LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 276
Date of Decision: 2014-12-12
IN THE MATTER OF A SECTION 45 PROCEEDING requested by 88766 Canada Inc. against registration No. TMA630,920 for the trade-mark BLACK PEARL & Design in the name of Trevis Boyd, doing business as BLACK PEARL COFFEE.
[1] This decision pertains to a summary expungement proceeding with respect to registration No. TMA630,920 for the trade-mark BLACK PEARL & Design, as shown below, owned by Trevis Boyd, doing business as BLACK PEARL COFFEE.
[2] The wares listed in the registration are: “(1) Roasted whole bean and ground coffee. (2) Cocoa.”
[3] For the reasons that follow, I conclude that the registration ought to be maintained.
The Proceeding
[4] On February 25, 2013, the Registrar of Trade-marks sent a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) to Trevis Boyd, doing business as BLACK PEARL COFFEE (the Registrant). This notice was sent at the request of 88766 Canada Inc. (the Requesting Party).
[5] The notice required the Registrant to furnish evidence showing that he had used the trade-mark BLACK PEARL & Design (the Mark) in Canada at any time between February 25, 2010 and February 25, 2013 in association with each of the wares specified in registration No. TMA630,920. If the Mark had not been so used, the Registrant was required to furnish evidence providing the date when the Mark was last in use and the reasons for the absence of use since that date.
[6] In this case, the use of the Mark in association with the registered wares is governed by section 4(1) of the Act, which reads:
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.
[7] It is well established that the purpose and scope of section 45 of the Act is to provide a simple, summary and expeditious procedure for clearing the register of “deadwood”. Although the criteria for establishing use are not very demanding and an overabundance of evidence is not necessary, sufficient facts must be presented to enable the Registrar to conclude that the trade-mark has been used in association with each ware or service mentioned in the registration during the relevant period [Uvex Toko Canada Ltd v Performance Apparel Corp (2004), 31 CPR (4th) 270 (FC)]. Mere claims of use are insufficient to prove use, and ambiguities in evidence are to be interpreted against the interests of the registered owner [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)].
[8] In response to the Registrar’s notice, the Registrant furnished his own statutory declaration of May 23, 2013, together with Exhibits “A” and “B”.
[9] Both parties filed written representations and were represented at the hearing.
The Evidence
[10] At paragraphs 2 to 6 of his declaration, the Registrant essentially explains that:
• he has been carrying on business without interruption under the name Black Pearl Coffee since 2001 and is the owner of the Mark;
• he incorporated Black Pearl Coffee Inc., a Manitoba Corporation, on July 23, 2008, and is the sole officer and director of the company; and
• the “business involving the sales of roasted whole bean and ground coffee; cocoa” has been conducted from premises located at 460 Dufferin Avenue, in Winnipeg, since 2006. The business was previously conducted from premises located at F33‑542 Dufferin Avenue in Winnipeg.
[11] The remainder of the declaration is about the documentary evidence filed to illustrate the use of the Mark in association with the registered wares. This evidence consists of:
• copies of two invoices, which are dated November 20, 2012 (#101904) and November 22, 2012 (#101916). The Registrant explains that the item “Myan Hot Chocolate” in invoice #101916 refers to a cocoa product and that the balance of the items referred to in this invoice are either roasted whole bean or ground coffee products [paras 7‑8 and Exhibit “A”]; and
• copies of two of the labels applied to packaging for the wares. The Registrant states that “[t]he form of label exhibiting the trade-mark has been used by the business without interruption from 2005” [para 9 and Exhibit “B”].
[12] To conclude my review of the evidence, I note that the Mark is displayed in the top left corner of the invoices beside the Dufferin Avenue address; the ™ symbol appears to the right of the Mark. The Mark is also displayed at the top of the labels with the ™ symbol.
Summary of the Requesting Party’s Representations
[13] The Requesting Party contends that the evidence does not show use of the Mark in Canada by the Registrant, during the relevant period, in association with each of the registered wares. In this regard, the Requesting Party’s main submissions can be summarized as follows:
(i) there are significant ambiguities in the declaration that must be interpreted against the interests of the Registrant;
(ii) there is no evidence about the Registrant’s normal course of trade, let alone evidence that the use of the Mark by Black Pearl Coffee Inc., if any, has enured to the benefit of the Registrant under section 50(1) of the Act; and
(iii) the invoices do not establish use of the Mark in association with wares within the meaning of section 4(1) of the Act.
