Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2010 TMOB 120

Date of Decision: 2010-08-09

IN THE MATTER OF A SECTION 45 PROCEEDING requested by Smart & Biggar against registration No. TMA529,728 for the trade-mark MAKING GARDENING EASY in the name of Anthony Tesselaar Plants Pty Ltd.

[1]               At the request of Smart & Biggar (the “requesting party”), the Registrar of Trade-marks forwarded a notice under section 45 of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”) on July 21, 2008 to Anthony Tesselaar Plants Pty Ltd., the registered owner of the above referenced trade-mark.

[2]               The trade-mark MAKING GARDENING EASY (the Mark) is registered for use in association with “live plants, seedlings, live trees, vine plants, grasses including decorative and native grasses”.

[3]               Section 45 of the 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 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 July 21, 2005 and July 21, 2008 (the “relevant period”). 

[4]               The registrant is required to show use of the trade-mark with each of the wares and services set out in the statement of wares and services; it is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 (F.C.A.)].  Although the threshold for establishing use in section 45 proceedings is quite low [Woods Canada Ltd. v. Lang Michener (1996), 71 C.P.R. (3d) 477 (F.C.T.D.) at 480], and evidentiary overkill is not required [Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 56 (F.C.T.D.)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with the wares and services specified in the registration, during the relevant period.  

[5]               “Use” in association with wares is set out in s. 4(1) and 4(3) of the Act:

In this case, s. 4(1) applies.

[6]               In response to the Registrar’s notice, the registrant furnished the affidavit of Rodney Thorpe, sworn on December 15, 2008, together with Exhibits A through D. Only the requesting party filed written submissions; an oral hearing was not requested.

[7]               In his affidavit, Mr. Thorpe states that he is the Chief Executive Officer of Anthony Tesselaar Plants Pty Ltd. (the “registrant” or “company”), and as such he has personal knowledge of the facts stated therein. He states that he joined the company in 1994, and in the course of his current position he oversees all of the commercial operations of the company, including finance, administration, legal and trade-mark and patent issues, as well as the implementation of marketing programs.

[8]               Mr. Thorpe states that the company was formed in 1994, and its head office is in Silvan, Australia. He explains that the company is in the business of making environmentally friendly and easy to grow plants available to customers around the world, with a main target market of gardeners, landscapers and horticulturalists. It promotes environmentally friendly plants, researches and develops the drought and stress tolerance of plants, and searches for appropriate plants to bring to the marketplace. Once a plant with the desired traits is selected, extensive testing is conducted and the plant is entrusted to a network of growers for eventual sale in garden centers, landscaping outlets and the like.

[9]               Mr. Thorpe explains that the company licenses use of the Mark to Anthony Tesselaar USA Inc., which then licenses it to wholesale growers in Canada, who propagate, grow and sell the plants to consumers in Canada. He states that under the licence agreement, the company has direct or indirect control over the character or quality of the wares. Based on his statements, I conclude that the company has control over the character or quality of the plants sold by the wholesale growers in Canada. Therefore, as Pan American Nursery Products Inc. (“Pan American”) is described in the affidavit as one of the company’s main growers in Canada (with offices in Surrey, British Columbia and Millgrove, Ontario), I am satisfied that any use by Pan American would enure to the benefit of the registrant pursuant to s. 50(1) of the Act.

[10]           Mr. Thorpe states that the company has used the Mark in Canada only in association with live plants, and concedes that at present, the Mark is not being used in Canada in association with the other registered wares. He explains that use of the Mark in Canada in association with live plants commenced in 2000, and that it has been used on an ongoing basis since that time. Given the seasonal nature of the wares, he explains that the plants are generally sold in the spring, fall and summer of each year.

[11]           With regard to the evidence of sales, Mr. Thorpe provides as Exhibit A sales reports for sales in Canada in the years 2004-2008 of what he states are the company’s most popular plant varieties: Dream roses, the Tropicanna cannas, and Flower Carpet ground cover roses. The sales reports show that in 2005-2006, 111,591 of these plants were sold in Canada; in 2006-2007, 85,315 of these plants were sold in Canada; and in 2007-2008, 115,750 of these plants were sold in Canada.

