Trademark Opposition Board Decisions

Citation: 2010 TMOB 24

 

 

SECTION 45 PROCEEDINGS

TRADE-MARK: GLOBALCELL

REGISTRATION NO.: TMA616,343

 

 

[1]   At the request of Global Cell Communications Inc. (the “requesting party”), the Registrar forwarded a notice under section 45 of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”) on April 24, 2008 to Michael Reynolds (“Mr. Reynolds” or “the registrant”), the registered owner of the above-referenced trade-mark registration.

 

[2]   The trade-mark GLOBALCELL is registered for use in association with the following wares and services:

 

Wares:

Prepaid cellular telephone calling cards, prepaid telephone calling cards and receipts issued as evidence of entitlement to prepaid telecommunication services in connection with loyalty programs and affinity programs, flyers, pamphlets, product packaging, posters, brochures, booklets.

 

Services:

Provision of consumer telecommunication services namely prepaid long distance and local cellular telephone services, prepaid long distance and local telephone services.

 

 

[3]   Section 45 of the Act requires the registered owner to show whether the trade-mark has been used in Canada in association with each of the wares and/or 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 April 24, 2005 and April 24, 2008 (the “relevant period”).

 

[4]   “Use” in association with wares and services is set out in section 4 of the Act:

 

In this case, sections 4(1) and 4(2) apply.

 

[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 marks from the register which are not bona fide claimed by their owners as active and as such, the evidentiary threshold that the registrant must meet for establishing use is quite low.  Mr. Justice Russell, after reviewing the pertinent jurisprudence on s. 45 proceedings stated the following in Performance Apparel Corp. v. Uvex Toko Canada Ltd.  (2004), 31 C.P.R. (4^th) 270 (F.C.):

 

So what guidance can be gleaned from these authorities and statements of basic principle that can be applied in the present case? 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 filed his own affidavit, sworn on July 24, 2008, together with Exhibits A, B and C.  Both parties filed written submissions; an oral hearing was not requested.

 

[7]   In his affidavit, Mr. Reynolds states that by virtue of his position as president of Millennium Global Telecom Inc. (“Millennium”), he has knowledge of the matters set out in the affidavit.

 

[8]   Mr. Reynolds states that he licenses use of the trade-mark to Millennium, and that it has been used on prepaid telephone calling cards and product packaging (Exhibit A); posters advertising the services of prepaid long distance and local cellular telephone services and prepaid long distance and local telephone services (Exhibit B); and brochures advertising the prepaid long distance calling services (Exhibit C).

 

[9]   The trade-mark shown to be in use on the sample phone card, packaging, posters and brochures is as follows:

 

                  

 

[10]           Millennium’s use of the trade-mark GLOBALCELL is as part of a design containing the term GLOBALCELL in stylized font with the letter “O” replaced by a design, with additional text near the word mark and a stylized arc design surrounding it. The use of a trade-mark in combination with additional words or features constitutes use of the trade-mark per se if the public, as a matter of first impression, would perceive the trade-mark per se as being used as a trade-mark. This is a question that depends on whether the mark stands out from the additional material (e.g. by means of different lettering or sizing) or whether the additional material would be perceived as purely descriptive or as a separate trade-mark or trade-name [Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 (T.M. Bd.); Brick Warehouse Corp. v. North West Co. (2008), 68 C.P.R. (4th) 69 (T.M. Bd.)].

 

[11]           I consider that Millennium’s use constitutes use of the trade-mark as registered. The additional text is different in size, and in light of the promotional and descriptive function of the additional words, I do not believe that the public would perceive the additional wording “introducing” and “prepaid long distance service card” as forming part of the trade-mark per se. Moreover, although the design that replaces the letter “O” in GLOBALCELL as used by Millennium also appears in various other contexts in the exhibits as a separate trade-mark, the law is clear that there is nothing to prevent two trade-marks being used at the same time [A.W. Allen Ltd. v. Warner-Lambert Canada Inc. (1985), 6 C.P.R. (3d) 270 (F.C.T.D.)]. Therefore, as I find that the trade-mark GLOBALLCELL stands out and would create a separate impression in the minds of the public, I am satisfied that the use shown constitutes use of the registered trade-mark.

 

[12]           I now must determine whether Millennium’s use of the trade-mark inures to the registrant pursuant to section 50 of the Act.

