Citation: 2017 TMOB 82

Date of Decision: 2017-07-04

IN THE MATTER OF A SECTION 45 PROCEEDING

	LE PEPEˈ SRL	Requesting Party
and
	PJ Hungary Kft.	Registered Owner
	TMA323,744 for PEPE	Registration

• [1] At the request of LE PEPEˈ SRL (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 18, 2015 to PJ Hungary Kft. (the Owner), the registered owner of registration No. TMA323,744 for the trade-mark PEPE (the Mark).

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

(1) Clothing, namely jeans.

(2) Clothing, namely jeans, shirts, jackets, belts, caps, T-shirts, sweat shirts, dresses, skirts, waistcoats, trousers, belts, braces, blazers, blusons, dungarees, jump suits, blouses, shorts, jumpers, cardigans, track shirts, overalls.

(3) Clothing, namely trousers, shorts, jackets, T-shirts, shirts, sweat shirts, blouses, jumpers, cardigans, waistcoats, jumpsuits, tracksuits, overalls, belts, braces and jeans.

(4) Clothing, namely jackets, coats, topcoats, shoes, blazers, caps.

(5) Clothing, namely trousers, shirts, jackets, T-shirts, dresses, skirts.

 

The overlap and repetition within the statement of goods is attributable to the different claim bases in the registration, which are not relevant to this proceeding.

• [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 such use since that date. In this case, the relevant period for showing use is between February 18, 2012 and February 18, 2015.

• [4] The relevant definition of “use” in association with 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 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. While mere assertions of use are not sufficient to demonstrate use in the context of a section 45 proceeding [see Plough (Canada) Ltd v Aerosol Fillers Inc (1979), 45 CPR (2d) 194 (FCTD), aff’d (1980), 53 CPR (2d) 63 (FCA)], the threshold for establishing use in these proceedings is quite low [see Lang, Michener, Lawrence & Shaw v Woods Canada Ltd (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [see Union Electric Supply Co v Canada (Registrar of Trade-marks) (1982), 63 CPR (2d) 56 (FCTD)]. However, 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 an affidavit of Nathalie Genty, CEO at BEBEO trading as MELIJOE.COM (Melijoe), sworn in Paris, France on September 17, 2015, together with Exhibits 1 to 11, and accompanying “Attestation” dated September 18, 2015. Neither party filed written representations or requested a hearing.

The Owner’s Evidence

• [7] In her affidavit and accompanying attestation, Ms. Genty states that Melijoe is an authorized distributor of the Owner. She explains that Melijoe is authorized to sell merchandise bearing the Mark throughout Canada (among other countries), and was authorized to do so throughout the relevant period.

• [8] More particularly, Ms. Genty states that Melijoe offers for sale and sells PEPE merchandise in Canada through its website at www.melijoe.com, and did offer for sale and sell PEPE merchandise in Canada through such website throughout the relevant period. She explains that the Melijoe website operates as an online store where customers, including Canadian customers, can browse PEPE branded merchandise. By completing an order online, customers including Canadian customers can order such merchandise directly from Melijoe for shipment to their home. Customers who access the Melijoe website from Canada view prices for PEPE branded merchandise in Canadian dollars. They can also choose to view the website content in English or French.

[9]  Ms. Genty states that, in addition to PEPE branded merchandise, the www.melijoe.com website offers other brands of merchandise for sale. The merchandise available for sale on the website is generally grouped according to brand, on dedicated webpages displaying the merchandise for that brand. A prospective customer can access the webpages for a particular brand by clicking on links that identify the brand. The brand is also displayed on the webpages dedicated to that brand.

[10]  Ms. Genty states that, as can been from the printouts and screenshots of the www.melijoe.com website as it appeared during the relevant period (which will be identified in paragraph 12 below), PEPE is displayed on the dedicated webpages, and would be seen by customers viewing the website and ordering merchandise through the website from Canada. She attests that PEPE also appears prominently on “much” of the merchandise itself.

• [11] Ms. Genty states that the Owner asked Melijoe to provide invoices to show that PEPE merchandise was sold and shipped to customers in Canada, but due to strict data protection regulations in France, she indicates that Melijoe could not provide copies of the invoices. However, from a review of Melijoe’s records, Ms. Genty confirms that Melijoe sold PEPE merchandise and shipped that merchandise to customers in Canada during the relevant period.