[12]           With respect to the manner in which the trade-mark was associated with the wares at the time of their transfer, Mr. Thorpe explains that the plants sold in Canada are marked with the MAKING GARDENING EASY trade-mark by means of tied-on labels and/or plant markers staked into the soil. These labels include the particular variety name, the particular trade-mark used in connection with the variety (e.g. TROPICANNA, COLOR FLASH), and the trade-mark ANTHONY TESSELAAR. He provides as Exhibit B samples of labels used for Canadian sales. These sample labels provide plant information and planting and care instructions. I note that the trade-mark MAKING GARDENING EASY can be seen on all of the labels in smaller black font below the ANTHONY TESSELAAR trade-mark, and on some of the labels, on the same line as ANTONY TESSELAAR –MAKING GARDENING EASY^TM, as shown below. Although the labels show more than one trade-mark being used at the same time in association with the wares, it is trite law that there is nothing to prevent two trade-marks being used at the same time in association with the same wares [see A.W. Allen Ltd. v. Warner-Lambert Canada Inc. (1985), 6 C.P.R. (3d) 270 (F.C.T.D.) and Canadian Council of Professional Engineers v. Ardex Inc. (2001), 13 C.P.R. (4^th) 554 (T.M.O.B.)]. Furthermore, I am satisfied that the trade-mark MAKING GARDENING EASY stands out sufficiently on the labels to be perceived as the trade-mark per se being used in association with the wares [see Nightingale Interloc Ltd. v. Prodesign Ltd. (1984), 2 C.P.R. (3d) 535 (T.M.O.B.) Principle 1].

[13]           Mr. Thorpe states that in Canada the company’s plants are available at retailers, including garden centers and home centers. He explains that the company’s plants sold by Pan American are marked with the MAKING GARDENING EASY trade-mark, and provides as Exhibit D sales records for the company’s plants distributed by Pan American to various retail locations in Canada during the 2005 spring and fall seasons, the 2007 spring and fall seasons, and the 2008 spring and fall seasons. These records, issued by Pan American, show that a total of 3096 “Astilbe Colorflash” plants were shipped to retail locations in Canada during the relevant period, including Les Enterprises Normand Tellier Inc. (Quebec), Norseco Inc. (Quebec), Plantation Garden Centre (Alberta), Arts Nursery Ltd. (British Columbia) and Gardenworks at Mandeville (British Columbia). Accordingly, I am satisfied that the company plants were sold and distributed in Canada during the relevant period.

[14]           The requesting party has raised two arguments concerning the evidence furnished. The first argument is that the evidence does not show use of the Mark at any time in association with seedlings, live trees, vine plants or grasses including decorative and native grasses, and does not set out any special circumstances to excuse the non-use. The second argument is that there is no evidence that the Mark appeared on any of the wares sold during the relevant period. More particularly, the requesting party argues that since Mr. Thorpe’s statements are drafted in the present tense, they cannot purport to reflect the manner in which the Mark was used during the relevant period.

[15]           Concerning the first argument, the affiant conceded that the Mark has not been used in association with seedlings, live trees, vine plants or grasses including decorative and native grasses, and has not claimed special circumstances excusing the non-use. Therefore, these wares will be deleted from the registration.

[16]           With regard to the second argument, I am satisfied from my review of the evidence as a whole that the Mark was affixed to the live plants during the relevant period. I find no ambiguity in Mr. Thorpe’s statements that “[t]he plants sold in Canada are marked with the MAKING GARDENING EASY trade mark by means of tied-on labels and/or plant markers staked into the soil” and that “[t]he company plants sold by Pan American Nursery Products Inc. are marked with the MAKING GARDENING EASY trade-mark”. The use of the present tense in these statements is to be read in the context of the affidavit as a whole, wherein Mr. Thorpe also states that “[u]se of the trade mark in Canada in association with live plants commenced in the year 2000 and the mark has been used on an ongoing basis since that time”. When these statements are read in conjunction with Mr. Thorpe’s evidence of sales during the relevant period, I find it reasonable to conclude that the plants sold within the relevant period bore the Mark as it appears in Exhibit B.

[17]           Having regard to the foregoing, I am satisfied that the affidavit is sufficient to show use of the Mark during the relevant period in association with “live plants” in the manner required by the Act. Accordingly, and pursuant to the authority delegated to me under s. 63(3) of the Act, the registration will be maintained in respect of “live plants”, and amended to delete “seedlings, live trees, vine plants, grasses including decorative and native grasses”, in compliance with the provisions of s. 45 of the Act.

______________________________

Ronnie Shore 

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office