LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2017 TMOB 21
Date of Decision: 2017-01-31
IN THE MATTER OF A SECTION 45 PROCEEDING
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Smart & Biggar
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Requesting Party |
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1775289 Ontario Inc.
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Registered Owner
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TMA776,327 for PASTABILITIES & Design
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Registration
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[1]
This is a decision involving a summary expungement proceeding with respect to registration No. TMA776,327 for the trade-mark PASTABILITIES & Design (the Mark), owned by 1775289 Ontario Inc. (the Owner). The Mark is shown below:
(the Mark).
[2]
The Mark is registered for use in association with the following: “Pre-made pasta; pre-made pasta sauce” (the Goods) and “Restaurant and restaurant take-out services” (the Services).
The Proceeding
[3]
On December 5, 2014, the Registrar of Trade-marks sent a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) to the Owner of the Mark. The notice was sent at the request of Smart & Biggar (the Requesting Party).
[4]
The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between December 5, 2011 and December 5, 2014 (the Relevant Period), in association with each of the registered goods and services. If the Mark had not been so used, the Owner 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.
[5]
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”. Mere statements of use are insufficient to prove use [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. The criteria for establishing use are not demanding [see Woods Canada Ltd v Lang Michener et al (1996), 71 CPR (3d) 477 (FCTD)] and an overabundance of evidence is not necessary [see Union Electric Supply Co v Canada (Registrar of Trade-Marks) (1982), 63 CPR (2d) 56 (FCTD)]. Nevertheless, sufficient evidence must still be provided to allow the Registrar to conclude that the Mark was used in association with each of the registered goods and services specified in the registration [Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270].
[6]
In response to the Registrar’s notice, the Owner filed the affidavit of Mahassen Farah, Chief Executive Officer of the Owner, sworn on July 6, 2015.
[7]
Neither parties filed written submissions nor was a hearing requested.
The Evidence
[8]
Ms. Farah states that during the Relevant Period she was also the CEO and owner of both 1778246 Ontario Inc. and 1778247 Ontario Inc. (collectively referred to as the Licensees), licensees of the Owner with respect to the Mark. She adds that the Licensees used the Mark in association with standards as set out by the Owner.
[9]
Ms. Farah asserts that during the Relevant Period the Owner and the Licensees used the Mark in association with the Goods by having the Mark “on the pre-made pasta and pasta-sauce products, at the time of the sale of the goods; in advertisements and the performance of restaurant and take-out restaurant services”.
[10]
In this respect, Ms. Farah explains that the Owner and the Licensees operated two restaurant locations, one on King Street and identified in her affidavit as The Pastabilities King Street Location and another one on University Avenue, referred to as The Pastabilities Food Court Location.
[11]
With respect to the Pastabilities King Street location, Ms. Farah states that the Owner and the Licensees “began provided the [Services] to the public at the Pastabilities King Street Location during the [Relevant] Period” and “was in operation as of December 5, 2011 and operated continuously until August 2012”. She attaches as Exhibit A a photograph of the Pastabilities King Street Location store front showing the word mark PASTABILITIES as displayed during the Relevant Period. She affirms that the restaurant services at such location included formal sit-down as well as take-out packaged food products including pre-made pasta and pasta-sauce for off-site consumption.
[12]
Ms. Farah also attaches extracts of the website located at www.yelp.ca displaying the word mark PASTABILITIES on a photograph of the store front of the Pastabilities King Street Location and containing reviews from customers. Some of these reviews were posted on the website during the Relevant Period.
[13]
With respect to the Pastabilities Food Court location, Ms. Farah explains that it was located in the Toronto’s Hospital for Sick Children during the Relevant Period. She asserts that restaurant and take-out services were provided at this location until December 2012. She explains that the restaurant services offered at that location included on site food court dining as well as take-out packaged food products including the Goods for off-site consumption. In support, she attaches, as Exhibit C, photographs of the Pastabilities Food Court Location store front. However, only the word mark PASTABILITIES is shown to have been displayed.
[14]
Ms. Farah adds that the Mark was prominently displayed and visible to customers on menus, signage, business cards, promotional material, take-out food packaging, and advertising. She attaches as Exhibit D samples of such material used during the Relevant Period. She also states that the Mark appeared on the website www.pastabilities.ca., operated by the Opponent and the Licensees. She attaches as Exhibit E copies of the content displayed at such website during the Relevant Period.
[15]
I note that the Mark does not appear on the signage and menus attached as Exhibit D. Only the word mark PASTABILITIES can be seen on those exhibits.
[16]
Ms. Farah also attaches, as Exhibit H, a copy of a sticker bearing the Mark used to “close each take-out salad sold by the [Owner] and its licensees during the Relevant Period”. She adds that business cards displaying the Mark as shown in Exhibit G were also widely distributed for promotional purposes.
[17]
Ms. Farah affirms that the Goods were purchased in the normal course of trade by customers at both locations. She explains that the Mark was marked on the packaging of the Goods by way of pre-made pasta and pre-made pasta sauce packaging and she attaches as Exhibit F copies of such packaging used by the Owner and its Licensees during the Relevant Period. The Mark appears on such packaging.
Analysis of the evidence
Use of the Mark in association with the Goods
[18]
Section 4(1) of the Act sets out the relevant definition of “use” in association with goods:
4(1) A trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred.
[19] The evidence described above shows that:
The Mark appeared on packaging for the Goods;
The Goods were placed in these packages;
The Goods were sold by the Owner and its two Licensees in the normal course of trade during the Relevant Period in packaging bearing the Mark.
[20]
Therefore, the Owner has demonstrated use of the Mark in association with the Goods within the meaning of section 4 and 45 of the Act.
Use in association with the Services
[21]
Section 4(2) of the Act sets out the relevant definition of “use” in association with services:
4(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[22] As for the Services, although the Mark as registered did not appear on the restaurant signage or the exhibited menus, it did appear in the form of advertising on the Owner’s website as well on business cards. As well, as described by the deponent, I would accept that the display of the Mark on take-out packaging would have constituted use in the performance of the Services.
[23] In view of the foregoing, and in the absence of representations from the Requesting Party, I am satisfied that the Owner has demonstrated use of the Mark in association with the Services, within the meaning of sections 4 and 45 of the Act.
Conclusion
[24]
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 TMA776,327 will be maintained.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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NO HEARING
AGENT(S) OF RECORD
Gowling WLG (Canada) LLP FOR THE REGISTERED OWNER
Smart & Biggar FOR THE REQUESTING PARTY