 

[13]           The registrant claims that, as he has licensed the trade-mark to Millennium, Millennium’s use of the trade-mark accrues to his benefit pursuant to section 50 of the Act. The requesting party argues that the registrant has not provided sufficient evidence of licensing to rely on section 50.

 

[14]           In order to maintain a registration used by a licensee, section 50(1) of the Act requires that the trade-mark owner have direct or indirect control of the character or quality of the wares or services that are subject to the licence. The requesting party argued that the registrant did not maintain such control, claiming that the facts of this case mirror those of Weir Foulds LLP v. Pro-Health Inc. (2007), 64 C.P.R. (4^th) 426 (T.M. Bd.), in which sufficient control by the owner was not found. However, while it is not clear from the facts of Weir Foulds what the relationship was between the registrant and the licensee, in the present case, Mr. Reynolds is the President of the licensee, which is a significant difference in light of the prevailing jurisprudence on section 50(1).

                                                                                                 

[15]           The Federal Court in Petro-Canada c. 2946661 Canada Inc. (1998), 83 C.P.R. (3d) 129, determined that the control required for section 50(1) can be inferred from the evidence, and held that in the case before it, sufficient control was present, because the person in charge and in control of the trade-mark owner was also in charge and control of the licensed user. This reasoning was followed in Automobility  Distribution Inc. v. Jiangsu Electronics Industries Ltd. (2005), 43 C.P.R. (4^th) 157 (T.M.O.B.), where Senior Hearing Officer Savard stated at paragraph 14:

 

The case law has established that if the president or director [Lindy v. Canada (Registrar of Trade Marks) (1999), 241 N.R. 362 (Fed. C.A.) and Petro-Canada c. 2946661 Canada Inc. (1998), 83 C.P.R. (3d) 129 (Fed. T.D.)] or officer [Phillips, Friedman, Kotler v. Freed’s of Morden Ltd., 2000 CarswellNat 4003 (T.M. Bd.)] of a corporate owner is also the president or a director or officer of the user of the trade-mark such may satisfy the requirements of Section 50 of the Act.

 

[16]           In Lindy v. Canada (Registrar of Trade Marks); 1999 CarswellNat 652, the Federal Court of Appeal made an inference that because the owner of the trade-mark was also the president and major shareholder of the company using it, the company used the trade-mark under an oral licence or under an arrangement that was tantamount to an oral licence, and the trade-mark remained under the direct or indirect control of the owner of mark.

 

[17]           In the present case, because the trade-mark owner is the president of the licensee, following the reasoning of Lindy and Petro-Canada [see also Brett v. Sun Valley Foods Inc. (2005), 44 C.P.R. (4^th) 462 (T.M. Bd.)], I am prepared to infer that Millennium’s use of the trade-mark was under Mr. Reynolds' control. As a result, Millennium’s use of the trade-mark would accrue to the registrant’s benefit pursuant to section 50 of the Act.

 

[18]           The next issue is whether use has been shown in respect of each of the registered wares and services during the relevant period.

 

Services

[19]           From the evidence, I am able to conclude that the registrant, through its licensee, provides prepaid long distance and local cellular and telephone services and that the trade-mark is used in association with these services. The evidence shows that the trade-mark is displayed on the phone cards (Exhibit A) that are used by consumers to place local and long-distance calls using their cellular or home telephone services, and that the trade-mark is also used when the services are being advertised (Exhibits B and C) in stores where the phone cards are sold (Affidavit, para. 6). Mr. Reynolds specifically states in paragraph 4 that the posters (Exhibit B) and brochures (Exhibit C) advertise “the services of prepaid long distance and local cellular telephone services and prepaid long distance and local telephone services” and “prepaid long distance calling services” respectively.

 

[20]           I am satisfied that the services were performed during the relevant period, because Mr. Reynolds provides detailed information regarding the number of phone calls made by consumers using GLOBALCELL phone cards from 2005 to July 2008. I am also willing to infer that the registrant’s services are offered and performed in Canada, as the sample phone card bearing the trade-mark displayed in Exhibit A includes the words “From Canada” followed by a list of local access numbers in various Canadian cities; furthermore, the sample posters and brochures appear to promote that Millennium is a Canadian Radio Television and Telecommunications Commission (CRTC) licensed company. 

