Citation: 2017 TMOB 93

Date of Decision: 2017-08-10

IN THE MATTER OF AN OPPOSITION

	SBG Revo Holdings, LLC	Opponent
and
	FTI Corporation Limited	Applicant
	1,642,766 for REVO & Design	Application

Introduction

[1]  SBG Revo Holdings, LLC (the Opponent) opposes registration of the trade-mark REVO & Design shown below (the Mark), which is the subject of application No. 1,642,766.

[2]  The application was filed on basis of use in Canada since at least as early as May 1, 2006 in association with the following services:

On-line retail services and retail store services in the field of bags, namely luggage, travel bags, traveling bags, all purpose sports bags, athletic bags, backpacks, beach bags, clutch bags, diaper bags, gym bags, school bags, shoulder bags, tote bags, purses, handbags and knapsacks.

[3]  The Opponent has opposed the application for the Mark on the basis that it: (i) does not conform to the requirements of sections 30(a) and (b) of the Trade-marks Act, RSC 1985, c T-13 (the Act).  

[4]  For the reasons that follow, I refuse the application.

The record, onus and material dates

[5]  The application for the Mark was filed on September 9, 2013, and was advertised for opposition purposes in the Trade-marks Journal dated August 6, 2014.

[6]   On October 27, 2014, the Opponent filed a statement of opposition to the Mark under section 38 of the Act.

[7]  In support of its opposition, the Opponent filed the affidavit of Chantal Franks, sworn July 2, 2015, together with Exhibits 1 to 7. Ms. Franks was not cross-examined on her affidavit.

[8]  The Applicant elected not to file evidence.

[9]  While only the Opponent filed a written argument, both parties were represented at a hearing. 

[10]  The Applicant bears the legal onus of establishing, on a balance of probabilities that its application complies with the requirements of the Act.  However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could be reasonably concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v The Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al, 2002 FCA 29, 20 CPR (4th) 155; and Wrangler Apparel Corp v The Timberland Company, 2005 FC 722, 41 CPR (4th) 223].

[11]  With respect to the grounds of opposition under both sections 30(a) and 30(b), the material date is the filing date of the application, namely, September 9, 2013 Sections 38(2)(a)/30(a) – the filing date of the application, namely, September 9, 2013 [for section 30(a) see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB); and for section 30(b), see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 at 296 (FCTD)].

Overview of the evidence

The Opponent’s Evidence

The Franks Affidavit

[12]   Ms. Franks is a private investigator for Mitchell Partners Investigation Services. 

[13]   Ms. Franks attests that her agency was instructed to conduct the following investigations with respect to revoluggage.com and revoluggage.ca:

• Obtain domain name registration information;
• Make copies of various subpages from the revoluggage.com and revoluggage.ca domains; and
• Search the website www.archive.org for all archived copies available of the subpages from homepages identified above.

[14]  Ms. Franks attaches as Exhibit 1 to her affidavit, domain name registration information for revoluggage.com from whois.domaintools.com/revoluggage.com that she obtained on June 22, 2015, which shows that the domain name was registered on January 16, 2008.

[15]  Ms. Franks attaches as Exhibit 2 to her affidavit, copies made on June 22, 2015 of subpages from the revoluggage.com home page, appearing at www.revoluggage.com/buy-online/ and www.revoluggage.com/find-a-store/, and as Exhibit 3 to her affidavit, copies made on that same day of the archived Exhibit 2 web pages from www.archive.org.  The Mark is clearly displayed on these pages. She then attests to the following observations regarding the evidence under Exhibits 1-3:

