Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2014 TMOB 202

Date of Decision: 2014-09-23

IN THE MATTER OF A SECTION 45 PROCEEDING requested by Bennett Jones LLP against registration No. TMA620,409 for the trade-mark FOOT DESIGN in the name of Phoenix Footwear Group, Inc.

[1]               On October 24, 2012 at the request of Bennett Jones LLP (the Requesting Party) the Registrar forwarded a notice (the notice) under section 45 of the Trade-marks Act, RSC 1985, c T -13 (the Act) to Phoenix Footwear Group, Inc. (the Registrant), concerning registration No. TMA620,409 for the trade-mark FOOT DESIGN (the Mark) as shown below:

[2]               Registration No. TMA620,409 covers: Footwear, namely casual and dress shoes and sandals (the Wares).

[3]               In response to the notice, the Registrant filed the affidavit of Mr. James Riedman together with Exhibits 1 to 6 inclusive. Only the Requesting Party filed written submissions. No hearing was held.

[4]               For the reasons that follow I conclude that registration No. TMA620,409 will be maintained on the register.

The law

[5]               The notice required the Registrant to furnish evidence showing that the Mark had been used in Canada in association with each of the 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. The relevant period in this case is any time from October 24, 2009 to October 24, 2012 (the Relevant Period).

[6]               Section 45 proceedings are simple, expeditious and serve the purpose of clearing the register of “deadwood”; as such, the threshold test to establish use is quite low [see Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)].

[7]               A simple allegation of use of the Mark is not sufficient to evidence its use in association with the Wares within the meaning of section 4(1) of the Act. There is no need for evidentiary overkill. However, any ambiguity in the evidence filed shall be interpreted against the owner of the Mark [see Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (4th) 62 (FCA)].

[8]               I therefore must determine if I am satisfied that the evidence to be described below enables me to conclude that the Mark had been used by the Registrant in Canada in association with the Wares during the Relevant Period.

The evidence relating to use

[9]               Mr. Reidman is the Registrant’s Chief Executive Officer and Chairman and has been in the employment or associated with the Registrant for over 15 years.

[10]           He filed as Exhibit JR-1 a copy of Canadian trade-mark registration No. TMA620,409 for the Mark registered in association with the Wares.

[11]           He states that the Registrant operates a business of designing, developing, marketing and selling footwear through its ‘Trotters’ and ‘Soft Walk’ divisions. The Wares are primarily sold through department stores, leading specialty and independent retail stores, mail order catalogues and internet retailers, in the United States and Canada.

[12]           Mr. Reidman filed as Exhibit JR-2 to his affidavit photographs of a casual shoe, a dress shoe, a sandal to which, he alleges, the Mark is affixed by the Registrant as well as a shoe box on which appears the Mark. He confirms that this marking is identical to the marking of the Wares sold in Canada by the Registrant during the Relevant Period and that those specific styles of footwear were, amongst others, footwear sold in Canada by the Registrant during the Relevant Period.

[13]           Mr. Reidman filed as Exhibit JR-3 to his affidavit several pages extracted from the website operated by the Registrant and illustrating some of the Wares offered for sale in association with, what he alleges to be, the Mark. He further states that while these extracts from the Registrant’s website were taken on April 30, 2013, he confirms that these pages are illustrative of the Wares sold under the Mark in Canada during the Relevant Period.

[14]           Mr. Reidman provides the sales figures of the Wares in association with the Mark in Canada. They were approximately 700,000.00$ US for the period from 2009 to 2012 and were broken down as follows:

[15]           Mr. Reidman alleges that those sales were made by the Registrant in Canada during the Relevant Period and in the normal course of trade, namely that it sold the Wares bearing the Mark to Canadian distributors which in turn have sold the Wares to Canadian retailers and/or the general public.