 

[21]           Accordingly, I am satisfied that the evidence shows use of the trade-mark in association with “prepaid long distance and local cellular telephone services” and “prepaid long distance and local telephone services” in a manner complying with the requirements of section 4(2) of the Act, and that such use took place during the relevant period.   

 

Wares

Prepaid cellular and telephone calling cards

[22]           Mr. Reynolds explains that Millennium sales people sell the phone cards to stores or distributors, who in turn sell them to end customers. He states that in 2005, 1,914 phone cards were sold to stores/distributors; 3,224 phone cards were sold to stores in 2006; 2,435 phone cards were sold to stores/distributors in 2007; and 691 phone cards were sold to stores by June 30, 2008.

 

[23]           Although he did not provide any invoices to substantiate these sales, his clear statements that they took place and provision of sales figures are sufficient proof of sales for section 45 purposes [see Lewis Thomson & Son Ltd. v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (F.C.T.D.) at 486]. I am also willing to infer that the sales took place in Canada, as the sample phone card displaying the trade-mark in Exhibit A includes the words “From Canada” followed by a list of local access numbers in various Canadian cities. As such, I find that Millennium sold phone cards bearing the trade-mark in Canada during the relevant period, which shows use of the trade-mark under section 4(1) by Millennium (a licensee of the registrant), in association with phone cards in the normal course of trade.

 

[24]           I also find that the use of the trade-mark was in association with both prepaid cellular telephone calling cards and prepaid telephone calling cards. The sample phone card provided in Exhibit A to Mr. Reynolds’ affidavit clearly indicates that it is a prepaid long distance service card, and provides instructions for use with home or cellular phone numbers, as users are specifically notified that upon entering a home or cellular number, that number becomes their account number. This satisfactorily demonstrates that the cards were used as both prepaid cellular and prepaid regular telephone calling cards.

 

Product packaging

[25]           In his affidavit, Mr. Reynolds identifies Exhibit A as a “prepaid telephone calling card and product packaging”. However, having regard to the specimen provided in Exhibit A, it would appear that this reference relates to a single product rather than to two separate products. In the absence of evidence to the contrary, I am unable to find that the packaging was sold separately and as such, the wares “product packaging” ought to be deleted from the registration.

 

Posters, flyers and brochures

[26]           With respect to the wares “posters” and “flyers”, Mr. Reynolds states that “[e]ach store was given at least one Globalcell poster and flyer to display instore”. While it is clear that the trade-mark appears on the posters, in the absence of evidence of commercial activity regarding the poster and flyer itself, I am unable to conclude that it is anything other than promotional material for the services, which does not constitute use within the meaning of section 4(1) on its own. By the same reasoning, I am unable to find that there has been use of the trade-mark with “brochures”.

 

[27]           Lastly, the evidence fails to show any use of the trade-mark with the wares “receipts issued as evidence of entitlement to prepaid telecommunication services in connection with loyalty programs and affinity programs”, “pamphlets” or “booklets”. Because the registrant has not advanced special circumstances that would excuse the absence of use of the trade-mark with these wares, these wares ought to be deleted from the trade-mark registration in accordance with section 45(3) of the Act.

 

[28]           In view of all of the above, I find that the registrant’s evidence demonstrates that there was use of the trade-mark within the meaning of sections 45 and 4 in association with the wares “prepaid cellular telephone calling cards and prepaid telephone calling cards” and the services “provision of consumer telecommunication services namely prepaid long distance and local cellular telephone services, prepaid long distance and local telephone services”.

 

[29]           Accordingly, and pursuant to the authority delegated to me under section 63(3) of the Act, registration no. TMA616,343 for the trade-mark GLOBALCELL will be maintained in respect of “prepaid cellular telephone calling cards” and “prepaid telephone calling cards” and “provision of consumer telecommunication services namely prepaid long distance and local cellular telephone services, prepaid long distance and local telephone services”, and amended to delete:

 

Wares:

[…] and receipts issued as evidence of entitlement to prepaid telecommunication services in connection with loyalty programs and affinity programs, flyers, pamphlets, product packaging, posters, brochures, booklets.

 

 in compliance with the provisions of section 45(5) of the Trade-marks Act, R.S.C. 1985, c. T-13.

 

DATED AT GATINEAU, QUEBEC THIS 26th DAY OF FEBRUARY 2010.

 

 

 

P. Heidi Sprung

Member, Trade-marks Opposition Board