In the matter of Section 45 proceedings against Registration No. TMA516,994 for the trade-mark MAXPELL
On August 26, 2003 at the request of Smart & Biggar, the Registrar forwarded the notice prescribed by s. 45 of the Trade-marks Act R.C.S. 1985 c-13 (the “Act”) to Highwood Resources Ltd. (“Highwood”) with respect to Registration No. TMA516,994 for the trade-mark MAXPELL (the “Mark”) registered in association with “zeolite, for use as a pellet binding agent, absorbent, fertilizer additive”.
Pursuant to the provisions of s. 45, the registered owner must show, with respect to each of the wares and services specified in the registration, whether the trade-mark was in use in Canada at any time during the three-year period immediately preceding the date of the notice, and if not the date on which it was last used and the reason for the absence of use since that date. The relevant period in this case is anytime between August 26, 2000 and August 26, 2003. What qualifies as use of a trade-mark is defined in s. 4 of the Act.
An affidavit of Alan Minty, sworn on November 23, 2003, was filed in response to the notice. Mr. Minty is the Director of Marketing and Sales, Mineral Products Division of Dynatec Corporation (“Dynatec”). He has occupied this position since the acquisition of all the assets of Highwood by Dynatec “on or about November 29, 2002”. He was the Director of Marketing and Sales of Highwood from January 7, 1997 until the acquisition by Dynatec.
Both the requesting party and Dynatec have filed written arguments. An oral hearing has not been held.
From the outset, I note that Mr. Minty did not provide with his affidavit any document evidencing his allegation that Dynatec owned the registration since November 29, 2002. However, the Canadian Intellectual Property Office issued on August 11, 2004 a notice confirming that Dynatec had been recorded as the owner of the registration. The entry on the trade-mark registration page shows that the transfer was made on December 30, 2002. Having reviewed the document of transfer filed with the Canadian Intellectual Property Office on June 22, 2004, I am satisfied that Dynatec acquired the Mark on December 30, 2002, which is prior to the date of the s. 45 notice. Accordingly, the requesting party’s submissions in its written argument that the evidence relating to the use of the Mark by Dynatec did not satisfy the requirement of s. 45 are no longer applicable.
Mr. Minty deposes that Highwood specialized in the business of processing and manufacturing of industrial minerals, which business has been continued by Dynatec. He further states that Highwood and Dynatec have continuously used the Mark in Canada since March 9, 1995 in association with zeolite, for use as a pellet binding agent, absorbent, and feed additive. At this time, I should note that “feed additive” is not identified in the statement of wares of the registration as one of the applications for the zeolite. In addition, it seems to me that there is no common ground between a feed additive application and a “fertilizer additive” application, which is identified in the statement of wares of the registration.
Mr. Minty states that the zeolite is sold to customers in 25 kg bags, in one metric tonne totes, in semi-bulk and intermediate bulk bags and in bulk and that the Mark is prominently displayed on bags used to ship the wares. Appended to the affidavit are a sample of a 25kg bag used since at least May 2003 (Exhibit “A”), a copy of a bag label that was approved by the Canadian Food Inspection Agency on April 23, 2003 (Exhibit “B”) as well as an insert label which is used since at least January 2003 by Mountain Mineral products group, a division of Dynatec (Exhibit “C”). The insert label is attached to each of the one metric tonne totes, and the semi-bulk and intermediate bulk bags. I note that the Mark is displayed on the 25 kg bag, on the bag label and on the insert label. I should add that a sticker affixed on the front side of the 25kg bag displays the name “DYNATEC CORPORATION, Mountain Products Division, o/a Mountain Minerals”. The backside of the 25kg bag displays the name “MOUNTAIN MINERALS (a division of Highwood Resources Ltd.)”. The display of the Mark on 25kg bags amounts to use of the Mark within the meaning of s. 4(1). I should also add that I do not agree with the requesting party’s submission that the word “insert” in “insert labels” implies that the label is inserted inside the bags.
Mr. Minty states that bulk sales and shipment do no support direct labelling on the wares, but that the Mark appears on the Bills of Lading and invoices for the wares. A sample of a Bill of Lading (Exhibit “D”) and of an invoice from Dynatec (Exhibit “E”), both dated June 2, 2003, are provided with the affidavit. I note that both documents show the quantity and description of the ordered product with a mention of the Mark. The pricing information has been removed from the invoice. The name and address of the customer for the “sold to” entity have also been removed whereas the “ship to” entity is identified as “same”. I find reasonable to conclude that the letters “AB”, which is the only information for the address, refer to Alberta.