[14] As the Requesting Party indicated at the hearing that it no longer took the position that the labels did not show use of the Mark as registered, I have disregarded its written representations on this point.
Analysis of the Issues
[15] The issues that arise from the Requesting Party’s representations are:
1. Is there adequate evidence of use in the normal course of trade?
2. Did the use of the Mark by Black Pearl Coffee Inc. enure to the benefit of the Registrant?
3. Does the evidence of use pertain to the relevant period?
4. Is there adequate evidence of use of the Mark in association with each of the registered wares?
[16] I will address each of these issues in turn.
1. Is there adequate evidence of use in the normal course of trade?
[17] As part of my consideration of this issue, I first address the Requesting Party’s submissions that “…while overkill is not required, one may find it strange that, confronted with the cancellation of his trade-mark registration, the [Registrant] only files two invoices for a very limited amount of commercial activities”.
[18] Since the Requesting Party seemingly argues that two invoices are insufficient to indicate use in the normal course of trade, I stress that the case law is clear that there is no particular kind of evidence that must be provided in response to a section 45 notice. What is required is that the owner of the trade-mark establish a prima facie case of use [see Lewis Thomson & Sons Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)].
[19] I shall now address the Requesting Party’s submissions as to the ambiguities in the declaration that must be resolved against the Registrant.
[20] As I understand the Requesting Party’s submissions, it contends that the Registrant does not clearly explain the normal course of trade for the wares associated with the Mark. Rather, the Registrant references the use of the Mark by the “business”. Nowhere in the declaration does the Registrant make reference to his own use of the Mark or use by himself. Finally, the Requesting Party submits that it is unclear why the Registrant makes reference to Black Pearl Coffee Inc.; even if one assumes that it is the operating company, it is not the owner of the Mark and is not identified as a licensee.
[21] For its part, the Registrant submits that as owner of the Mark nothing prevents him from permitting a corporation that he also controls and owns to use the Mark.
[22] Although I acknowledge that the Registrant broadly references “the business involving the sales of roasted bean and ground coffee; cocoa”, I am satisfied that the issue may be decided in favour of the Registrant.
[23] Indeed, I find this is a case where it is reasonable to infer that the Registrant himself would have been using the Mark in Canada before incorporating Black Pearl Coffee Inc. I also find it is reasonable to infer that Black Pearl Coffee Inc. has been using the Mark since its incorporation by the Registrant on July 23, 2008. This leads me to consider the issue arising from the Requesting Party’s submissions concerning the use of the Mark by Black Pearl Coffee Inc.
2. Did the use of the Mark by Black Pearl Coffee Inc. enure to the benefit of the Registrant?
[24] The Requesting Party contends that the evidence is insufficient to show that any use of the Mark by Black Pearl Coffee Inc. during the relevant period satisfied the requirements of section 50(1) of the Act.
[25] Section 50(1) of the Act requires the owner of a trade-mark to control, either directly or indirectly, the character or quality of the wares or services in order to benefit from the use of its trade-mark by a licensee. Section 50(1) of the Act does not require a written agreement, and evidence of control by the owner can support the existence of an implied license agreement [see Wells’ Dairy Inc v UL Canada Inc (2000), 7 CPR (4th) 77 (FCTD)].
[26] Bearing in mind the purpose of section 45 of the Act, I have no difficulty accepting that a license can be inferred to exist between the Registrant and Black Pearl Coffee Inc. Furthermore, given that the Registrant attests to being the sole officer and director of the company, I find this to be a case where it is reasonable to presume that the requisite control under section 50(1) of the Act exists [see Petro-Canada v 2946661 Canada Inc (1999), 83 CPR (3d) 129 at 138 (FCTD); Lindy v Canada (Registrar of Trade Marks) (1999), 241 NR 362 (FCA)].
[27] Accordingly, I decide this issue in favour of the Registrant. Thus, I shall turn to the issue arising from the Requesting Party’s submissions concerning the evidence of use during the relevant period, i.e. between February 25, 2010 and February 25, 2013.
3. Does the evidence of use pertain to the relevant period?
[28] The Requesting Party’s contention that the evidence does not show use of the Mark during the relevant period is based on paragraph 9 of the declaration where the Registrant affirms: “The form of label exhibiting the trade-mark has been used by the business without interruption from 2005.”
