Citation: 2017 TMOB 98

Date of Decision: 2017-08-16

IN THE MATTER OF A SECTION 45 PROCEEDING

	Federation of Rental-Housing Providers of Ontario	Requesting Party
and
	Shahram Rafati	Registered Owner
	TMA655,245 for EASYRENT & Design	Registration

 

[1]  This is a decision involving summary expungement proceedings with respect to registration No. TMA655,245 for the trade-mark EASYRENT & Design, shown below (the Mark), owned by Shahram Rafati.

[2]  The Mark is currently registered in association with the following services:

Linking tenants and landlords of residential and commercial properties by way of phone, fax and global communications information network; linking persons seeking shared residential and commercial accommodations by way of phone, fax and global communications information network; property management services, namely, market value rental assessment services, advertising services for residential and commercial rental properties, presenting residential and commercial rental properties to potential tenants, tenant screening services, rent collection services.

[3]  For the reasons that follow, I conclude that the registration ought to be maintained in its entirety.

The Proceedings

[4]  On September 3, 2015, the Registrar of Trade-marks sent a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) to Shahram Rafati (the Owner). The notice was sent at the request of the Federation of Rental-Housing Providers of Ontario.

[5]  The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between September 3, 2012 and September 3, 2015, in association with each of the services specified in the registration.  If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last in use and the reasons for the absence of use since that date.

[6]  The relevant definition of use is set out in section 4(2) of the Act as follows:

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 has been well established that the purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for clearing the register of “deadwood”. The criteria for establishing use are not demanding and an overabundance of evidence is not necessary. Nevertheless, sufficient evidence must still be provided to allow the Registrar to conclude that the trade-mark was used in association with each of the registered services [see Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270]. Furthermore, mere statements of use are insufficient to prove use [see Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)].

[8]  In response to the Registrar’s notice, the Owner furnished his own affidavit, sworn November 30, 2015, together with Exhibits A to G.

[9]  Both parties filed written submissions. An oral hearing was not conducted.

The Evidence

[10]  Mr. Rafati, the Owner, attests that the Mark is licensed to Easyrent Real Estate Services Ltd. (the Licensee), a company that is authorized to use the Mark in association with the registered services. He states that he is the managing broker of the Licensee and has licensed the Mark to the Licensee pursuant to the Act.

[11]  Mr. Rafati attests that the Licensee has used the Mark in association with the registered services extensively during the relevant period, through advertisement and performance of the services. In support, he provides the following:

• Exhibit A – an example of a business card which Mr. Rafati states was used from at least as early as 2007 until 2013. He explains that these business cards were given out in person to prospective consumers and that he believes at least 7500 cards were distributed in the Canadian marketplace. The Mark clearly appears on the business card.

• Exhibit B – an invoice issued to Mr. Rafati for 1000 business cards, which includes a depiction of said card being substantially the same business card as shown in Exhibit A. Mr. Rafati attests these business cards were in circulation until 2013.

• Exhibit C – a flyer-brochure directed at landlords, entitled Property Management Services, which displays the Mark, and advertises the following services: showing premises to prospective tenants, conducting of tenant reference checks, preparing required paperwork in compliance with the Residential Tenancy Act, rent collection, and the handling of around-the-clock tenant issues.

• Exhibit D – an advertising brochure which displays the Mark and advertises the following services: property management services, property evaluation services, property marketing services, conducting viewings with prospective tenants, screening of applicants and selection of tenants, overseeing the completion of the Tenancy Agreement and any other required documentation, and completing a move-in inspection and noting the condition of the property. Although not appearing on the brochure shown in the exhibit, Mr. Rafati attests that the brochures also advertise the following services: rent collection, advising on rent increases, liaising between landlord and tenant, administering lease renewals, payment of invoices, bills and expenses relating to the rental property, authorizing repairs, and providing financial statements with respect to the property. Mr. Rafati attests that this brochure was distributed by Canada Post and direct mail to 3500 property owners, principally in Greater Vancouver between 2007 and 2013.

• Exhibit E – an invoice for the printing of 5,000 copies of the Exhibit D brochure, which Mr. Rafati states was circulated between September 2013 and January 2014 to approximately 3000 individuals, principally in Greater Vancouver.