• The first archived copy of www.revoluggage.com was from November 21, 2009 with archived copies of the site from November 21, 2009 to January 24, 2010 showing no useable content;
• On February 26, 2010, www.revoluggage.com resolved to a GoDaddy parking page, meaning that there was no active website associated with www.revoluggage.com;
• On November 25, 2013, www.revoluggage.com resolved to a web page advertising the REVO luggage collection, as well as including the subpages www.revoluggage.com/find-a-store/ and www.revoluggage.com/buy-online/ for the first time. The subpages indicate that REVO luggage can be viewed in person and/or ordered online through the following third party retailers: Macy’s, Boscov’s, Dillard’s, Kohl’s and eBags;
• None of the archived www.revoluggage.com/buy-online/ pages, including the most recent capture on November 30, 2014, indicated that the products were available for sale through the revoluggage.com website or through any other REVO or REVO LUGGAGE online retail source;
• The “Shop on SITE” link on the www.revoluggage.com/buy-online/ page dated June 22, 2015 (Exhibit 2), was added after November 30, 2014; and
• The “Where to Buy” menu on the www.revoluggage.com website links only to the www.revoluggage.com/buy-online/ and www.revoluggage.com/find-a-store/ subpages.

[16]  Ms. Franks then conducted similar research regarding the www.revoluggage.ca website.  In this regard, she attaches as Exhibit 4 to her affidavit, domain name registration information dated June 22, 2015, which shows that the domain name was registered on January 19, 2015. She further attaches, as Exhibit 5, copies made on June 22, 2015 of subpages from the revoluggage.ca home page, appearing at www.revoluggage.ca/buy-online/ and www.revoluggage.ca/find-a-store/, and as Exhibit 6 to her affidavit, copies made on that same day of the archived Exhibit 5 web pages from www.archive.org.  The Mark clearly appears on the Exhibit 5 subpages. She then attests to the following observations regarding this evidence:

• There are no archived copies of the website appearing at www.revoluggage.ca;
• The subpages of www.revoluggage.ca (Exhibit 5) indicate that REVO luggage can be viewed in person and/or ordered online through the following third party retailers: Macy’s, Boscov’s, Dillard’s, Kohl’s, eBags and Shop on SITE; and
• The “Where to Buy” menu links only to the www.revoluggage.ca/buy-online/ and www.revoluggage.ca/find-a-store/ subpages.

[17]  Ms. Franks attests that she also conducted searches of telephone directories and Canadian business directories. In this regard, she states that on June 22, 2015, she conducted searches on Canada411.ca and with Bell Canada directory assistance and found no records for REVO luggage. Further to this, Ms. Franks attests that she conducted additional online searches that day for the terms ‘revo’, ‘luggage’ and ‘Canada’, and states that she was unable to locate any references to businesses with retail locations in Canada operating under the name REVO that offered retail services in the field of bags or luggage. She also attests that the www.revoluggage.com and www.revoluggage.ca websites were the websites that she was able to locate offering retail services in the field of bags or luggage operating under names featuring the trade-mark REVO or through domain names featuring REVO.

[18]  Lastly, Ms. Franks attests that on June 22, 2015 she made several attempts to contact the telephone number appearing on www.revoluggage.com and www.revoluggage.ca websites to inquire whether there are any REVO retail locations in Canada, and if so, to obtain their name and address information.  She attests that each time she dialed the number, she received an automated service message identifying Olivet International Customer Service, inviting the caller to leave a message.  She attests that instead of leaving a voice mail message, that she sent an e-mail to the email address provided on the websites, asking whether there are any Canadian store locations, and if not, where the products can be purchased in Canada. She states that on that same day, she received a response indicating “Thank you so much for contacting Olivet. Unfortunately, we do not have Canadian locations. You might try ordering through Ebags.com or Macys.com.” She attaches as Exhibit 7 to her affidavit, a copy of the above-mentioned email exchange.

Grounds of Opposition

Section 30(a)

[19]  The Opponent has pleaded that the application does not conform to the requirements of section 30(a) of the Act, as the application does not contain a statement in ordinary commercial terms of the specific services in association with which the Mark has been used.