• [12] In support, Ms. Genty attaches the following exhibits to her affidavit:

• Exhibit 3, which she describes as printouts and screenshots from the current www.melijoe.com website.

• Exhibits 4 to 10, which she describes as printouts and screenshots of pages from the Wayback Machine internet archive, showing pages from the www.melijoe.com website as it would have appeared during the relevant period. Ms. Genty attests that the merchandise shown on the archived pages is representative of PEPE branded merchandise that was available for purchase by Canadian consumers through the online store, during the relevant period. She further attests that:

• a) Exhibit 4 consists of archived pages from March 2013 showing a jacket and a blazer;

• b) Exhibit 5 consists of archived pages from July 2013 showing a t-shirt, sweat shirt, sweater (or “jumper”), jeans or dungarees, coats, shirt, jump suit, belt, skirt, shorts, blouse, dress, caps, jacket;

• c) Exhibit 6 consists of archived pages from October 2013 showing a jacket, coat, sweater (or “jumper”), jeans or dungarees, skirt, shoes, tracksuits, belt, sweat shirt, track shirt, cardigan;

• d) Exhibit 7 consists of archived pages from December 2013 showing a dress, blazer, sweater (or “jumper”), jeans or dungarees, shoes, jacket, coat, tracksuits, sweat shirts, skirts, belt, shoes, track shirt, cardigan;

• e) Exhibit 8 consists of archived pages from February 2014 showing a dress, t-shirt, jacket, jeans, shoes, blouse, jeans or dungarees, shorts, sweater (or “jumper”);

• f) Exhibit 9 consists of archived pages from June 2014 showing a dress, t-shirt, jacket, shoes, blouse, jeans or dungarees, shorts, sweater (or “jumper”), belt, caps;

• g) Exhibit 10 consists of archived pages from August 2014 showing a coat, jeans or dungarees, sweater (or “jumper”), trouser, shorts, shoes.

• Exhibit 11, which she describes as a printout of Melijoe sales record showing items that were sold to Canadian customers through the www.melijoe.com website, and shipped to Canadian customers, during the relevant period. Ms. Genty explains that the printout includes “category” and “subcategory” columns that provide a description of the type of merchandise sold (jeans, tops, t-shirts, etc.). She attests that the photographs of PEPE merchandise shown in the printouts of the webpages attached as Exhibits 3-10 are representative of the PEPE merchandise that was purchased by and shipped to customers in Canada during the relevant period, as recorded on the printout that is attached as Exhibit 11.

[13]  Upon review of these exhibits, I note that “PEPE” is never displayed on its own. Rather, it is always used along with “JEANS” and sometimes also with other elements such as “LONDON” or the abbreviation “LDN”, as per some of the examples of the PEPE branded merchandise reproduced below, taken from Exhibits 3 and 6:

 

Excerpts from Exhibit 3

Excerpts from Exhibit 6

 

analysis

[14]  I find there are two main issues in this case, namely: (i) whether the evidence demonstrates use of the Mark as registered; and (ii) whether the evidence demonstrates use of the Mark in association with each of the registered goods during the relevant period.

Does the evidence show use of the Mark as registered?

[15]  The test for deviation, as articulated by the Federal Court of Appeal in Canada (Registrar of Trade Marks) v Cie internationale pour l'informatique CII Honeywell Bull, SA (1985), 4 CPR (3d) 523 (FCA) is as follows:

The practical test to be applied in order to resolve a case of this nature is to compare the trade mark as it is registered with the trade mark as it is used and determine whether the differences between these two marks are so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin. [at 525]

[16]  As the Court of Appeal noted:

That question must be answered in the negative unless the mark was used in such a way that the mark did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used”. [at 525]

[17]  In deciding this issue, one must look to see if the “dominant features” of the trade-mark have been preserved [see Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA)]. The assessment as to which elements are the dominant features and whether the deviation is minor enough so as to permit a finding of use of the trade-mark as registered is a question of fact to be determined on a case-by-case basis. Lastly, the use of a trade-mark in combination with additional words or features constitutes use of the registered mark if the public, as a matter of first impression, would perceive the trade-mark per se as being used [see Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)]

