SECTION 45 PROCEEDINGS
TRADE-MARK: FORESTER
REGISTRATION NO.: UCA09357
On February 14, 2000, at the request of Messrs. Swabey, Ogilvy Renault, the Registrar forwarded a Section 45 notice to 395925 Alberta Ltd., the registered owner of the above-referenced trade-mark registration.
The trade-mark FORESTER is registered for use in association with the following wares:
(1) Tools used in connection with logging operations and including axes, saws, saw blades, saw frames, buck saws, saw sets, files, hatchets, chisels, planes and carpenter tools.
(2) Fishing tackle, namely, fishing rods, fishing reels, fishing lures and bait, fish hooks, and fishing line.
(3) Haversacks and duffle bags.
(4) Hardware and tools namely, mechanics tools, namely pliers, cutters, wrenches, tinners’ shears, tube and pipe cutters, gear pullers, tube flaring tools, socket wrenches, tool and cash boxes, files and rasps, punches and nail sets, screwdrivers, drills and drill points, taps, dies and threading tools, auger bits, carpenters’ and mechanics’ squares, measuring tapes and rules, levels, staplers, hammers, wrecking bars, hack saws, tool handles, shovels and forks, snow pushers, scythes, vises, clamps, knives, putty knives, linoleum knives, wall and wood scrapers, glass cutters, plasterers’ tools, cement tools, trowels, soldering irons, blow torches, paint brushes and paint rollers, sandpaper and emery cloth, grinding wheels, cutting wheels, pulleys, bench grinders, oil cans, chain and chain hooks, wire stretchers, load binders, hoists, rope, wheel barrows, wire, rope and cable and sharpening stones; garden tools namely, rakes, hoes, cultivators, turf edgers, hedge shears, pruning shears, grass shears, sprayers folding fence, garden hose fittings, water sprinklers, and garden hose; plumbing fittings namely, pipe fittings, valves, and sink faucets, builders’ hardware namely, wood screws, wire hooks, bolts, cotter pins, hinges, butts, cabinet hardware, pulls and knobs, coat and hat hooks, shelf brackets, hasps, window hardware, door hardware, corner braces, barrel bolts, mail boxes, door closers, locks, locksets, padlocks, wheel casters, flashlights and lanterns and batteries.
(5) Fishing tackle and tool boxes, hunting and pocket knives, cutlery.
(6) Carpenter or mechanics hand tools and accessories namely, leather punches, drill bits, expansive bits, sledges, axes, bow saws, hand saws, circular saw blades, hole saws, circle cutters, dust goggles, masks and filters, nail pullers, picks and pick mattocks and splitting mauls.
(7) Automotive hand tools namely, voltage tester 6-12V, tire gauge, tire pump and grease guns and accessories; electricians hand tools and accessories namely, wire strippers, wire crimpers, circuit testers and PVC tape; carpenter or mechanics hand tools and accessories namely, pry bars, chisels, nut drivers, planes, shapers, screw extractors, calipers and dividers and scribers, rivet tools and kits, keyhole saws, pruning saws, veneer saws, back saws, coping saws, dovetail saws, quick repair chain links and storage hooks.
(8) Carpenter or mechanics hand tools and accessories namely, bolt cutters, hex key wrenches, bit braces, awls, carpenter pencils and snaps.
(9) Carpenter or mechanics hand tools and accessories namely, caulking guns, hand sprayers, tool pouches, chalk lines and tarp straps.
In response to the notice, the affidavit of Harold Tiemstra together with exhibits has been furnished. Each party filed a written argument. An oral hearing has not been requested in this case.
In his affidavit Mr. Tiemstra states that the registrant has granted to Can-Cell Industries Inc. a license to use the trade-mark in relation to the sale of wares manufactured and marketed to the specifications of the registrant and as Exhibit A he attaches a copy of the license agreement. He explains that the trade-mark is clearly marked on the wares themselves or on the packages in which they are distributed at the time of sale and transfer. He indicates that the trade-mark was used during the relevant period and before in association with the registered wares listed in his affidavit. He clearly concedes that it was not in use with the wares listed in categories (2), (3) and (5) in the trade-mark registration.
He provides photographs of wares bearing the trade-mark, brochures and catalogues showing the trade-mark on wares offered for sale, as well as copies of invoices and sales slips.
The requesting party has raised several arguments concerning the evidence furnished.
In my view, the main argument raised by the requesting party is that use has not been shown in association with each of the registered wares during the relevant period.
Concerning use by the licensee, such use appears to meet the requirements of Section 50(1) of the Trade-marks Act. In his affidavit, Mr. Tiemstra has stated that the wares are sold and marketed to the specifications of the registered owner and from the license agreement, particularly from the statements made under the headings “Licensor Obligations” and “Licensee Obligations”, I am of the view that it can be concluded that the registrant has under the licence control of the character and quality of the wares.
