OPIC		CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADE-MARKS

   Citation: 2017 TMOB 58

Date of Decision: 2017-05-29

IN THE MATTER OF A SECTION 45 PROCEEDING

	Patrick J. Hofbauer	Requesting Party
and
	Winnipeg Outfitters Inc.	Registered Owner
	TMA463,145 for THE CANADIAN HERITAGE COMPANY	Registration

[1]  At the request of Patrick J. Hofbauer (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 July 10, 2015 to Winnipeg Outfitters Inc. (the Owner), the registered owner of registration No. TMA463,145 for the trade-mark THE CANADIAN HERITAGE COMPANY (the Mark).

[2]  The Mark is registered for use in association with retail and catalogue sales of outdoor equipment and clothing.

[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 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 July 10, 2012 and July 10, 2015 (the Relevant Period).

[4]  The definition of “use” in association with services is set out in section 4(2) of the Act:

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.

[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 removing “deadwood” from the Register. The criteria for establishing use are not demanding and an overabundance of evidence is unnecessary. Nevertheless, sufficient facts must be presented to allow the Registrar to conclude that the trade-mark was used in association with each of the goods or services specified in the registration at any time during the relevant period [see Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448]. Mere statements of use are insufficient to prove use of the trade-mark [see Plough (Canada) Ltd  v Aerosol Fillers Inc  (1980), 53 CPR (2d) 62 (FCA)].

[6]  In response to the Registrar’s notice, the Owner filed the affidavit of John Nelson sworn on September 28, 2015 in Winnipeg, Manitoba with Exhibits A-V.

[7]  Only the Owner filed written representations; a hearing was not held.

The Owner’s Evidence

[8]  Mr. Nelson is the President of the Owner (para 1).  He explains that the Owner is a catalogue and retail seller of clothing, outerwear, footwear and outdoor equipment and accessories (para 2).  The Owner is based in Winnipeg and distributes catalogues throughout Canada and has a retail outlet located in Winnipeg (para 2).  Mr. Nelson attaches to his affidavit the covers of various catalogues, a copy of a complete catalogue and advertisements posted on the Owner’s Facebook page.

[9]  The design set out below this paragraph appears on the front cover of catalogues distributed during the Relevant Period (Exhibits K, M, O-U) and in Facebook advertisements posted during the Relevant Period (Exhibits J and L).  The Facebook advertisements promote sales through a toll free order line, the website www.outfitters.ca, and at the retail outlet.  The catalogues are distributed throughout Canada and include items of outdoor equipment and clothing.  Mr. Nelson provides a copy of the 2015 Summer Catalogue issued prior to the date of the section 45 notice which he attests includes the same content as each of the catalogues referred to in his affidavit (para 28, Exhibit V).  The 2015 Summer Catalogue includes outdoor equipment such as binoculars, packs, sleeping bags, and axes, and clothing such as outdoor jackets and pants.  The catalogue includes an order form, ordering information for customers wishing to place orders by telephone and on the internet, and shipping and handling fees across Canada for both cash-on-delivery orders and pre-paid parcels.

[10]  The design on the catalogues and Facebook advertisements includes THE CANADIAN HERITAGE COMPANY set above a circle which includes inside it WINNIPEG OUTFITTERS INC and a wolf howling at a full moon.  Although the catalogues and advertisements show more than one trade-mark being used at the same time in association with the services, it is trite law that there is nothing to prevent two trade-marks being used at the same time [see A.W. Allen Ltd v Warner-Lambert Canada Inc (1985), 6 CPR (3d) 270 (FCTD) and Canadian Council of Professional Engineers v Ardex Inc. (2001), 13 CPR (4th) 554 (TMOB)]. Furthermore, I am satisfied that the trade-mark THE CANADIAN HERITAGE COMPANY stands out sufficiently to be perceived as the trade-mark per se being used in association with the services [see Nightingale Interloc Ltd. v Prodesign Ltd. (1984), 2 CPR (3d) 535 (TMOB)].

[11]  Finally, Mr. Nelson attests that the Owner’s net revenue through the catalogues exceeded $2.5 million per year for each of the years 2012-2015; and over $475,000 per year through retail sales for each of the years 2012-2015 (paras 31-32).

Analysis of the Evidence

[12]  Mr. Nelson clearly attests to use of the Mark in association with the registered services and provides representative evidence of the Mark on catalogues mailed throughout Canada and advertisements placed on the Owner’s Facebook page.  Further, Mr. Nelson has provided the Owner’s net revenue through both catalogue sales and its retail outlet for each of the years during the Relevant Period. 

[13]  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 registered services within the meaning of sections 4(2) and 45 of the Act. 

Disposition

[14]  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 maintained.

Natalie de Paulsen Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

 

 

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENTS OF RECORD

Thompson Dorfman Sweatman LLP	For the Registered Owner
Hofbauer Professional Corporation	For the Requesting Party