LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 148
Date of Decision: 2012-08-16
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Gowling Lafleur Henderson LLP against registration No. TMA658,021 for the trade-mark SMASH in the name of Travelway Group International Inc.
[1] At the request of Gowling Lafleur Henderson LLP (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) on February 12, 2010 to Travelway Group International Inc. (the Registrant), the registered owner of registration No. TMA658,021 for the trade-mark SMASH (the Mark).
[2] The Mark is registered for use in association with the following wares: luggage, backpacks, sport bags, duffle bags, lunch bags, cooler bags, briefcases, pencil cases and three-ring binders.
[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 February 12, 2007 and February 12, 2010.
[4] The relevant definition of “use” in association with wares is set out in section 4(1) of the Act:
4(1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal course of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
[5] In response to the Registrar’s notice, the Registrant filed the statutory declaration of Gerry Shadeed, Vice-President and Secretary-Treasurer of the Registrant, sworn on May 11, 2010. Neither party filed written representations; an oral hearing was not held.
[6] In his affidavit, Mr. Shadeed states that, during the Relevant Period, the Registrant sold backpacks, pencil cases, three-ring binders, lunch bags and cooler bags bearing the Mark to retailers located throughout Canada, including to national retailers such as Metro grocery stores and Wal-Mart stores. In support, Mr. Shadeed provides the following exhibits:
• Exhibit R-1 consists of photographs of each of these wares as they were sold during the Relevant Period. I note that a stylized version of the Mark is printed directly on the ware in each case and that Mr. Shadeed provides photographs of two models of SMASH backpacks, which he identifies as item No. A1510 and item No. A1639, respectively.
• Exhibit R-2 and R-3 consists of hang tags attached to each of the backpacks depicted in Exhibit R-1. I note that the Mark is clearly displayed on the front of the tag, with an item number and UPC code appearing on the back. Mr. Shadeed attests that the other wares depicted in Exhibit R-1 were also sold during the Relevant Period with similar tags attached.
• Exhibit R-4 consists of four invoices dated within the Relevant Period from the Registrant to Wal-Mart Canada Inc. showing “a sampling” of sales of backpack model no. A1510 depicted in Exhibit R-1. Mr. Shadeed attests that, from January 2008 to December 2009, the Registrant sold approximately 26,300 units of this particular backpack model to Wal-Mart Canada Inc., having an approximate wholesale price of more than $140,000.
• Exhibit R-5 consists of nine purchase orders dated within the Relevant Period showing “a representative sampling” of orders by Metro of backpack model No. A1639 as well as the pencil cases, three-ring binders, lunch bags and cooler bags depicted in Exhibit R-1. Mr. Shadeed further attests to substantial sales of each of these wares in 2009 by the Registrant to Metro.
[7] In view of the foregoing, I am satisfied that the Registrant has demonstrated use of the Mark in association with backpacks, pencil cases, three-ring binders, lunch bags and coolers during the Relevant Period within the meaning of sections 4 and 45 of the Act.
[8] With respect to the remaining wares, namely “luggage”, “sport bags”, “duffle bags” and “briefcases”, Mr. Shadeed makes no clear assertion of use of the Mark, nor does he make any statements or provide any evidence with respect to sales of such wares. Accordingly, I cannot conclude that the Registrant has demonstrated use of the Mark in association with such wares during the Relevant Period within the meaning of sections 4 and 45 of the Act. Furthermore, the Registrant has provided no evidence of special circumstances excusing the absence of such use.
Disposition
[9] In view of the foregoing, 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, the registration will be amended to delete the following wares: luggage, sport bags, duffle bags and briefcases.
[10] The amended statement of wares will read as follows: “backpacks, lunch bags, cooler bags, pencil cases and three-ring binders”.
______________________________
Andrew Bene
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office