[29] The Requesting Party contends that this statement is ambiguous because the Registrant does not clearly state that the labels filed as Exhibit “B” pertain to the relevant period. In this regard, the Requesting Party submitted in its written representations that the Registrant “fails to limit his statement to the Relevant Period and starts the allegation of use before and ends it after same”. At the hearing, the Requesting Party went on to argue that it is not possible to conclude from the statement that the labels pertain to the relevant period, in that they could be labels used before February 25, 2010 or after February 25, 2013, but not between February 25, 2010 and February 25, 2013.
[30] For the reasons that follow, I decide this issue in favour of the Registrant.
[31] Based on a fair reading of paragraph 9 of the declaration, I agree with the Registrant that “without interruption from 2005” encompasses the period between February 25, 2010 and February 25, 2013.
[32] Furthermore, I find the Requesting Party’s submissions with respect to paragraph 9 of the declaration to be overly technical. The evidence must be considered as a whole and an overly technical approach is inconsistent with the purpose of section 45 proceedings [see John Labatt Ltd v Rainier Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)].
[33] As pointed out by the Registrant, the invoices filed as Exhibit “A” are dated within the relevant period. Although the Requesting Party attempted to convince me otherwise, the fact that the Registrant has provided only two invoices covering the relevant period is not fatal to its case. As I previously indicated, the case law is clear that there is no particular kind of evidence that must be provided in response to a section 45 notice. Clearly the invoices can be accepted as corroborative evidence of sales of the registered wares during the relevant period.
[34] Thus, I shall now address the ultimate issue of whether the evidence is sufficient to establish use of the Mark in association with each of the registered wares.
4. Is there adequate evidence of use of the Mark in association with each of the registered wares?
[35] As I understand the Requesting Party’s representations, it contends that the evidence does not establish use of the Mark in association with each of the registered wares since:
(i) the invoices filed as Exhibit “A” do not establish use of the Mark in association with wares within the meaning of section 4(1) of the Act because:
o there is no evidence that they accompanied the wares at the time of transfer so as to create the required notice of association;
o the Mark is not associated with the invoiced wares; it is rather associated with the business since it is displayed at the top of the invoice, with no use in the body, and the wares referred to in the invoices would further appear not to be wares bearing the Mark, but emanating from third parties;
(ii) the evidence provided by the Registrant relates to roasted whole bean and ground coffee products, not “roasted whole bean and ground coffee”, and to cocoa products, not “cocoa”; and
(iii) the wares hot chocolate are not “cocoa”.
[36] I shall first deal with the Requesting Party’s submissions with respect to the invoices.
[37] It has been held in Riches, McKenzie & Herbert v Pepper King Ltd (2000), 8 CPR (4th) 471 (FCTD) that it cannot be assumed that invoices accompany wares in the absence of evidence to that effect.
[38] I acknowledge that the Registrant has not stated in his declaration that the invoices accompanied the wares at the time of transfer. However, I note that each invoice shows that the wares were shipped to the same physical place than the invoice was delivered. Also, the invoices indicate a shipment date that is identical to the invoice date. Accordingly, I find there is sufficient evidence to infer that the invoices accompanied the wares at the time of transfer [see Bereskin & Parr v Star-Kist Foods, Inc (2005), 37 CPR (4th) 188 (TMOB)].
[39] Thus, the question becomes whether the display of the Mark on the invoices may be considered use in association with the wares described in the invoices.
[40] It has been held in Tint King of California Inc v Canada (Registrar of Trade-marks) (2006), 56 CPR (4th) 223 (FC) (Tint King) that the use of a trade-mark on an invoice may or may not be considered use in association with the wares described in the invoice. “The major consideration is whether the trade-mark is being used as a trade-mark in describing the wares contained in the invoice and, as such, whether appropriate notice of such use is being given to the transferee of the wares. […] If a trade-mark is placed at the top of an invoice, with no use in the body of the invoice, the use will not generally be in association with the invoiced wares” [see Tint King at para 32].
