LE REGISTRAIRE DES MARKS DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2014 TMOB 146
Date of Decision: 2014-05-06
TRANSLATION
IN THE MATTER OF A SECTION 45 PROCEEDING requested by Riches, McKenzie & Herbert LLP against registration No. TMA668,137 for the trade-mark SMART TOOL in the name of D’Amour Bicycles & Sport Inc.
[1] This decision pertains to a summary expungement proceeding requested against registration No. TMA668,137 for the trade-mark SMART TOOL (the Mark) in association with:
[TRANSLATION] Bicycle tools, namely chain cleaner, free wheel brush, apron, repair stand, spoke range, wheel aligner, cone wrench, chain rivet extractor, Allen wrench set, pedal extractor, pedal wrench, cassette extractor, free wheel extractor, cartridge extractor, cable cutting pliers, pressure gauge, tire lever, lubricant and grease, patch (the Wares).
[2] In light of the evidence of record and on the grounds described hereinafter, I conclude that the Registrant (hereinafter defined) did not prove the use of the Mark in Canada in association with the Wares within the meaning of section 4(1) of the Trade-marks Act, RSC 1985, c T-13 (the Act) during the Relevant Period (defined hereinafter).
The proceedings
[3] On April 18, 2012, on the application of Riches, McKenzie & Herbert LLP (the Applicant), the Registrar sent the Section 45 notice of the Trade-marks Act, RSC 1985, c. T-13 (the Act) to D’Amour Bicycles & Sport Inc. (the Registrant).
[4] Section 45 of the Act obliges the Registrant to prove that it has used the Mark in Canada in association with each of the Wares specified in the registration at any time during the three-year period preceding the date of the notice and, if not, the date when it was last used and the reason for the absence of use since that date. The Relevant Period is therefore from April 18, 2009 to April 18, 2012 (the Relevant Period).
[5] The Section 45 proceeding is simple and expeditious and serves to eliminate “dead wood” from the register. Thus, the threshold required to establish the use of the Mark, within the meaning of section 4 of the Act, during the Relevant Period, is not very high [see Uvex Toko Canada Ltd v. Performance Apparel Corp (2004), 31 C.P.R. (4th) 270 (F.C.T.D.)].
[6] A mere allegation of use of the Mark in association with the Wares is insufficient to establish its use within the meaning of section 4(1) of the Act. There is no need to file abundant evidence. However, any ambiguity in the evidence will be interpreted against the Registrant [see Plough (Canada) Ltd v. Aerosol Fillers Inc (1980), 53 C.P.R. (4th) 62 (F.C.A.)].
[7] In response to the notice, the Registrant filed the affidavit of Mr. Denis D’Amour, who declares he is the ‘owner’ of the Registrant. The Applicant filed written representations. The Registrant did likewise but, in order to mitigate the deficiencies identified by the Applicant in its written representations, it filed additional documents appended to its own written representations. Moreover, the Registrant’s written representations refer to facts that are not described in Mr. D’Amour’s affidavit. The parties were presented at a hearing.
Preliminary remarks
[8] The Section 45 proceeding of the Act has been described as summary on many occasions. It is not inherently a litigious proceeding. The Registrant may not file additional evidence to make up for the deficiencies raised by the Applicant in its written representations. As I mentioned at the beginning of the hearing, I will limit myself to the contents of Mr. D’Amour’s affidavit and its attachments. Thus, any argument based on additional documents we find attached to the Registrant’s written representations will be deliberately ignored and no reference will be made to them in my decision.
[9] Before analyzing this evidence, I wish to reproduce the text of 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.