[20]  The Opponent’s initial evidential burden under section 30(a) of the Act is a light one.  In fact, the Opponent may need only present sufficient argument in order to meet its initial burden [see McDonald’s Corporation and McDonald’s Restaurant of Canada Ltd v MA Comacho-Saldana International Trading Ltd carrying on business as Macs International (1984), 1 CPR (3d) 101 at 104 (TMOB)].

[21]  In the present case, the Opponent relies on the Franks affidavit, and submits that the evidence shows that the Applicant’s activities prior to the filing date of the application did not constitute a service, and cannot have constituted “retail store services” or “on-line retail services”.  In particular, the Opponent submits that while the Applicant may have advertised its own luggage branded with the Mark prior to the filing date, merely making the public aware of the Applicant’s goods does not constitute retail services to the public [citing Ralston Purina Co v Effem Foods Ltd (1997), 81 CPR (3d) 528 (TMOB)]. The Opponent submits that the sale of luggage through third party retailers constitutes use of the Mark in association with goods not services, and if this was the activity being relied upon by the Applicant, then it should have been properly reflected in the application for the Mark. In any event, the Opponent further submits, the sale of the Applicant’s luggage through third party retailers would not constitute the offering by the Applicant of “on-line retail services” or “retail store services” in association with the Mark; rather, it would have been the third party retailers who offered retail store services or online retail services in association with their own marks, not the Mark. In summary, the Opponent submits that the statement of services is not factually correct as required [citing Nike Inc v Senseicorp Ltd (1994), 58 CPR (3d) 436 (TMOB)], and the Applicant has not filed any evidence to show that the statement of services accurately describes the services offered by the Applicant in association with the Mark prior to the filing date of the application.

[22]  The Applicant submits that determining whether the Applicant has used the Mark in association with the services as listed in the application for the Mark is not a question under section 30(a) of the Act. I agree. The question as to whether a mark is properly associated with the services as set out in an application is more appropriately the subject of a section 30(b), 30(d) or 30(e) ground of opposition, as the case may be [SALT Branding, LLC Limited Liability Company California v Salt Creative Group, Inc, 2015 TMOB 207 (CanLII)].

[23]  Accordingly, the section 30(a) ground of opposition is rejected.

Section 30(b)

[24]  The Opponent has pleaded that the application does not conform to the requirements of section 30(b) of the Act, as the Applicant has not used the Mark in association with the claimed services as of the filing date. Alternatively, the Opponent has pleaded that if the Applicant has used the Mark as of the date of filing, the Application does not contain an accurate date of first use from which the Applicant had first used the Mark in association with the services in Canada.

[25]  Section 30((b) of the Act requires that there be continuous use of the applied-for trade-mark in the normal course of trade from the date claimed to the filing date of the application [Labatt Brewing Co v Benson & Hedges (Canada) Ltd (1996), 67 CPR (3d) 258 (FCTD) at 262].

[26]  While the legal burden is upon an applicant to show that its application complies with section 30 of the Act, there is an initial evidential burden on an opponent to establish the facts relied upon by it in support of its section 30 ground [see Joseph E Seagram & Sons Ltd v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 at 329 (TMOB); and John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD)].  With respect to section 30(b) of the Act in particular, an opponent’s initial burden has been characterized as light due to an opponent’s limited access to information regarding use relative to the applicant [see Tune Master v Mr. P’s Mastertune Ignition Services Ltd (1986), 10 CPR (3d) 84 (TMOB) at 89].  If an opponent succeeds in discharging its initial evidential burden, the applicant must then, in response, substantiate its claim of use during the material time.  However, while an opponent is entitled to rely on the applicant’s evidence to meet its evidential burden, the applicant is under no obligation to evidence its claimed date of first use if this date is not first put into issue by an opponent meeting its evidential burden [see Kingsley v Ironclad Games Corporation, 2016 TMOB 19 (CanLII), at para 63].