[16]           Mr. Reidman filed as Exhibit JR-4 to his affidavit copies of representative invoices representing such sales of the Wares bearing the Mark to two of the Registrant’s Canadian distributors, namely PXG Canada Inc. in Montreal, Quebec and Canada Shoe (1988) Corp. in Richmond, British Columbia. He states that the letter "S" in the style column identifies the Soft Walk line of footwear of the Registrant; all said footwear (casual and dress shoes and sandals) bearing the Mark.

[17]           Mr. Reidman filed as Exhibit JR-5 to his affidavit a copy of a leaflet used by the Registrant for the promotion of the Wares bearing the Mark in Canada and he confirms that this leaflet circulated in Canada during the Relevant Period.

[18]           Mr. Reidman filed as Exhibit JR-6 to this affidavit copies of the Registrant’s Fall 2009 catalogues (dated April 15, 2009 and May 19, 2009), which were available and circulating in Canada during July or August 2009 as well as copies of the Fall 2012 (dated February 8, 2012 and another one undated) which were available and circulating in Canada as of July or August 2012. He alleges that, like Exhibits JR-3 and JR-5, these catalogues illustrate the Wares sold by the Registrant in Canada during the Relevant Period.

[19]           Mr. Reidman alleges that, on each of the Wares, the Mark was affixed in the insole and the outsole of the footwear and, sometimes, depending of the style, on the nose or the quarter and the heel counter. I will make specific reference later on to examples where the Mark appears as opposed to the trade-mark SOFT WALK & Design as defined below. He further states that the exhibited catalogues were also included in the shipping in Canada of the Wares bearing the Mark.

Analysis of the evidence concerning use of the Mark in association with the Wares

[20]           The Requesting Party argues that the trade-mark used by the Registrant is not the Mark but rather the trade-mark SOFT WALK & Design as illustrated below:

[21]           I must decide first if the use of that trade-mark constitutes use of the Mark. For the reasons that follow I do not consider the use of the trade-mark SOFT WALK & Design to be use of the Mark. Despite the fact that the Mark is reproduced in its entirety in the trade-mark SOFT WALK & Design, the addition of the words ‘SOFT’ and ‘WALK’ does create a situation where the Mark has lost its identity. The trade-mark SOFT WALK & Design is substantially different, as a whole, than the Mark. The words ‘soft’ and ‘walk’ are as dominant as the design portion of that trade-mark. The words and the design portion are integrated in such a way that they form a distinctive trade-mark [see Canada (Registrar of Trade-marks) v Compagnie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 (FCA) at 525; Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59; and Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535(TMOB)].

[22]           However, there are exhibits where the Mark appears:

•         on the back heel portion of a shoe (as shown on the first picture part of exhibit 2 to Mr. Riedman’s affidavit);

•         on a box (as shown on the last picture part of exhibit 2 to Mr. Riedman’s affidavit); and

•         on the sole of shoes (see pictures of the Milford, Melody, Marietta Studs, Dakota and Mendi models illustrated in the Fall 2012 catalogue, exhibit JR-6 to Mr. Riedman’s affidavit).

[23]           The Requesting Party argues that there is some ambiguity with respect to the photographs mentioned above as it claims that the Registrant has not provided any images of the shoes sold in Canada during the Relevant Period.

[24]           I reproduce paragraph 8 of Mr. Riedman’s affidavit:

8. Now shown to me and marked in bulk as Exhibit JR-2 to this my Affidavit are photographs of a casual shoe, a dress shoe, a sandal and a shoe box to which THE TRADE-MARK is affixed by [the Registrant]. I do confirm that this marking is identical to the marking of THE PRODUCTS sold in Canada by [the Registrant] during The Relevant Period and that those specific styles of footwear were, amongst others, footwear sold in Canada by [the Registrant] during The Relevant Period.

[25]           The wording of paragraph 8 of Mr. Reidman’s affidavit is clear. The footwear illustrated on the photographs filed as exhibit JR-2 are identical to those sold in Canada during the Relevant Period. There is at least one illustration of a shoe bearing the Mark on its back heel portion that has been sold by the Registrant during the Relevant Period.