The evidence
[10] Mr. D’Amour’s affidavit can be summarized as follows:
• He filed a copy of the Registrar’s notice dated April 18, 2012;
• he alleged that the Registrant obtained the registration of the Mark on July 18, 2006 and filed a copy of the certificate of registration;
• he alleged that the Registrant uses the Mark to market bicycle tools. He filed as a Schedule a list of products that are part of the Wares;
• he filed two photographs showing some of the Wares in their packaging, bearing the Mark;
• he alleged that the Registrant produces an annual catalogue to show the products available. Among these products are Wares bearing the Mark. He filed a photograph of one of the pages of this catalogue;
• moreover, he alleged that the Registrant operates a website at www.damourbicycles.com and he filed a photograph of one of the pages of this website illustrating some of the Wares bearing the Mark;
• he affirmed that the Registrant distributes Wares bearing the Mark to its customers and filed a copy of a sales invoice to a customer dated July 10, 2012.
[11] I must mention that nowhere in his affidavit does M. D’Amour refer to the Relevant Period and no date is mentioned in his affidavit, except for the date the certificate of registration was issued for the Mark. As for the date of the invoice filed, I was the one who entered it into evidence, because it will have a direct impact on my decision. Finally, Mr. D’Amour’s entire affidavit is written in the present tense and was signed on July 18, 2012.
Analysis of the Applicant’s arguments
[12] It is not surprising that the Applicant, in its written representations and during the hearing, raised several anomalies in this evidence, which would be fatal for the registration in question. I agree with the Applicant, on the following grounds.
[13] First of all, the only proof of sale of Wares bearing the Mark is an invoice dated July 18, 2012, subsequent to the Relevant Period, assuming that the products described on this invoice are Wares associated with the Mark. Thus, it cannot be considered, even if the proof of only one sale during the Relevant Period could have been sufficient for the Registrant to prove the use of the Mark in association with the Wares identified on this invoice.
[14] Mr. D’Amour represented the Registrant at the hearing. He indicated that the Registrant had used the Mark since July 18, 2006, namely the date the certificate of registration was issued. Yet there is no allegation in this sense in his affidavit.
[15] This would be sufficient to dispose of this case. However, I also wish to mention other deficiencies in the Registrant’s evidence, identified by the Applicant.
[16] The catalogue excerpt filed as Schedule E to Mr. D’Amour’s affidavit is marked ‘DAMCO 2012’. Yet the affiant did not provide any information regarding this catalogue’s publication date. During the hearing, Mr. D’Amour tried to convince me that, due to the nature of Registrant’s business, there was no doubt this catalogue had been published and circulated at the end of 2011 or the beginning of 2012. I have no evidence of this in the record.
[17] Since the Relevant Period ended on April 18, 2012, it was essential to know precisely when in 2012 (or possibly in 2011) this catalogue was circulated. Also, Mr. D’Amour did not tell us in his affidavit what ‘DAMCO’ represents. Is this an entity other than the Registrant? Is it a business name of the Registrant? The answers to these questions could have had a direct impact on the outcome of this case. Indeed, if DAMCO is an entity distinct from the Registrant, it then would have been necessary for the Registrant to establish the existence of a license concerning the use of the Mark by this entity, so that it could benefit from section 50 of the Act. Mr. D’Amour, during this hearing, tried to explain to me that this was a business name of the Registrant, but once again I have no evidence of this in the record.
[18] The use of the present tense through Mr. D’Amour’s affidavit (‘uses’, ‘produces’, ‘operates’ and ‘distributes’) places these actions at the time the affidavit was signed (July 18, 2012) and thus subsequent to the Relevant Period.
[19] Although there is no evidence of use of the Mark in association with the Wares within the meaning of section 4(1) of the Act during the Relevant Period, it is still possible for the Registrant to avoid the expungement of its registration if it specifies the date when the Mark was last used and the reason for the absence of use since that date. [see section 45(1) of the Act]. Yet Mr. D’Amour’s affidavit contains no information on this subject.
Disposition
[20] Pursuant to the authority delegated to me under section 63(3) of the Act, registration No. TMA668,137 will therefore be expunged from the register, the whole pursuant to section 45 of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
Traduction certifiée conforme
Arnold Bennett, trad.