Citation: 2017 TMOB 85

Date of Decision: 2017-07-26

IN THE MATTER OF A SECTION 45 PROCEEDING

	Goudreau Gage Dubuc S.E.N.C.R.L./LLP	Requesting Party
and
	GSC Technologies Inc.	Registered Owner
	TMA602,752 for ENDURO & Design	Registration

[1]  At the request of Goudreau Gage Dubuc S.E.N.C.R.L./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 February 25, 2015 to 4014472 Canada Inc., the registered owner at that time of registration No. TMA602,752 for the trade-mark ENDURO & Design (the Mark), currently owned by GSC Technologies Inc. (the Owner) and shown below:

[2]  The Mark is registered for use in association with the following goods:

Furniture, namely picnic tables, banquet tables, utility tables, portable tables, plastic folding tables, chairs, folding chairs and portable chairs.

[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 goods 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 use since that date. In this case, the relevant period for showing use is February 25, 2012 to February 25, 2015.

[4]  The relevant definition of use with respect to goods is set out in section 4(1) of the Act, as follows:

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.

[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 goods specified in the registration during the relevant period.

[6]  In response to the Registrar’s notice, the Owner furnished the affidavit of Robert Farber, President of the Owner, sworn on September 25, 2015 in Montreal. Only the Owner filed written representations; an oral hearing was not requested.

The Owner’s Evidence

[7]  In his affidavit, Mr. Farber attests that the Mark was registered in the name of 4014472 Canada Inc. on February 19, 2004. He confirms that ownership of the Mark was transferred to the Owner on May 10, 2004 prior to the dissolution of 4014472 Canada Inc. on November 2, 2005. The assignment was registered on October 26, 2015, after Mr. Farber’s affidavit was furnished.

[8]  Mr. Farber attests that the Owner is a “manufacturer and designer of plastic goods such as storage and organization products, folding tables and chairs, sporting goods and household products”. He states that the Owner’s goods are sold to Canadian retailers such as The Home Depot and Costco.

[9]  Mr. Farber asserts that the Owner used the Mark in association with all the registered goods in Canada during the relevant period. In this respect, he explains that the Owner’s “plastic folding tables can also be described as banquet tables, utility tables and portable tables” and that the Owner’s “folding chairs can also be described as portable chairs”.

[10]  In support of his assertion of use, attached to Mr. Farber's affidavit are the following exhibits:

• Exhibit RF-2 is a product label for a plastic adjustable table. The label displays a photograph of a table and identifies it as a “personal table”. The label describes the table as being “ideal for both indoor and outdoor use” and “perfect for both home and office”. The Mark appears on the label. Mr. Farber asserts that the label was applied to the packaging of such tables during the relevant period.
• Exhibit RF-3 is a photograph of packaging for a large table with folding legs. The packaging identifies the product as a “folding table” and describes the table as “perfect for indoor and outdoor use”, “stores anywhere”, and as having “easy carry handles”. The Mark appears on the packaging and Mr. Farber confirms that the exhibit is representative of such packaging from the relevant period.
• Exhibit RF-4 consists of two invoices from the Owner to The Home Depot Canada, dated within the relevant period. Mr. Farber identifies two of the product codes listed on the invoices as corresponding to the Owner’s “plastic folding tables” sold under the Mark.
• Exhibit RF-5 is a label for a plastic folding chair. The label identifies the product as a “folding chair” and displays a photograph of the chair. The Mark appears on the label. Mr. Farber confirms that the label is representative of those applied to the packaging of the Owner’s folding chairs during the relevant period.
• Exhibit RF-6 is a photograph of packaging for the same “folding chair”. Again, the packaging identifies the product as a “folding chair” and the Mark appears on the packaging. Mr. Farber confirms that the packaging is representative of such packaging from the relevant period.
• Exhibit RF-7 is an invoice from June 2013 showing a bulk sale from the Owner to Costco Canada Inc., located in Ontario. The invoice identifies the goods sold as GSC Model #CH184001 and Mr. Farber describes the invoiced goods as “folding chairs”. I note that the product code corresponds to the “folding chair” depicted in Exhibit RF‑5.

[11]  Aside from the recitation of the statement of goods from the registration, I note that at no point in his affidavit does Mr. Farber refer to the tables sold by the Owner as “picnic tables”. Similarly, although the packaging shown in Exhibit RF-3 depicts the table in an outdoor setting, none of the exhibits refer to “picnic tables”.

Preliminary Matter

[12]  With respect to the change in ownership, in its written representations, the Owner submits that an unrecorded successor-in-title can submit evidence in response to a section 45 notice as long as it satisfies the Registrar that it was the owner of the registered mark during the relevant time period [citing Gowling Lafleur Henderson LLP v Canada Home Guide Inc, 2015 TMOB 105, CarswellNat 2783]. In this case, I note that the evidence shows that the transfer of ownership was made prior to the issuance of the section 45 notice.

[13]  Despite the passage of time since the Owner’s acquisition of the Mark, the fact that the transfer of ownership was not registered as of the date of the Registrar’s notice is not prejudicial in the present case. Indeed, there is no obligation to record a change in ownership on the register and the Federal Court has held that an assignment may be valid even if it is not registered [Sim & McBurney v Buttino Investments Inc (1996), 66 CPR (3d) 77 (FCTD)].

[14]  As such, and in the absence of representations from the requesting party, I accept that the Owner was the owner of the Mark during the relevant period.

