LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 217
Date of Decision: 2011-11-09
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Ronald S. Ade Law Corporation against registration No. TMA363,757 for the trade-mark GLACIER in the name of Holland Imports Inc.
[1] At the request of Ronald S. Ade Law Corporation (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 1, 2009, to Holland Imports Ltd., the registered owner (the Registrant) of registration No. TMA363,757 for the trade-mark GLACIER (the Mark).
[2] The Mark is registered in association with “fans” (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/or services listed on 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 use since that date. In this case, the relevant period for showing use is any time between December 1, 2006 and December 1, 2009.
[4] The relevant definition of “use” in the present case is set out in s. 4(1) of the Act as follows:
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. Assertions of use as a matter of law are insufficient to demonstrate use [see Aerosol Fillers Inc. v. Plough (Canada) Ltd. (1979), 45 C.P.R. (2d) 194 (F.C.T.D.)]. A recipient of a s. 45 notice must put forward evidence showing how it has used the trade-mark in order that the Registrar may assess if the facts qualify as use of the trade-mark pursuant to s. 4 of the Act. However, it has also been held that evidentiary overkill is not required when use can be shown in a simple, straightforward fashion [see Union Electric Supply Co. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 56 (F.C.T.D.)].
[6] In response to the Registrar’s notice, the Registrant furnished the affidavit of Mohamed Punjani. Neither party filed written submissions; an oral hearing was not requested.
[7] In his affidavit, Mr. Punjani identifies himself as the CEO of the Registrant, having held this position since 1981. He attests that since at least as early as 1989 and including during the Relevant Period, the Registrant has sold the Wares in Canada in association with the Mark. In support of this assertion of use, Mr. Punjani provides Exhibits A through H.
[8] Exhibits A through D consist of photographs of the Wares as well as associated packaging, both of which clearly bear the Mark. Mr. Punjani explains that these photographs demonstrate representative use of the Mark in association with the Wares during the Relevant Period. He further explains, as can be clearly seen on the packaging, that the Wares shown in Exhibits B, C, and D are identified by following product numbers respectively: F000455, F000505, and F000555.
[9] Evidence to support sales made by the Registrant in Canada of the Wares during the Relevant Period include inventory sales history reports (Exhibit E), as well as representative invoices (Exhibits F, G, and H). Mr. Punjani provides ample detail in his affidavit to show how the Wares, identified by the above-noted product codes (Exhibits B, C, and D), are listed on such documents. Upon review of Mr. Punjani’s statements as well as the evidence, it is clear that the Registrant sold Wares bearing the Mark in Canada during the Relevant Period. Consequently, I am satisfied that the evidence demonstrates use of the Mark in association with the Wares in Canada pursuant to s. 4 and s. 45 of the Act
[10] In view of the above, I conclude that use has been shown of the Mark, in Canada, during the Relevant Period, for the wares described as “fans”. Pursuant to the authority delegated to me under s. 63(3) of the Act, the registration will be maintained in compliance with the provisions of s. 45 of the Act.
______________________________
Kathryn Barnett
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office