Concerning whether the sales were sales made in the normal course of trade, I find there is no basis for concluding otherwise. Several invoices bear dates within the relevant period and show sales by the licensee to businesses such as WASA Building Supplies Ltd; Federated Cooperatives Limited, Truelove Building Supplies, Saddle Lake Lumber Yard. The catalogues and brochures show wares being advertised and available for sale. The name of the licensee appears therein and it can be seen that the trade-mark clearly appears on various wares or on their packaging.
The issue, in my view, is whether use of the trade-mark has been shown in association with each of the registered wares during the relevant period. Although direct evidence or documentary proof is not required to be furnished with respect to each of the wares, there must at least be a clear statement in the affidavit that sales of each of the wares bearing the trade-mark occurred during the relevant period. In the present case, Mr. Tiemstra has failed to provide such a clear statement with respect to each of the wares. However, in his affidavit he has enumerated several wares and he has provided photographs of wares bearing the trade-mark as well as brochures and catalogues showing several wares bearing the trade-mark, and invoices and sales slips evidencing sales of some items. The photographs show the following wares namely hammers, hatchet, circular blade saw, carpenter tools, pry bar and pullers, safety goggles, paint brushes, paint rollers, paint tray (not covered by the registration), screw drivers, screw bits (not covered by the registration), hex wrench set, wood veneer and closet rods (both items not covered by the registration), tube and pipe cutter, nail set, tin snips (shears), drill bit sets, expansive bits, vice, pipe wrenches, F-clamp, plyers, claw pick tool (not covered by the registration), sharpening stone, snap ring set (not covered by the registration), wire stripper, hand riveter, circle hole cutter, ratchet tie down (not covered by the registration), aviation snips (not covered by the registration) and fencing pliers (pliers).
The brochures refer to hand tools and garden tools under the trade-mark FORESTER and the trade-mark SVEGO. Several of the items in the photographs are referred to in the brochures. In addition, the following items covered by the registration also appear in association with the trade-mark FORESTER: saws, bolt cutters, hack saws, wrecking bars, measuring tapes, crimping tool, rakes, hoes, cultivators turf edgers, hedge shears, pruning shears, picks and pick mattocks, shovels and forks.
As Mr. Tiemstra has stated in paragraph 4 of his affidavit that the registrant has used the trade-mark in association with the wares listed in his affidavit during the relevant period, then I am prepared to accept that those wares associated with the trade-mark were sold or were available for sale during the relevant period.
The invoices furnished show sales during and subsequent to the relevant period. Although invoices have not been furnished for each of the above-mentioned items, the Act does not require that invoices be furnished for each ware. Further, as stated in the case Union Electric Supply Co. Ltd. v. RTM, 63 C.P.R. (2d) 56, evidentiary overkill is not required in a Section 45 proceeding. In my view, from the evidence as a whole, it can be concluded that the trade-mark was being used in Canada during the relevant period in association with the above listed items appearing either in the photographs, the brochures or the invoices.
In its written argument, the agent for the registrant argues that the invoices also show sales of caulking guns, wall and wood scrapers, shelf brackets and PVC duct tape. However, although I agree that these wares appear on the invoices, nowhere in the affidavit or on the invoices is it indicated that these were sold in association with the trade-mark FORESTER. As the registrant also appears to sell wares under the trade-mark SVEGO, I am of the view that without a clear indication in the affidavit or on the invoices that the items “caulking guns, wall and wood scrapers, shelf brackets and PVC duct tape” bore the trade-mark FORESTER, I am not prepared to infer that they were associated with the present trade-mark.
In view of the above, I conclude that the evidence furnished is sufficient to permit me to conclude that the trade-mark was in use in Canada within the meaning of Section 4(1) and was in use during the relevant period in association with the following wares listed in the registration:
(1) Tools used in connection with logging operations and including saws, saw blades, hatchets and carpenter tools.
(4) Hardware and tools namely, mechanic tools, namely pliers, cutters, wrenches, tinners’ shears, tube and pipe cutters, gear pullers, socket wrenches, nail sets, screwdrivers, drill points, measuring tapes, hammers, wrecking bars, hack saws, shovel and forks, vises, clamps, paint brushes and paint rollers, sharpening stones, garden tools namely rakes, hoes, cultivators, turf edgers, hedge shears and pruning shears.
(6) Carpenter or mechanics hand tools and accessories namely, drill bits, expansive bits, circular saw blades, circle cutters, dust goggles, nail pullers, picks and pick mattocks.
(7) Electricians hand tools and accessories namely, wire strippers, wire crimpers; carpenter or mechanics hand tools and accessories namely pry bars, rivet tools and kits.
(8) Carpenter or mechanics hand tools and accessories namely, bolt cutters and hex key wrenches.
Accordingly, I conclude that the trade-mark registration ought to be amended to only cover these wares.
Registration No. UCA09357 will be amended accordingly in compliance with the provisions of Section 45(5) of the Act.
DATED AT HULL, QUEBEC, THIS 31st DAY OF MAY 2001.
D Savard
Senior Hearing Officer
Section 45 Division