Analysis

[15]  The issue in this case is whether the evidence with respect to the exhibited “personal table”, “folding table” and “folding chair” corresponds to each of the registered goods.

Tables

[16]  With respect to the registered “table” goods, the evidence shows use of the Mark in association with two types of tables, identified on their packaging as a “personal table” and a plastic “folding table”. It is clear that both tables are foldable and portable. 

[17]  With respect to the registered goods “plastic folding tables”, Mr. Farber’s assertion of use is supported by evidence of sales in the form of the exhibited invoices issued to The Home Depot during the relevant period (Exhibit RF-4). As the evidence shows that the Mark was displayed on the packaging of such goods (Exhibit RF-3), I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “plastic folding tables” within the meaning of sections 4 and 45 of the Act. In this respect, again, I note that the packaging itself identifies the good as a “folding table”.

[18]  With respect to the registered goods “portable tables”, the evidence shows that the “personal table” depicted in Exhibit RF-2 is “ideal for both indoor and outdoor use” and “perfect for both home and office”. Furthermore, the packaging shows a small and easy-to-carry table. As such, I am satisfied that the description and the photograph in Exhibit RF-2 are sufficient to characterize the exhibited “personal table” as corresponding to the registered goods “portable tables”.

[19]  Accordingly, I am also satisfied that the Owner has demonstrated use of the Mark in association with “portable tables” within the meaning of sections 4 and 45 of the Act.

[20]  With respect to the other types of tables, citing Mr. Farber’s affidavit, the Owner asserts that “plastic folding tables are also referred to as banquet tables, utility tables and portable tables”. In support, the Owner argues that evidence for certain goods in the various categories of goods is sufficient to maintain the registration for all the specific items listed in the registration, and that there is no requirement that evidence be submitted for every item in each category [citing Saks & Co v Canada (Registrar of Trade-marks) (1989), 24 CPR (3d) 49 (FCTD)].

[21]  However, this is not a case where the evidence is representative of broader categories of goods, as was the case in Saks. While the Federal Court in Saks considered that furnishing evidence for all of the 28 distinct categories of registered goods and services would have placed an unreasonable burden on the registered owner in that case, the present case deals with only one category – furniture – encompassing a total of eight registered goods. Thus, it is not unreasonable to expect that the Owner furnish particular evidence with respect to all of the registered goods. In this respect, however, the supporting exhibits only shows evidence with respect to two types of tables (and one type of chair).

[22]  Furthermore, the Owner distinguished “picnic tables”, “banquet tables”, “utility tables”, “portable tables” and “plastic folding tables” in the statement of goods and, as such, is required to produce separate evidence with respect to each type of table accordingly [per John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA) and MAPA GmbH Gummi-und Plastikwerke v 2956-2691 Québec Inc, 2012 TMOB 192, CarswellNat 4869]. Although the Owner has furnished evidence of use with respect to “plastic folding tables” and “portable tables”, as set out above, there is no evidence of use with respect to the other types of tables.

[23]  Indeed, nothing in the evidence indicates that the Owner sold “picnic tables”, “utility tables” or “banquet tables” in association with the Mark or otherwise.

Chairs

[24]  With respect to the registered “chair” goods, only one type of chair, a “folding chair”, is shown in the evidence. Mr. Farber’s assertion of use is supported by evidence of sales in the form of the exhibited invoices issued to Costco Canada during the relevant period (Exhibit RF‑7). As the evidence shows that the Mark was affixed to such goods via labels and packaging (Exhibits RF-5 and RF-6), I am satisfied that the Owner has demonstrated use of the Mark in association with the registered goods “folding chairs” within the meaning of sections 4 and 45 of the Act. Again, in this respect, I note that the packaging itself identifies the product as a “folding chair”.

[25]  Otherwise, in its written representations, the Owner submits that “a folding chair is also a portable chair” and “a folding chair is, by definition a chair”. As such, it submits that “evidence of use of the Mark for folding chairs constitutes evidence of use for all chairs specifically identified in the list of goods”. 

[26]  However, the same reasoning as set out above for the registered “table” goods applies to “chairs” and “portable chairs”. Although the Owner has furnished evidence of use with respect to “folding chairs”, there is no evidence of use with respect to other types of chairs that are not “folding chairs” and there is nothing in the evidence to indicate that the Owner sold more than one type of chair in association with the Mark or otherwise.  

[27]  Furthermore, per section 30 of the Act, a statement of goods must be in ordinary commercial terms. As such, to the extent there is a difference between “chairs”, “portable chairs” and “folding chairs”, the Owner appears to have only given evidence of the latter good.

[28]  In view of all of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with “picnic tables”, “banquet tables”, “utility tables”, “chairs” and “portable chairs” within the meaning of sections 4 and 45 of the Act. As there is no evidence of special circumstances excusing such absence of use before me, the registration will be amended accordingly.

Disposition

[29]  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 amended to delete the following from the statement of goods: “… picnic tables, banquet tables, utility tables, … chairs, … portable chairs”.

[30]  The amended statement of goods will be as follows:

Furniture, namely portable tables, plastic folding tables and folding chairs.

Andrew Bene

Hearing Officer

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

Gowling WLG (Canada) LLP	For the Registered Owner
Goudreau Gage Dubuc S.E.N.C.R.L./LLP	For the Requesting Party