[18]  In this case, I note that “PEPE JEANS” generally appears in one font size and style or in one continuous unitary design. However, I find that “JEANS” would be viewed as merely descriptive of the type of clothing goods offered by the Owner, as illustrated by the following description found at page 52 of Exhibit 3:

Straight from London, British brand Pepe Jeans rose to stardom in the 1970s with jeans that were anything but the norm. Back then, the young and fashion conscious were lining up under a railway bridge to get their hands on a pair of unique, urban jeans. Today, the brand has risen to the top of the global fashion pack with denim styles for adults and children that are classic, cool and casual. […]

[19]  In other words, I am of the view that “PEPE” for clothing goods would be recognized as the dominant feature when displayed with the additional word “JEANS” that is merely descriptive.

[20]  Such finding is in line with many previous cases where the Registrar has held that similar deviations do not make the trade-marks substantially different [see for example: Ogilvy, Renault v Arbor Restaurants Inc (1994), 55 CPR (3d) 401 (TMOB), where RITZ REDHOTS was held to be use of the mark RITZ for a sandwich consisting of a sausage or weiner enclosed in a bread roll; Riches, McKenzie & Hebert v Pillsbury Co (1995), 61 CPR (3d) 96 (TMOB), where PEA CAULIFLOWER CARROT CLASSIC was held to be use of the mark CLASSIC for frozen and canned vegetables; Goudreau Gage Dubuc & Martineau Walker v Niagara Mist Marketing Ltd (1997), 78 CPR (3d) 255 (TMOB), where NIAGARA MIST COSMETICS was held to be use of the mark NIAGARA MIST for cosmetic and toilet preparations; Borden & Elliott v Olin Corp, 1999 CarswellNat 3488 (TMOB), where UPLAND SHOTSHELLS for shotgun shells was held to be use of the mark UPLAND; and Star Island Entertainment LLC v Provent Holdings Ltd, 2013 TMOB 84, where mansioncasino.com was held to be used of the mark MANSION for casino services].

[21]  Thus, I am satisfied that in this case, the dominant and essential feature of the Mark has been maintained, that the Mark has not lost its identity and remains recognizable, and that the addition of the word “JEANS” to the Mark is not likely to mislead, deceive, or injure the public in any way. Accordingly, I do not consider such addition to be a substantial deviation from the trade-mark as registered, and that the evidence shows use of the registered trade-mark per se.

Does the evidence show use of the Mark with each of the registered goods?

[22]  In this respect, I first note that the statement of goods in the subject registration includes a variety of clothing goods and it is well established that use must be shown in association with all of the goods as registered [see John Labatt Ltd v Rainier Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)]. This is not to say that a registered owner is obligated to provide invoices for each of the registered goods [see Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)].

[23]  In this case, I am satisfied that the Owner has demonstrated use of the Mark in association with all of the registered goods within the meaning of sections 4 and 45 of the Act during the relevant period.

[24]  The Mark is displayed on most of the merchandise itself, and for those goods where it is not clear, the Mark appears throughout the webpages from which customers make orders. Ms. Genty attests that the merchandise listed in the registration was sold to Canadian customers during the relevant period. She further attests that the webpages attached as Exhibits 3 to 10 are representative of the PEPE merchandise that was purchased and shipped to customers in Canada during the relevant period. Her statements regarding transfers of such PEPE branded goods are supported by the Melijoe sales records under Exhibit 11. For example, the printout lists sales of “Pepe Jeans” merchandise under the following categories of goods: “Accessoires”, “Manteaux”, “Tops”, “Jeans”, “Leggings”, “Jupes”, “Blousons et vestes”, “Joggings”, “Sweats”, “Robes”, “Maillots de bain”, “Chaussures”, “Pantacourts”, “Combis”, “Pulls”, and “Pantalons”, and some of these categories are further subdivided in subcategories such as: “Chaussettes”, “Bretelles”, “Manches courtes”, etc. As such, I find it can be determined from the evidence that the Mark was in use with each of the registered goods during the relevant period.

 

Disposition

[25]  Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be maintained in compliance with the provisions of section 45 of the Act.

 

Annie Robitaille

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE No Hearing Held

AGENTS OF RECORD

Borden Ladner Gervais LLP	FOR THE REGISTERED OWNER
Low Murchison Radnoff LLP	FOR THE REQUESTING PARTY