Mr. Minty provides photocopies of invoices dated May 31, 2001 (Exhibit “F”) and April 6, 2002 (Exhibit “G”) relating to the sales of 25kg bags zeolite by Highwood as well as an invoice of April 28, 2002 (Exhibit “H”) relating to the sale of zeolite in bulk by Highwood. The customer names and the pricing information have been removed from the invoices. Amongst the information shown by the invoices are partial addresses of the customers, apparently domiciled in Alberta and Ontario, as well as the quantity and description of the ordered product with a mention of the Mark. The invoice of April 28, 2002 clearly identifies the “ship to” entity as “same” than the “sold to” entity. Although I have noted Dynatec’s submission that each of the bottom portions of Exhibits “F” to “H” is a partial copy of the Bill of Lading associated with the invoice, there is no testimony from Mr. Minty to this effect.
Finally, Mr. Minty deposes that Dynatec and its predecessor have issued technical service bulletins pertaining to the wares associated with the Mark and he provides a sample of a bulletin issued as early as April 2003 (Exhibit “I”). Although the Mark is mentioned in the bulletin, there is no evidence from which I could conclude that the bulletin accompanied the wares such that it could amount to use of the Mark within the meaning of s. 4(1) of the Act.
I have considered each party’s submission as to whether the invoices constitute evidence of use in association with wares within the meaning of s. 4(1) of the Act. Mr. Minty has not stated that the invoices accompanied the wares and I am aware of the decision Riches, McKenzie & Herbert v. Pepper King Ltd. (2000), 8 C.P.R. (4th) 471 in which the Federal Court, Trial Division, held that the Registrar cannot assume that invoices accompany wares in the absence of evidence to that effect. I distinguish the decision Riches, McKenzie & Herbert on the basis that in the present case, there is evidence that the zeolite in bulk was shipped to the same physical places than the invoices were delivered (Exhibits “E” and “H”). Thus in each instance the invoice would have been seen by the same party who received the wares and, for the purposes of s. 45, this would provide sufficient notification to satisfy s. 4(1) [see McCarthy Tetrault v. Acer America Corp. (2003), 30 C.P.R. (4th) 562 (T.M.O.B.)]. I would add that since the Bill of Lading and invoice provided as Exhibit “D” and “E” bear the same date, it seems reasonable to conclude that the invoice attached as Exhibit “E” would probably have been received at the same time than the wares. As for the invoices provided as Exhibits “F” and “G” suffice to say that they support Mr. Minty’s testimony with respect to the sale of zeolite shipped in 25kg bags. Looking at the evidence in its totality, I find reasonable to conclude that Exhibit “A” is representative of 25kg bags that would have been used by Highwood.
With all due respect for the requesting party’s submission, I believe it would be unreasonable to conclude that the sales of zeolite by both Highwood and Dynatec have been made for no value. It is clear from the original copies of Exhibits “E” to “H” that the pricing information has been voluntarily hidden. I distinguish the present case from the decision Mendelson Rosentzveig & Schacter v. Giorgio Beverly Hills, Inc. (1994) 56 C.P.R. (3rd) 399 in which the Senior Hearing Officer was left to assume that specific articles listed in an invoice were sent free of charges.
Although Dynatec is not required to engage in “evidentiary overkill” in order to demonstrate use of the Mark for the purposes of s. 45 proceedings, there must be some evidence upon which the Registrar can conclude that the Mark has been used in association with “zeolite, for use as a pellet binding agent, absorbent, fertilizer additive”. Following my analysis of the evidence, I am satisfied that the registered owner has evidenced use of the Mark in association with “zeolite, for use as a pellet binding agent, absorbent” pursuant to s. 4(1) of the Act within the relevant period. However, I find that there is no evidence of use of the Mark in Canada in association with the “fertilizer additive” application for the zeolite, nor any evidence with respect to the date the Mark was last in use in association with zeolite for fertilizer additive and the reason for the absence of use.
Having regard to the foregoing, in the absence of an appeal from this decision pursuant to the provisions of s. 56, Registration No. TMA516,944 will be amended by deleting “fertilizer additive” from the statement of wares.
DATED AT BOUCHERVILLE, QUEBEC, THIS 7th DAY OF APRIL 2006.
Céline Tremblay
Member
Trade-marks Opposition Board