LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 194
Date of Decision: 2014-09-15
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Bennett Jones LLP against registration No. TMA620,206 for the trade-mark FLOW-CEM in the name of Mikhail Pildysh
[1] At the request of Bennett Jones 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 January 23, 2013 to Mikhail Pildysh (the Registrant), the registered owner of registration No. TMA620,206 for the trade-mark FLOW-CEM (the Mark).
[2] The Mark is registered for use in association with the following wares: “Additive to cement slurry for improving the flow ability of cement mixes in construction and well cementing applications.”
[3] The notice required the Registrant to furnish evidence showing that the Mark was in use in Canada, in association with the wares specified in the registration, at any time between January 23, 2010 and January 23, 2013. If the Mark had not been so used, the Registrant was required to furnish evidence providing the date when the Mark was last used and the reasons for the absence of use since that date.
[4] The definition of “use” with respect to wares is set out in sections 4(1) and 4(3) 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.
…
4(3) A trade-mark that is marked in Canada on wares or on the packages in which they are contained is, when the wares are exported from Canada, deemed to be used in Canada in association with those wares.
[5] 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 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is quite low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trade-mark in association with each of the wares specified in the registration during the relevant period.
[6] In response to the Registrar’s notice, the Registrant filed his own statutory declaration, dated March 26, 2013. Only the Requesting Party filed written representations; an oral hearing was not held.
[7] In his brief affidavit, the Registrant states that rights to the Mark were transferred to Cementic Industries Inc., though he does not specify a transfer date and, to date, no assignment of the Mark has been requested of or recorded by the Registrar. In any event, he further states that he is “100% owner of Cementic Industries Inc. as well as the Trademark”. He asserts use of the Mark “as intended in the original application” since 2004, when he filed a declaration of use with the Registrar and the Mark was registered.
[8] Despite his assertion, however, the Registrant provides no evidence of sales of the wares, nor does he provide any evidence of export of the wares from Canada during the relevant period or otherwise. The only exhibits he attaches to his affidavit are as follows:
• Exhibit A is a copy of the Registrant’s aforementioned declaration of use and a copy of the Mark’s registration certificate, both from 2004.
• Exhibit B is the title page and table of contents page from a research report authored by a third party, Richard Bueble, dated May 2010, entitled “Report on R & D of Internal Curing Aid for Concrete by Pildysh Technologies Inc.” The Registrant refers to a “research program”, which resulted in this report, stating that “the product has been further researched, which was required by the market before we could promote the product under the Trademark”. However, the Registrant does not explain the relevance of the report to the issue of use and I note that the Mark does not appear on either of the exhibited pages.
• Exhibit C is a copy of a brochure entitled “Flow-Cem(TM) Internal Concrete Curing Aid” that provides information about the product. The Registrant attests that this brochure shows that “the product is currently being promoted under the Trademark”, although he provides no details regarding distribution of this brochure in Canada during the relevant period.
• Exhibit D is a photograph of a display stand that the Registrant attests was taken at a trade show in Las Vegas, Nevada in February 2013. The Exhibit C brochure is visible at the top of the display stand.
[9] As noted by the Requesting Party, generally, use of a trade-mark cannot be established through the mere advertising or distribution of promotional materials concerning the wares [see Gowling & Henderson v John Morton Ltd (1992), 47 CPR (3d) 268 (TMOB) at 270; Tint King of California Inc v Canada (Registrar of Trade-marks) (2006), 56 CPR (4th) 223 (FC) at paragraph 40].
[10] In this case, the Registrant has not even provided clear evidence of such advertisement in Canada, much less provided any evidence of transfers of the wares in the normal course of trade.
[11] As such, the Registrant has not demonstrated use of the Mark in association with the registered wares within the meaning of sections 4 and 45 of the Act. Furthermore, there is no evidence of special circumstances to excuse non-use of the Mark before me.
Disposition
[12] Accordingly, 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 expunged.
______________________________
Andrew Bene
Hearing Officer
Trade-marks Opposition Board
Canadian Intellectual Property Office