SECTION 45 PROCEEDINGS
TRADE-MARK: PARALLEL
REGISTRATION NO.: 559460
On May 25, 2005 at the request of Interkommerz Handels AG (the “requesting party”), the Registrar forwarded a section 45 notice to AZ3, Inc. the registered owner of the trade-mark PARALLEL (the “Mark”) at that time.
The Mark is registered for use in association with the following wares: clothing, namely dresses, skirts, shirts, blazers, jackets, pants, trousers, sweaters, tops, coats, jumpsuits and shorts; fashion accessories, namely eyeglasses, sunglasses, jewellery and watches, belts and bags, namely athletic bags, gym bags, purses, handbags, luggage, shoulder bags, and pocket books; shoes, namely casual shoes, evening shoes and formal shoes; women's clothing, namely dresses, skirts, blouses, pants and sweaters (the “Wares”) and in association with retail services in the clothing, fashion accessories, and footwear industries (the “Services”).
In response to the notice, the affidavit of Stacey Claflin together with exhibits A to F has been furnished. None of the parties filed written submissions nor an oral hearing was requested.
Section 45 of the Trade-marks Act, R.S.C. 1985, c. T-13 (the “Act”), requires the registered owner of the trade-mark to show whether it 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. The relevant period in this case is any time between May 25, 2002 and May 25, 2005 (the “relevant period”).
Ms. Claflin described herself as a paralegal employed since 1999 by BCBG MAX Azria Group Inc. (“BCBG”) formally AZ3, Inc. On March 1st, 2005 AZ3, Inc. changed its name to BCBG. Such change of name had not yet been recorded at the Canadian Intellectual Property Office when she executed her affidavit (January 23, 2006).
She provides some background information on the chain of title of ownership of the Mark. On December 1st, 2004 AZ3, Inc. assigned the Mark to MLA Mutibrands Holdings Inc. (“MLA”) She filed a copy of such assignment that had not been recorded on the register at the time of execution of her affidavit. Since then, MLA has been recorded as the registrant of the Mark. Her evidence relates to the use of the Mark in Canada by BCBG during the period of May 25, 2002 and April 2003 (the “pertinent period”), which is during the relevant period.
She states that the Mark has been used by BCBG in Canada during the pertinent period in association with: dresses, skirts, shirts, blazers, jackets, pants, trousers, sweaters, tops, coats, jumpsuits and shorts (the “branded wares”). I note that there is no allegation in her affidavit of use of the Mark in association with: fashion accessories, namely eyeglasses, sunglasses, jewellery and watches, belts and bags, namely athletic bags, gym bags, purses, handbags, luggage, shoulder bags, and pocket books; shoes, namely casual shoes, evening shoes and formal shoes; blouses (the “excluded wares”). There is also no reference to the use of the Mark in association with the Services. No explanation has been provided as for the non-use of the Mark in association with the excluded wares and the Services during the relevant period. The certificate of registration TMA559460 shall be amended accordingly.
Ms. Claflin explains that during the pertinent period BCBG’s licensees manufactured the branded wares in accordance with BCBG’s strict specifications such that it had direct or indirect control over the character and quality of those wares. Those licensees would ship the branded wares to BCBG who would then in turn sold and shipped them to buyers. In Canada they were sold to BCBG Max Azria Canada Inc. who sold those wares to end consumers through a store located in Montreal, Quebec.
She filed the following documentation and physical exhibits to support her allegation of use of the Mark during the pertinent period by BCBG in association with the branded wares:
Historical sales reports that include the invoice number and the corresponding packing list;
Hand tags and labels;
Plastic bags.
The historical sales reports refer to three invoices issued by BCBG, during the pertinent period, to BCBG Max Azria Canada Inc. They cover the sale of pants, trousers, blazers, shirts, dresses, tops, skirts, jackets and sweaters. There is no reference to coats, jumpsuits and shorts. Consequently, the certificate of registration TMA559460 shall also be amended accordingly.
Ms. Claflin alleges that the branded wares sold in Canada bore a label and a hangtag on which appear the Mark as illustrated by samples of those labels and hangtags. She states that the branded wares sold in Canada bearing the Mark were packaged in plastic bags on which appear the Mark. She finally concludes her affidavit by alleging sales figures of the branded wares of approximately $50,000 US in Canada during the pertinent period.
Section 45 proceedings are simple and expeditious that serves the purpose of clearing the register of “deadwood” and as such the threshold test is quite low. [See Smith Lyons v. Vertag Investments Ltd. (2000), 7 C.P.R. (4th) 557] From the evidence described above, I conclude that the registrant, now MLA, has satisfied its evidential burden under s. 45 of the Act to prove use of the Mark in Canada during the relevant period in association with pants, trousers, blazers, shirts, dresses, tops, skirts, jackets and sweaters.
Conclusion
Therefore the registration ought to be amended so that the statement of wares will read: “(1) clothing namely dresses, skirts, shirts, blazers, jackets, pants, trousers, sweaters and tops, ” and “(4) women’s clothing namely dresses, skirts, pants and sweaters”, while reference to the other wares and to the retail services in the clothing, fashion accessories and footwear industries shall be deleted, the whole in accordance with the provisions of s. 45(4) of the Act.
Registration number TMA559460 will be amended accordingly in compliance with the provisions of s. 45(5) of the Act.
DATED IN MONTREAL, QUEBEC, THIS 10th DAY OF DECEMBER 2007
Jean Carrière
Member
Trade-marks Opposition Board