SECTION 45 PROCEEDINGS

TRADE-MARK:  TAB DESIGN

REGISTRATION NO.:  298,261

On November 29, 2002 at the request of Aird & Berlis LLP, the Registrar forwarded a Section 45 notice to Levi Strauss & Co., the registered owner of the above-referenced trade-mark registration.

The trade-mark TAB Design (shown below) is registered for use in association with the following wares:

(1)  wallets and purses

(2)  hats and caps

(3)  carrying bags.

“The trade mark is a TAB comprising a folded ribbon of textile material or the like appearing on and permanently affixed to the exterior of an article, the trade mark being applied to the goods by stitching the edges of the TAB into a structural seam of the article so that the stitching of said seam secures one end of the TAB to the article with the folded edge thereof extending visibly from the seam.”

Section 45 of the Trade-marks 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.  The relevant period in this case is any time between November 29, 1999 and November 29, 2002.

In response to the notice, the affidavit of Ellen Baker together with exhibits has been furnished.  Each party has filed a written argument and was represented at the oral hearing.

Concerning the evidence furnished the requesting party submits that it:

(a) does not show any use that accrues to the registrant.

(b) contains bald assertions.

(c) fails to show use of the trade-mark in the normal course of trade in association with the wares.

(d) demonstrates that there is a difference in the mark as registered and the trade-mark as used.

I will address each of the above-mentioned issues. 

(a) Use does not accrue to the registrant.

The requesting party submits that the Baker affidavit is prepared on behalf of an employee of a company related to the registered owner and deposes that the registered owner has licensed the use of the trade-mark and controls the character and quality of the wares produced by the different licensees.  The requesting party argues that as Ms. Baker is an employee of Levi Strauss & Co. (Canada) Inc. and not of the registered owner the evidence fails to show use by the registrant or use that accrues to the registrant. Further, concerning the use by the different licensees, it argues that there is insufficient evidence to satisfy the requirements set out in Section 50 of the Act, for the use to accrue to the registrant.

Concerning the affiant Ellen Baker, as she is responsible for the trade-mark matters of LSC including coordinating registration and enforcement of the trade-marks of LSC and of the registered owner in Canada which includes the responsibility to provide evidence relating to use of the trade-marks of her company and of the registered owner in Canada, and as she has sworn that her evidence is based on personal knowledge, corporate records where necessary and corporate knowledge which she has gained through her employment, I find it can be concluded that Ms. Baker is in a position to have knowledge of the use of the trade-mark by the registrant’s licensees. Concerning the use by the “licensees”, as she has sworn that the use is under license by the registered owner and that the owner controls the character and quality of the wares, I conclude that for purposes of Section 45, this is sufficient to satisfy the requirements of Section 50(1) of the Trade-marks Act (see Fitzsimmons, MacFarlane v. Caitlin Financial Corp. N.V., 79 C.P.R. (3d) 154 at page 157 and Sim & McBurney v. Lesage Inc., 67 C.P.R. (3d) 571).  Accordingly, I conclude that the use by the licensees is use that accrues to the registrant .

(b) Bald assertions in the affidavit furnished, (c) Failure to show use of the trade-mark in the normal course of trade in association with each of the wares and (d) Difference in the mark as registered and the trade-mark as used;

Having considered the Baker affidavit, I conclude that it contains more than bald assertions, it contains assertions of facts showing use (see Mantha & Associates v. Central Transport Inc., 64 C.P.R. (3d) 354) .

Ms. Baker has clearly described the normal course of trade for each of the wares, that is the wares are manufactured by the “licensees” and are sold in Canada by such “licensees” to retailers in Canada.  Ms. Baker has explained the manner the trade-mark is affixed to the wares at the time of the sale and she has provided representative invoices showing sales of the wares to retailers in Canada.

Concerning the wares “wallets”, Ms. Baker has indicated that the TAB Design trade-mark is attached to the wallets sold in Canada and as Exhibit E she has provided a photocopy of a relevant page from a 2000 catalogue distributed by the licensee to its customers.  The wallet bearing the TAB Design trade-mark is shown under style number LS 1193.  Representative invoices showing sales of such wallet are attached as Exhibit F.

The requesting party has submitted that the display of the trade-mark in the catalogue does not create an association between the trade-mark and the wares at the time of transfer. However, here we have more than the display in the catalogue, we have Ms. Baker’s statement that at the time of transfer of the wares the trade-mark appears on the wares in the manner described in her affidavit as shown in the catalogue. As for sales of “wallets” during the relevant period, Ms. Bakers has provided invoices showing sales of wallets bearing style number LS1193, which style number corresponds to the one shown in the catalogue and which wallet bears the trade-mark.

The requesting party also argued that the trade-mark shown on the wallets does not conform with the description of the trade-mark as it appears on the registration page because the edges of the TAB are not stitched into a structural seam of the wallet.  I find it unclear from the catalogue (Exhibit E) if the TAB is sewn into a structural seam.  However if it is not, I am of the view that the mark as registered and the mark as used do not differ in a substantial manner.  Consequently, I conclude that the differences between the trade-mark as registered and as used are minor and unimportant and that no one would be misled by the minor change.

Accordingly, I conclude that use of the trade-mark in association with “wallets” has been shown to have occurred during the relevant period.

Concerning “purses and carrying bags” Ms. Baker has clearly indicated that the TAB Design trade-mark is marked on such wares by affixing a folded ribbon of textile material into a structural seam of the purse or bag.  Exhibits G through M show representative bags and purses bearing the style numbers 3001, 3009, 3029, 3038, 3039, 3084 and 3092 respectively.  All of the bags and purses show the registered trade-mark.  As Exhibit N she has provided photocopies of representative invoices establishing the sale of purses and carrying bags bearing the style numbers identified in her affidavit which wares would have born the registered trade-mark in the manner shown by Exhibits G through M. 

Having regard to the above, I conclude that the evidence is sufficient to permit me to conclude that the registered trade-mark was in use in association with “purses” and “carrying bags” during the relevant period.

Concerning the wares “hats and caps”, Ms. Baker has clearly described and shown (Exhibits B and C) the manner the trade-mark is affixed to these wares at the time of sale and as Exhibit D she has attached representative invoices establishing the sale of hats and caps in association with the trade-mark.  Further, she has identified the caps bear style numbers L7010, L7023 and L70235 and the hats bear style number L0102.

Again I am satisfied that the invoices refer to these style numbers and therefore I accept that sales of hats and caps bearing the trade-mark in the manner shown by Exhibits B and C have occurred during the relevant period.

Concerning the “caps”, the requesting party has argued that the trade-mark does not appear on the exterior of the article, and therefore does not conform with the description of the trade-mark as found on the registration page.  However, as pointed out by the registrant the trade-mark as used does not differ perceptively from the trade-mark as registered even though it does not meet the strict wording of the description found in the registration. Although the tab is not affixed to the exterior of the article, it still can been seen as protruding from the article.  In my view, the public would perceive the registered trade-mark as being used and therefore I conclude that the trade-mark shown to be in use constitutes use of the registered trade-mark. 

Consequently, I conclude that the use of the trade-mark shown in association with “caps” constitutes use of the registered trade-mark.

As I have concluded that the evidence shows use of the trade-mark in association with each of the wares in the manner required by the Trade-marks Act, I conclude that the trade-mark registration ought to be maintained.

Registration No. 298,261 will be maintained in compliance with the provisions of Section 45(5) of the Act.

DATED AT GATINEAU, QUEBEC, THIS 30TH DAY OF JUNE 2005.

D.  Savard

Senior Hearing Officer

Section 45 Division