Trademark Opposition Board Decisions

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

Citation: 2017 TMOB 91

Date of Decision: 2017-07-28

IN THE MATTER OF A SECTION 45 PROCEEDING

	Flowers Bakeries Brands, Inc.	Requesting Party
and
	625691 Saskatchewan Ltd.	Registered Owner
	TMA450,786 for NATURE’S OWN WAY & Design	Registration

[1]  At the request of Flowers Bakeries Brands, Inc. (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 28, 2015, to 625691 Saskatchewan Ltd., the registered owner of registration No. TMA450,786 for the trade-mark NATURE’S OWN WAY Design (the Mark), shown below:

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

Cereal grains namely: wheat, wheat grits for brewery adjunct, barley, hulless barley, pearled barley, rye, oats; rice namely: white, brown, wild; pulses namely: lentils, chickpeas, peas, beans, lupin; oilseeds namely: canola, mustard, soybeans, sunflower seeds, roasted spices, coffee, cocoa; mixed ingredients for pet food (no animal protein) namely: cereals namely: wheat, oats, barley, hulless barley, pearled barley, rye, wheat germ, wheat bran; rice namely: white, brown, wild; pulses namely: lentils, chickpeas, peas.

[3]  The Mark is also registered for use in association with the following services: “Custom processing of the above-mentioned wares for repackaging”.

[4]  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 and 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 the trade-mark was last used and the reason for the absence of use since that date.

[5]  In this case, the relevant period for showing use is between July 28, 2012 and July 28, 2015.

[6]  The relevant definitions of “use” are set out in sections 4(1) and 4(2) 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.

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.

[7]  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 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 [John Labatt Ltd v Rainer Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)].

[8]  In response to the Registrar’s notice, the Owner furnished the affidavit of Mark D. Pickard, President of InfraReady Products (1998) Ltd., sworn on October 27, 2015 in Saskatoon. Only the Requesting Party filed written representations; an oral hearing was not requested.

The Owner’s Evidence

[9]  In his affidavit, Mr. Pickard explains that InfraReady is the successor of 625691 Saskatchewan Ltd. Attached as Exhibits A and B to his affidavit are documents from Saskatchewan’s Corporate Registry “showing the conversion and name change of [625691 Saskatchewan Ltd.] occurring on September 10, 1999”. As such, although 625691 Saskatchewan Ltd. continues to be identified on the trade-mark register as the owner of the Mark, the two entities appear to be one and the same. 

[10]  Mr. Pickard generally asserts that, during the relevant period, InfraReady used the Mark in association with all of the registered goods and services.

[11]  In support, attached to his affidavit are the following exhibits:

·  Exhibit D is a copy of a label for InfraReady’s “Friendship Soup Mix”, which Mr. Pickard attests is made up of cereal grains. The ingredients are as follows: “Precooked Pearled Barley, Precooked Green Peas, Precooked Lentils, Precooked Yellow Peas”. The Mark appears on the label.

·  Exhibit E consists of an invoice and related bill of lading showing the bulk sale of “Friendship Soup Mix” from InfraReady to a customer in Saskatchewan during the relevant period. The Mark does not appear on these documents.

·  Exhibit F is a 14-page product catalogue that Mr. Pickard attests accompanies shipments of InfraReady’s goods. He confirms that the products listed in the catalogue were sold during the Relevant Period. The catalogue describes a cereal grain product line, a specialty grain line, an oilseed product line, a rice product line, a bean product line, a lentil product line, a pea product line and a blended product line.  Each line appears to include a variety of products; for example, “Spelt”, “Kamut® Wheat”, “Quinoa” and “Malt” are included within the “specialty grain line”.  Although the product lines are described in a general manner, Mr. Pickard does not correlate any particular product with any particular registered good.
I further note that the descriptions for some of the product lines include reference to “humans” and “human health”; however, nothing in the catalogue indicates that any of the products are targeted for animal consumption.

·  Exhibit G is an invoice and related bill of lading showing the bulk sale of “Canadian Harvest Seed Topping” and “Stabilized Flax Meal” from InfraReady to a customer in Ontario during the relevant period.  In contrast to Exhibit E, the Mark does appear at the bottom of the invoice and at the top of the bill of lading.

·  Exhibit H is a three-page Product Listing Catalogue that Mr. Pickard attests is supplied to InfraReady’s customers, to assist with the selection and ordering of the registered goods.  The products listed include a variety of grains, beans, lentils, oats, peas, rice and other similar goods. The Mark appears prominently on the last page of the catalogue.  Mr. Pickard confirms that the goods listed in the catalogue were sold during the relevant period, citing the documents at Exhibit G as representative of such sales. 
I note that the description under the “Multigrain Blends” product listing states such products are available as “standard combinations or can be custom formulated to specifically suit your needs”. 

·  Exhibit I consists of five pages of labels that Mr. Pickard attests accompanies sample kits of the goods sent to customers who order InfraReady’s products. The Mark appears on the labels.

·  Exhibit J consists of four pages of marketing materials for “ReadyMate” cat litter, which Mr. Pickard attests is an example of the registered “custom processing…” services. The Mark appears on the materials, which describe the benefits of the cat litter product. However, none of the materials reference “custom processing” or the like.

