf Logistics Company” is also listed under the “paid to” heading. The invoice lists various products including the Wares, and bears the logo, with the word “BROADLEAF”, as it appears on the labels in Exhibit A. Mr. Seward confirms that these Wares were shipped to a company in LaSalle, Quebec, and that the Wares would have borne the Mark.
[11] As Exhibit E, Mr. Seward encloses a representative photograph of a “typical display of how the Wares have been sold in Canada in association with the Wallstyles Trade-mark during the years 2005 through 2008”, and as Exhibits F and G provides representative photographs of displays of the Wares being offered for sale at Home Depot stores in Canada in June and September 2008. He states that the Mark is present on the packaging of the Wares depicted in Exhibits F and G. However, I note that all the photographs are of very poor quality, and as a result any images or words appearing on the packaging and on the signage are illegible. As such, these Exhibits are of little value.
[12] Having considered the evidence, I agree with the Requesting Party that the evidence fails to show use by the Registrant or accruing to the Registrant. The fact that the invoice appears to be furnished by “Broadleaf Logistics Company” and the labels refer to “Broadleaf” is not in and of itself, fatal. However, Mr. Seward has not provided any clarification regarding the relationship between Broadleaf and the Registrant. Although it may be that the Registrant is the manufacturer of the Wares and that Broadleaf is the Registrant’s distributor, there is nothing in the evidence to this effect. Nowhere in the affidavit is there a clear statement that the Wares emanated from the Registrant or that the use of the Mark was by the Registrant. Nor is there any evidence from which this could be inferred. Consequently, I conclude that the evidence furnished is insufficient to maintain the registration.
[13] In view of the foregoing, pursuant to the authority delegated to me under s. 63(3) of the Act, the registration will be expunged in compliance with the provisions of s. 45 of the Act.
______________________________
Ronnie Shore
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office