[27]  In the present case, the Opponent submits that it has met its burden by virtue of the Franks affidavit. In this regard, the Opponent submits that the domain names www.revoluggage.com and www.revoluggage.ca, were registered on January 16, 2008 and January 19, 2015 respectively, which was significantly after the date of first use claimed, namely, May 1, 2006.  Moreover, the Opponent submits, it is apparent from the archived versions of the revoluggage.com website that no retail services were advertised on that site prior to November 2014. That is, even after the domain names were registered and the websites were launched, the websites did not offer online retail services since consumers had no means of purchasing goods through those sites. Instead, the website informed customers that REVO luggage could be purchased from third party retailers.

[28]  With respect to retail store services, the Opponent submits, Ms. Franks was unable to locate any references to businesses with retail locations in Canada operating under the name REVO that offered retail services in the field of bags or luggage.

[29]  The Applicant on the other hand challenges the admissibility of the Franks affidavit, submitting that Ms. Franks is not clear in her affidavit as to her knowledge and expertise.  The Applicant submits that this situation is somewhat analogous to that in John Labatt Ltd v Molson Cos (1990), 30 CPR (3d) 293 (FCTD); affirmed (1992), 42 CPR (3d) 495 (FCA)], wherein the opponent in that case filed an affidavit of a marketing executive which was considered not to constitute sufficient admissible evidence to support the opponent’s section 29(b) ground (now section 30(b)), as the affiant’s testimony was deemed to be vague with respect to his knowledge and expertise during the material time. In addition, the Applicant submits that Ms. Franks’ investigation occurred years after the date of first use claimed and two years after the filing date of the application, noting in particular, the telephone inquiries made by Ms. Franks and the Exhibits 2 and 5 webpage searches.  The Applicant further submits that the email sent by Ms. Franks at Exhibit 7 was sent from an alias, and while it may be the case that some private investigators use an alias, Ms. Franks does not explain this in her affidavit. What is more, the Applicant submits, the email does not make any reference to REVO, so it is possible that the conversation may have dealt with another brand. Lastly, the Applicant submits that there is no evidence of the reliability of archive.org pages.

[30]  With respect to the reliability of archive.org pages (otherwise known as the Wayback Machine), I note that such evidence which indicates that state of websites in the past has been found to be generally reliable [see Candrug Health Solutions Inc v Thorkelson (2007), 2007 FC 411 (CanLII), 60 CPR (4th) 35 (FC); reversed on other grounds 2008 FCA 100 CanLII)]. 

[31]  With respect to the admissibility of the Franks affidavit, the Opponent replies that the Labatt case is distinguishable as the evidence of the Opponent in that case turned on vague personal knowledge of an employee of the Opponent. In this case, the Opponent submits, the facts alleged in the Franks affidavit are supported by detailed explanations as to how she obtained her information, such as key words, directories, methods of searching, etc.  Furthermore, the Opponent submits, Ms. Franks attaches printouts and archived versions of the websites and, therefore, does set out the factual basis for the facts contained in her affidavit. Thus, the Opponent submits, the present situation is not analogous to Labatt, supra, as it is not based on the personal knowledge of the affiant.

[32]  With respect to the alias used in the email in Exhibit 7, the Opponent submits that a reading of paragraph 17 of Ms. Frank’s affidavit states “I sent an email to […]”. The Opponent submits that even though there is no mention of the exact email address used, the email that she refers to is in fact the email chain produced at Exhibit 7. Furthermore, the Opponent submits, the fact that REVO is not referenced is not determinative, as the email was sent to the address found on the revoluggage websites and the response indicates that none of the Applicant’s products were available (which includes REVO branded goods) other than to try ordering through two third-party retail websites.

[33]  In any event, the Applicant submits that with respect to the domain name registration dates, the fact that they were not registered until later is not conclusive that the Applicant did not offer the services.  The Applicant submits that it may be that the services were not offered through those websites. Thus, ultimately, the Applicant submits, the Opponent’s evidence is insufficient to conclude that the Mark was not used.   

[34]  The Opponent, in turn, submits that if there was any other website or any other retail location, it would have been up to the Applicant to identify and evidence those. Furthermore, the Opponent submits, if Ms. Frank was deficient in her research, the Applicant could have furnished this evidence, and/or cross-examined Ms. Franks; however, the Applicant elected not to do so.  