[41] The Federal Court of Appeal in Hortilux Schreder BV v Iwasaki Electric Co 2012 FCA 321, affirming (2011) 95 CPR (4th) 16 (FC) (Hortilux), at paragraph 14, emphasizes the use of the word “generally” by the judge in Tint King and goes on to state, at paragraph 15:
As noted above, the Member (in paragraph 47 of her written reasons) dismisses the invoices as evidencing use of the Mark by Hortilux Schreder because the Mark was not used in the body of the invoice without referring to any jurisprudence. Clearly there are decisions of the Trade-mark Opposition Board which confirm that the placement of a trade-mark at the top of an invoice could be use of the trade-mark in association with wares (Gowling Lafleur Henderson LLP v. Bulova Watch Co. (2006), 51 C.P.R. (4th) 470 (T.M. Opp. Bd.); 88766 Canada Inc. v. Phillips, 2008 CarswellNat 2206 (T.M. Opp. Bd.); 88766 Canada Inc. v. Texinvest Inc., 2008 CarswellNat 767 (T.M. Opp. Bd.); Messrs. Stewart McKelvey Stirling Scales v. Peninsula Farm Ltd., 2006 CarswellNat 4228 (T.M. Opp. Bd.)).[…]
[42] As I will discuss shortly, the Requesting Party did not convince me that the invoices do not concern sales of registered wares bearing the Mark. Still, I find there is merit to the Requesting Party’s contention that the Mark at the top of the invoices is used to identify the business rather than the wares. For one thing, the Registrant states at paragraph 5 of his declaration that the business involved “the sales of roasted whole bean and ground coffee; cocoa”; the Registrant does not clearly state anywhere in his declaration that the business only sells the Registrant’s products. Furthermore, it is of note that the Mark is displayed alongside the Dufferin Avenue address; the business name Black Pearl Coffee does not appear anywhere on the invoices, nor does the company name Black Pearl Coffee Inc. Thus, I find it fair concluding that the Mark displayed alongside the address is only used to identify the issuer of the invoices.
[43] I find the present case is distinguishable from Hortilux where the evidence showed, among others, that the goods of only one manufacturer were referenced in the invoices and that the company name appeared separately, immediately above the company’s address. In the end, I am not prepared to find that the use of the Mark at the top of the invoices would be perceived as use of the Mark as describing the wares. Rather, I believe that most likely the Mark at the top of the invoice would be associated with the business of the Registrant, in which case it is more likely proof of use in association with services.
[44] That being said, as indicated above, the Requesting Party did not convince me that the invoices do not concern sales of registered wares bearing the Mark. Indeed, I infer that the item described in each invoice as “Black Pearl, The” is the House speciality coffee shown by one of the label filed as Exhibit “B”, as argued by the Registrant in his written representations. Furthermore, despite the Requesting Party’s submissions to the contrary, the Registrant does match the products covered by invoice #101916 to the registered wares. In this regard, the Registrant explains at paragraph 8 of his declaration that the item “Myan Hot Chocolate” is a cocoa product and that the other items in invoice #101916 are either roasted whole bean or ground coffee products. Also, to the extent that the Registrant pointed out that one item of invoice #101916 refers to a cocoa product but did not do so for invoice #101904, I find it is reasonable to infer that all of the items covered by this invoice are either roasted whole bean or ground coffee products.
[45] This leads me to turn to the Requesting Party relying on paragraph 8 of the declaration to argue that the evidence provided by the Registrant relates to roasted whole bean and ground coffee products, not “roasted whole bean and ground coffee”, and to cocoa products, not “cocoa”. Once again, I find that the requesting Party’s submissions is based on an over technical approach. Although the Registrant uses the word words “product” and “products” in paragraph 8 of his declaration, it is apparent that these words are superfluous. I agree with the Registrant that the references to “cocoa product” and “either roasted whole bean or ground coffee products” can appropriately be read as “cocoa” and “either roasted whole bean or ground coffee” respectively.
[46] Also, the Requesting Party did not convince me that since hot chocolate is a drink, the use of the Mark in association with this product is not use in association with “cocoa”. In this regard, suffice it to note that the online Canadian Oxford Dictionary defines the word “cocoa” as: “1. a powder made from crushed cacao seeds, often with other ingredients; 2. a drink made from this powder and hot water or milk.”
[47] Finally, the Registrant has provided labels, which properly evidence use of the Mark in association with wares within the meaning of section 4(1) of the Act. Although both labels reference “fresh roasted coffee”, considering the evidence as a whole, I agree with the Registrant that the labels were clearly filed as representative of the labels applied to each of the registered wares.
[48] In the end, I am satisfied that the evidence provided by the Registrant is sufficient to establish use of the Mark in association with each of the registered wares.
Disposition
[49] In view of all of the foregoing, I am satisfied that the evidence shows use of the Mark in Canada by the Registrant, within the meaning of sections 4(1) and 45 of the Act, in association with the each of wares specified in registration No. TMA630,920.
[50] Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with section 45 of the Act, registration No. TMA630,920 will be maintained.
______________________________
Céline Tremblay
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office