IN THE MATTER
OF A SECTION 45 PROCEEDING
respecting registration No. TMA 380,243 for the
trade-mark ONE STEP UP standing in the name of One
Step Up, Inc.
On May 16, 1995, at the request of Messrs. Marcus and
Associates, the Registrar forwarded a Section 45 Notice to One Step
Up, Inc., the registered owner of the above referenced trade-mark
registration No. TMA 380,243.
The trade-mark ONE STEP UP is
registered for us~ in association with the following wares: "(1)
Ladies' tops, sweaters, pants, shirts and shorts".
o
In response to the Section 45 notice, the registrant furnished
the affidavit of Harry Adjmi, President of One Step Up, Inc.
Neither the registrant nor the requesting party made written
submissions.
An oral hearing was conducted at which only the
requesting party attended.
Prior to January 1, 1996, Section 45 of the Trade-Marks Act
R.S.C. 1985, c. T-13
(hereinafter "the Act.") required the
registered owner to demonstrate use of its trade-mark at any time
during the two years preceding the date of the Notice. However,
Section
45
as
amended by the World Trade Organization
Implementation Act now requires the registrant to demonstrate use
at any time during the three year period preceding the date of the
notice for each of the registered wares and/or services. The
Trade-Marks Opposition Board applies Section 45 as amended to all"
Section 45 cases whether they were commenced before or after
January 1, 1996. Consequently, the relevant period in this case is
,
between May 16, 1992 and May 16, 1995.
If the registrant cannot
show use within this period, it is required to show the date of
last use of the mark and provide the reason for the absence of use
since such date.
In his affidavit, Mr. Adjmi states that his company
manufactures various articles of clothing for women including tops,
sweaters, pants, shirts and shorts and that one of the trade-marks
used by his company in association with its articles of clothing is
ONE STEP UP.
At paragraph (e), he deposes that his company has
continuously used its trade-mark in the Canadian marketplace in
retail clothing stores such as Suzy Shier since at least as early
as May 1987. Attached to his affidavit is a sales report for
business conducted by One Step Up Ltd. with Suzy Shier from January
1, 1993 to July 31, 1995. He states at paragraph (f) that annual
sales of the ONE STEP UP line of clothing have been $50 million for
each of the years 1991 - 1995 (to the date of his affidavit). Also
I
attached to his affidavit are copies of representative samples of
invoices which he states shows sales of the trade-mark in Canada.
The invoices, which are referenced in the sales report, show sales
of the following items: cvc crew s/s prt top-suzy; crv v nk s/s prt
top-SUZY; t/c 2x2rib y/d v nk s/s-s; and t/c 2x2rib y/d v nk w/bttn
pr. Finally, at paragraph (i) he deposes that the ONE STEP UP
clothing is
advertised by retailers and he provides annual
advertising and promotional expenditures at paragraph (j).
I observe that the documents attached are not notarized or
identified as exhibits.
However, I find them admissible in view
that they are identified in the affidavit to which they are
attached which was properly sworn before a commissioner of oaths.
The arguments of the requesting party made at the oral hearing
can be summarized as follows. First, the requesting party contends
that the affidavit of Mr. Adjmi is ambiguous and as such, is not
sufficient to show use.
Second, it is the requesting party's
submission that the evidence submitted is insufficient to show use
of the mark in the normal course of trade in association with each
of the wares.
To support the contention that the affidavit of Mr. Adjmi is
ambiguous, the requesting party relies on the authority of Plough
(Canada) Ltd. v. Aerosol Fillers Inc.(1979), [1980] 45 C.P.R. (2d)
194 (F.C.T.D.) (hereinafter Plough), and submits that the affiant
has only made mere assertions of use of the mark as opposed to
furnishing facts from which the Registrar can make conclusions
regarding use.
The requesting party also asserts that the sales
figures
amounting to exactly $50 million dollars for each of the
years 1991 - 1995 (to the date of the affidavit) are suspect and as
such make the affidavit ambiguous since the registrant cannot be
cross-examined on these figures. A further submission made by the
requesting party was that the affiant did not show he had knowledge
of the advertising and promotional expenditures he lists in
paragraph (j).
From the evidence furnished, I am not satisfied that the-
registrant has shown use of its trade-mark in association with the
registered wares in Canada during the relevant period.
As the
requesting party pointed out, the affidavit is vague and ambiguous
in many regards.
Regarding the sales figures, I am prepared to
accept the affiant's sworn statement that these figures represent
annual sales of the ONE STEP UP line of clothing over the last five
year period. However, Mr. Adjmi does not provide a breakdown of
sales for each ware nor clearly state what portion of the sales
figures he refers to at paragraph (f) apply to sales in Canada, if
any. The same can be said with respect to the advertising figures
he provides at paragraph (j).
With respect to the invoices, although they may represent
sales made in Canada, it is not clear whether the sales referenced
were made by the registrant.
This is because the attached sales
report which corresponds to the invoices identifies the vendor as
One Step Up Ltd. and not the registrant, One Step Up, Inc. Even if
I were prepared to infer that the sales report represented sales
made by the registrant to Suzy Shier, it would be difficult to draw
conclusions from it regarding use because it does not identify to
which wares the sales correspond to.
Further, in view of Mr.
Adjmi's statement that ONE STEP UP is one of the marks used by his
company in association with the articles of clothing it
manufactures, it is not clear from the sales report whether all
transactions shown in it regard only the trade-mark ONE STEP UP or
whether the transactions regard all of the registrant's marks.
With respect to the labels, Mr. Adjmi states that the sample
labels submitted show the mark as actually used in Canada.
However,
I observe that the style numbers listed on the back of
two of these labels do not correspond with any of the style numbers
on the attached invoices or on the sales report. Therefore, it is
difficult to ascertain whether or not the labels submitted
represent labels used in association with the wares in Canada
during the relevant period.
It is settled law that evidentiary overkill is not required
for a registrant to establish use of its mark (see Union Electric
Supply Co. Ltd.v. Registrar of Trade-Marks (1982), 63 C.P.R. (2d)
56). However, in view of the fact that the requesting party cannot
cross-examine the registrant's affiants and cannot file evidence of
its own, it is incumbent on the registrant to establish sufficient
facts to enable the Registrar to draw a clear conclusion of use of
r
the trade-mark in association with each of the wares in Canada
during the relevant period. In the present case, if the registrant
was using the registered mark in Canada during the relevant time,
it could have easily evidenced that fact.
However, the only
evidence submitted by the registrant was the Adjmi affidavit which,
in my view, is replete with ambiguities.
Having regard to the
decision in Plough, supra, I resolve these ambiguities against the
registrant.
As the evidence fails to show use of the mark in
association with the wares in Canada during the relevant period, I
conclude that the trade-mark ought to be expunged.
Accordingly, and in the absence of an appeal from this
decision pursuant to the provisions of Section 56 of the Act.,
registration No. 380,243 will be expunged from the register.