Section 45 Proceedings
Trade-mark: Tag Heuer & dESIGN
Registration No: TMA 443,848
At the request of 88766 Canada Inc., (“requesting party”) the Registrar forwarded a notice under section 45 of the Trade-marks Act on December 9, 2004 to Tag-Heuer S.A. the registered owner of the above referenced trade-mark (“the registrant”), in respect of “articles of clothing, namely, t-shirts, sport caps and visors; sport bags, bags”. These items do not represent the entirety of the registrant’s statement of wares and are the only wares that will be considered in these proceedings (the “relevant wares”).
Registration No: TMA 443,848
The registrant is required to show use of the subject trade-mark within the meaning of section 45 and 4(1) of the Trade-marks Act, R.S.C. 1985, c. T-13 in respect of the aforementioned wares (the “relevant wares”).
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 the trade-mark has been used in Canada in association with each of the relevant wares 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 9, 2001 and December 9, 2004.
Use in association with wares is set out in subsection 4(1) of the Act:
A trade-mark is deemed to have been 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.
In response to the Registrar’s notice, the registrant furnished a single affidavit sworn by two of its officers, Jean Mounier, Senior Manager of Accounting Consolidation & Reporting, and Patrick Grossen, Controlling Director. Both the requesting party and the registrant filed written submissions; neither party requested an oral hearing.
The requesting party argues that an affidavit sworn by two people is not admissible, as it is difficult to determine which affiant has knowledge of which facts in the affidavit. I note the Registrant’s explanation that the legal organization of the company under Swiss law, demands corporate documents to be signed by two persons. Although I fail to see, without further explanation, how this corporate requirement relates to evidence of individuals given by way of affidavit, I am nonetheless prepared to accept that both affiants have the same knowledge and are presenting exactly the same facts and therefore that nothing prevents the inference that all statements in the affidavit are the sworn statements of each of the parties.
Attached as Exhibit A to the affidavit are invoices that, as stated in Paragraph 3, relate to sales of “clothing articles” in Canada in 2002, 2003, and 2004. The requesting party pointed out, and I agree, that Paragraph 3 makes no assertion of use of the subject mark on “sport bags”, and/or “bags”. Exhibit A contains four invoices addressed to the same company in Canada. Each invoice bears a date within the relevant period. The invoices relate to: (a) “black caps” (May 29, 2002), (b) “LCD Flashcard For Gold Canvas”, “Watchholders”, “Bandeau” (September 18, 2002), (c) “colored pins”, “trainee folder corporate”, “gloves large size”, “gloves small size” (February 19, 2003), and (d) “gloves large size”, “gloves small size” (July 9 2004). Other than “black caps” none of the wares listed in the invoices are even arguably within the “relevant wares” of the subject registration.
As well, attached to three of the invoices in Exhibit A, is what appears to be summary list of products invoiced and delivered in 2002, 2003 and 2004. The relevance of these lists is unclear since they are not described or even referred to in the affidavit. Furthermore, there appear to be no references in the lists to any items within the “relevant wares” save for “black caps”. In any event, there is no indication, on the lists, or in the affidavit, that any of the products listed were sold in Canada within the meaning of section 4(1) of the Act.
Exhibit B consists of graphic representations of items of clothing, such as T-shirts, golf shirts, long sleeved shirts and sweaters, baseball caps and visors, as well as bags and portfolios or wallets. Each of the items is labelled with the subject trade-mark, and the affidavit states in paragraph 6, “…enclosed in support of this affidavit are copies of tags and labels as they are being used in association with sales of articles of clothing, filed as Exhibit B…”.I note that the affidavit does not state that the articles of clothing were so marked during the relevant period, and that the wares so marked were sold in Canada. While Exhibit B does contain images of the “relevant wares” marked with the subject mark, since none of these appear in any of the invoices in Exhibit A, except for arguably, “black caps”, I am unable to infer that any of the other “relevant wares” depicted in Exhibit B were sold in Canada in the normal course of trade during the relevant period.
The registrant is required to “show” use of the trade-mark on each of the wares set out in the statement of wares – a mere statement asserting use is not sufficient to comply with the requirements of section 45 of the Trade-marks Act, (Plough Canada Ltd. v. Aerosol Fillers Inc., 45 C.P.R. (2d) at 194 (FCTD) and 53 C.P.R. (2d) at 62 (FCA); John Labatt Ltd. v. Rainier Brewing Co., 80 C.P.R. (2d) at 228 (FCA)).
Having said that, evidentiary overkill is not required – all the registrant has to do is establish a prima facie case that there has been some use within the relevant period. In this case there is an invoice dated within the relevant period, showing sales of 45 black caps to a Canadian company. The affidavit states that all items in the invoices were marked with the subject trade-mark TAG HEUER & Design. It remains to be determined whether use of the subject trade-mark on “black caps” constitutes use of the mark on “sport caps” as set out in the relevant wares. In this regard the requesting party argued that “caps” could include a variety of headwear; the registrant however, submitted that the invoices in Exhibit A should be taken together with the images in Exhibit B, such that the inference can be made that the “black caps” in the invoices are the black baseball caps depicted in Exhibit B. I have considered this argument and am prepared to infer, when considering the affidavit as a whole, that the “black caps” in the invoices is a reference to the black baseball caps depicted in the Exhibit B. Since baseball caps are clearly sport caps, I consider that use of the subject trade-mark on “black caps” is use of the subject mark on “sport caps”.
In view of all of the foregoing, and as the affidavit does not set out any special circumstances that would excuse the non-use of the subject mark on the remaining “relevant wares” it is my conclusion that the registration TMA No: 443,848 for the trade-mark TAG HEUER & Design ought to be amended to delete “articles of clothing, namely, t-shirts, visors; sport bags, bags” pursuant to section 45 of the Trade-marks Act R.S.C. 1985, c. T-13. “Sport caps” will remain in the registration pursuant to section 45 of the Trade-marks Ac. R.S.C. 1985, c. T-13.
DATED AT GATINEAU, QUEBEC, THIS 20TH DAY OF DECEMBER 2006.
P. Heidi Sprung
Member, Trade-marks Opposition Board