[26]           As for the shoe box, the Requesting Party argues that the picture does not clearly show the content of the box, and therefore it is impossible to prove that use of the Mark had been in association with the Wares. Again one must read Mr. Riedman’s statement in its context. In its enumeration of what represents the pictures filed, there is reference to some footwear as well as to a shoe box. That shoe box bears the Mark. Mr Riedman does state in paragraph 8 that the marking is identical to the marking of the Wares sold in Canada by the Registrant during the Relevant Period. I do not see any ambiguity. The fact that we do not see the content of the shoe box is not determinative. It is the packaging used by the Registrant for the sale of the Wares in Canada during the Relevant Period.

[27]           With respect to the invoices filed as exhibit JR-4, as pointed out by the Requesting Party, I note that some of the invoices bear a date outside the Relevant Period. I did not take them into consideration. The Requesting Party argues that they do not display the Mark and there is no indication that any of the items listed in them were branded with the Mark, or what these items were. As such the Requesting Party takes the position that the invoices filed do not show use of the Mark by the Registrant in Canada in association with the Wares during the Relevant Period.

[28]           However, one must read the content of paragraph 13 of Mr. Riedman’s affidavit to put into its context the filing of those invoices. Mr. Riedman states clearly that the invoices (which include those issued during the Relevant Period) represent sales of Wares bearing the Mark to some of the Registrant’s Canadian distributors. He explains that the letter ‘S’ appearing in the style column identifies the Soft Walk line of the Registrant’s footwear, all bearing the Mark. Moreover, some of the style names and/or style numbers appearing on the invoices correspond to the style names and style numbers appearing on the leaflet filed by Mr. Riedman as exhibit JR-5 that was circulated in Canada during the Relevant Period.

[29]           The invoices filed as exhibit JR-4 were not filed as evidence of use of the Mark in association with the Wares during the Relevant Period. In this case, Mr. Riedman filed the invoices to support his allegation that the Registrant sold the Wares in Canada during the Relevant Period in association with the Mark. I accept the invoices for what they stand for, namely, evidence of sales in Canada of the Wares bearing the Mark during the Relevant Period as alleged by Mr. Riedman in paragraph 13 of his affidavit.

[30]           The Requesting Party also suggests that the ‘S’ in the style column stands for SOFT WALK or SOFTWALK as the Registrant is also the owner of the trade-mark SOFT WALK, registration No. TMA627,350. There is no evidence in the record to support such allegation.

[31]           Lastly the Requesting Party notes that, while the leaflet filed as exhibit JR-5 identifies Canada Shoe (1998) Corp under the ‘contact’ section, one of the invoices contains the following information:

Ship and bill to: Canada Shoe (1998) Corp.

Shipper: Prestige Footwear Co. Ltd of China.

Since there is no inference in the affidavit of a relationship between the Registrant and Prestige Footwear Co. Ltd., and no licence agreement has been referred to within the meaning of section 50 of the Act, the Requesting Party argues that there seems to be an ambiguity as to the source of the Wares.

[32]           This section 45 proceeding is not the appropriate forum to challenge the distinctiveness of the Mark. There is clear evidence in the record that the Registrant sold Wares bearing the Mark in Canada during the Relevant Period. The fact that another entity may have also sold footwear in Canada in association with the Mark during the same period without any evidence of a licence within the meaning of Section 50 of the Act is not a factor to be taken into consideration in this decision.

Conclusion

[33]           I conclude that the Registrant has established use of the Mark in Canada in association with the Wares during the Relevant Period. The Registrant filed a picture of at least one shoe bearing the Mark, a picture of a shoe box bearing the Mark, a catalogue illustrating the Wares on some of which the Mark appears on the sole, and invoices evidencing the sale of the Wares in association with the Mark.

Disposition

[34]           Pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, registration No TMA620,409 will be maintained on the register.

____________________________

Jean Carrière

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office