·  Exhibit K is an invoice and related bill of lading showing the bulk sale of ReadyMate cat litter to a customer in Alberta during the relevant period. Although the invoice is from “LitterMate Bio-Products Ltd.”, the address and contact information on the invoice is the same as those of InfraReady.

Analysis - Goods

[12]  In its written representations, the Requesting Party first submits that none of the evidence relates to “roasted spices, coffee, cocoa”. Indeed, there is no reference to such goods in any of the exhibits, in particular the product catalogue listings at Exhibits F and H. As Mr. Pickard correlates the registered goods sold during the relevant period with the products listed in such exhibits, I cannot conclude that the evidence demonstrates use of the Mark in association with roasted spices, coffee or cocoa. 

[13]  With respect to “mixed ingredients for pet food…”, I note that none of the exhibits references food for animals.  The “Friendship Soup Mix” is a product for human consumption, and all of the products and dishes depicted in the various exhibits suggest products for human consumption only; nothing in the evidence indicates that any of the InfraReady goods are “mixed ingredients for pet food”.  The only references to pets are at Exhibits J and K with respect to the ReadyMate cat litter, which is not a food. 

[14]  In the absence of representations from the Owner on this issue, I am not satisfied that it has demonstrated use of the Mark in association “mixed ingredients for pet food …” within the meaning of sections 4 and 45 of the Act.

[15]  With respect to the remaining goods, Mr. Pickard explains that the exhibited catalogues bearing the Mark are used by customers when ordering the registered goods. Furthermore, he attests that all of the products listed in the catalogues were sold by the Owner in Canada during the relevant period, and he provides representative evidence of such sales. Although he does not explicitly correlate the registered goods with the listed products, I note that the catalogues include a variety of categories and subcategories of goods, including grains, rices and beans.  In reviewing the catalogue listings, I am able to correlate each of the registered goods to a listed product, with the exception of “roasted spices, coffee, cocoa”, discussed above.

[16]  As in this case, display of a trade-mark in catalogues and the like can provide the required notice of association between the trade-mark and the goods when it is used by a customer for ordering purposes [see, for example, Hudson’s Bay Co v Sklar-Peppler Furniture Corp (2007), 60 CPR (4th) 174 (TMOB); and Bélanger v Accuride Corp (2004), 31 CPR (4th) 300 (TMOB)].

[17]  As such, it is not necessary to consider the Requesting Party’s submissions that the evidenced “Friendship soup mix” does not correlate with any of the listed registered goods and that the Mark’s appearance on sample kit labels does not constitute use of the Mark. 

[18]  In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in association with the following registered goods within the meaning of sections 4 and 45 of the Act: “Cereal grains namely: wheat, wheat grits for brewery adjunct, barley, hulless barley, pearled barley, rye, oats; rice namely: white, brown, wild; pulses namely: lentils, chickpeas, peas, beans, lupin; oilseeds namely: canola, mustard, soybeans, sunflower seeds”.

Analysis - Services

[19]  With respect to the registered services, “Custom processing of the above-mentioned wares for repackaging”, Mr. Pickard’s affidavit focuses on the ReadyMate cat litter as an example of such a custom-processed product. 

[20]  However, I agree with the Requesting Party that the evidence merely shows the advertising and sale of cat litter, rather than the service of custom processing of, in this case, barley.  While a unique processing of barley may be done by the Owner to create the cat litter product, Mr. Pickard provides insufficient details to conclude that any such processing was done for the benefit of a third party. In this respect, he does not explain the relationship between InfraReady and LitterMate Bio-Products Ltd., which actually sold the cat litter.  Whether or not these companies are in fact separate entities, Mr. Pickard provides no evidence of how InfraReady performed services for LitterMate correlating to the registered services.

[21]  Furthermore, although the product catalogue at Exhibit H refers to “custom” formulations of grain blends, it is not clear that such customization correlates to the more specific registered service, being “custom processing … for repackaging”.  Given that Mr. Pickard referenced the registered services only in relation to the ReadyMate cat litter, presumably “repackaging” is not actually an integral aspect to the custom combinations referenced in the product catalogue.

[22]  Again, in the absence of representations from the Owner, I am not satisfied that it has demonstrated use of the Mark in association with the registered services within the meaning of sections 4 and 45 of the Act. As there is no evidence of special circumstances excusing non-use of the Mark before me, the registration will be amended accordingly.

Disposition

[23]  In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with section 45 of the Act, the registration will be amended to delete the statement of services in its entirety and the following from the statement of goods:

[…] roasted spices, coffee, cocoa; mixed ingredients for pet food (no animal protein) namely: cereals namely: wheat, oats, barley, hulless barley, pearled barley, rye, wheat germ, wheat bran; rice namely: white, brown, wild; pulses namely: lentils, chickpeas, peas.

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

Cereal grains namely: wheat, wheat grits for brewery adjunct, barley, hulless barley, pearled barley, rye, oats; rice namely: white, brown, wild; pulses namely: lentils, chickpeas, peas, beans, lupin; oilseeds namely: canola, mustard, soybeans, sunflower seeds.

 

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

Yue Song (McDougall Gauley LLP)	For the Registered Owner
Bereskin & Parr LLP/S.E.N.C.R.L., s.r.l.	For the Requesting Party