[35]  As previously indicated, the Opponent’s burden under a ground of opposition based upon section 30(b) of the Act is less onerous; the Opponent need not conclusively prove non-use, but rather, just raise sufficient doubt as to the veracity of the Applicant’s claimed date of first use.

[36]  In terms of admissible evidence, with respect to the Opponent’s burden, I have considered the archived webpages (Exhibit 3), and the evidence regarding the dates of domain name registrations (Exhibits 1 and 4). While the other evidence is consistent with my findings below, it will not be considered as it concerns matters which post-date the date of filing of the Applicant’s application.

[37]  With respect to this evidence being provided by Ms. Franks, I agree with the Opponent that she has set forth sufficient details surrounding how she obtained her information. I am also cognizant of the fact that this research was conducted by a private investigator, not an employee of the agent for the Opponent, and does not deal with a contentious opinion [see Cross-Canada Auto Body Supply (Windsor) Ltd v Hyundai Auto Canada 206 FCA 133 (CanLII) at para 4, (2006), 2006 FCA 133 (CanLII), 53 CPR (4th) 286 (FCA)]. I am also prepared to afford it weight as it was necessary for the Opponent to file such evidence, given the inherent difficulties in obtaining facts that are more readily at the disposal of the Applicant.

[38]  On review of the archived webpages, this evidence suggests that the Applicant did not engage in retail sales itself at the material date, whether online or through a physical store location. Rather, it suggests the website at that time was used to advertise REVO (branded) products and direct consumers wishing to purchase those goods to third party retailers. Indeed, the archived webpages do not identify any retailers that were using REVO in association with their respective services.  Furthermore, with respect to the revoluggage.ca website, the evidence shows that the domain was not registered, thus the website could not have been active as of the material date.

[39]  While it is possible that the services were offered through another website prior to the first evidence of the revoluggage.com website being active, it is curious as to why there would not be a link to such a site on the revoluggage.com site. Further, the absence of any physical store location at that time, which also is contrary to the claims made in the application, seems to suggest that the Applicant was not actively providing any of the services claimed up until that point. 

[40]  Thus, for the purpose of meeting the Opponent’s light burden under section 30(b) of the Act, I find the foregoing evidence sufficient to raise a doubt concerning the correctness of the Applicant’s claimed date of first use [see Royal Canadian Gold Assn v ORCGA (2009), 2009 CanLII 90300 (TMOB), 72 CPR (4th) 59 (TMOB), at pages 64-65 with respect to Wayback Machine evidence in support of a section 30(b) ground;  Effigi Inc v HBI Branded Apparel Limited, Inc 2010 TMOB 160 (CanLII) regarding the admissibility of Internet searches and section 30(b); and Littlewoods Limited v Allyson Grabish, 2013 TMOB 34 and Home Hardware Stores Limited v 1104559 Ontario Ltd, 2013 TMOB 210 (CanLII) regarding the absence of registered domains, active websites and evidence concerning the absence of any use of an applicant’s trade-mark on a website at the relevant date with respect to a section 30(b) ground].

[41]  Based on the foregoing, I am satisfied that the Opponent has met its evidential burden.

[42]  The onus now shifts to the Applicant to establish that it had been using the Mark in association with the services since the claimed date of first use, namely, since May 1, 2006. Given that the Applicant has filed no evidence, I am not satisfied that the Applicant has met its onus and thus the ground of opposition based on section 30(b) of the Act is successful.

 

Disposition

[43]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

Kathryn Barnett

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2017-02-06

APPEARANCES

Julia Werneberg	FOR THE OPPONENT
Sarah Kilpatrick	FOR THE APPLICANT

AGENT(S) OF RECORD

Gowling WLG (Canada) LLP	FOR THE OPPONENT
McMillan LLP	FOR THE APPLICANT