• Exhibit F – a card that Mr. Rafati attests accompanied the advertising material shown in Exhibit D. The card displays the Mark and advertises landlord and tenant services as follows: lease-up services (including advertising and showings), market value rental assessments, tenant application screening, facilitation of contract documentation, and property search services for tenants. Mr. Rafati states that the card was used between 2007 and 2013 and was distributed to at least 5000 property owners and tenants, principally in Greater Vancouver.

• Exhibit G – an undated advertising brochure, also entitled Property Management Services, which displays the Mark, and advertises the following services: advertising and showing of properties, tenant screening, preparation of rental documentation, rent collection, and the handling of around-the-clock tenant issues. Mr. Rafati states that this brochure was distributed by Canada Post to approximately 3000 prospective owners and tenants in Greater Vancouver.

 

Analysis and Reasons for Decision

[12]  The Requesting Party submits that the evidence is ambiguous and does not show use of the Mark with respect to each of the registered services.

[13]  More specifically, the Requesting Party submits that the Owner does not state that he has used the Mark himself, nor does he provide any reasons for non-use. The Requesting Party submits that the only use alleged is through a licensee; however, there is no indication that when Mr. Rafati states in his affidavit that the Mark has been used by this licensee, that he properly understood this complex legal term. Furthermore, the Requesting Party submits, the Owner has failed to show that such licensed use satisfied proper control requirements pursuant to section 50 of the Act. Lastly, the Requesting Party submits that as certain statements made in the affidavit by Mr. Rafati refer to activities spanning the years 2007 to 2013, an ambiguity arises as to whether such activities occurred during the relevant period.

[14]  The Requesting Party submits that the evidence and must be assessed from the point of view of what it does not say, and since no cross-examination or contradictory affidavit is permitted, there is a “special duty” on the Registrar to assess the reliability of the registered owner’s evidence [citing Plough, supra]. 

[15]  The Owner submits in response that the affidavit of Mr. Rafati clearly indicates that the Mark is in use under license. I note that such a statement, absent a clear attestation that the Owner exerts the requisite control under section 50 of the Act, would be insufficient on its own. In the absence of such a clear statement or a copy of the license agreement providing for the requisite control, the requirements of section 50(1) of the Act may also be satisfied by providing evidence that the trade-mark owner itself exerts the requisite control [see Empresa Cubana Del Tabaco Trading v Shapiro Cohen, 2011 FC 102, 91 CPR (4th) 248 at paragraph 84].  For example, while the mere fact that a registered owner and a licensee are related companies is insufficient that control under license pursuant to section 50 exists [see MCI Communications Corp v MCI Multinet Communications Inc (1995), 61 CPR (3d) 245 (TMOB) and Dynatech Automation Systems Inc v Dynatech Corp (1995), 64 CPR (3d) 101 (TMOB)], an inference may be drawn that such control exists where an individual is a director or an officer of both the registered owner and the licensee [see Petro-Canada v 2946661 Canada Inc (1999), 83 CPR (3d) 129 (FCTD); Lindy v Canada (Registrar of Trade Marks) 1999 CarswellNat 652 (FCA)]. 

[16]  In the present case, I note that Mr. Rafati, the Owner, clearly attests that he is the managing broker of the Licensee. Furthermore, the invoices in evidence (Exhibits B and E) regarding the printing of business cards and brochures shown in Exhibits B and D clearly list Mr. Rafati as the client.  Consequently, I am prepared to infer that the requisite control under section 50(1) of the Act exists [per Petro-Canada, supra; and Lindy, supra].

[17]  With respect to the Requesting Party’s submissions regarding ambiguous statements made in the affidavit by Mr. Rafati relating to activities spanning the years 2007 to 2013, the Owner submits that the Requesting Party appears to be suggesting that the Mark was not in continuous use during this period.  However, the Owner submits that use need not be continuous [citing Boutique Progolf Inc v Marks & Clerk (1993), 54 CPR (3d) 451 (FCA)]. While it is true that in section 45, continuous use is not required, only that use at some point is shown during the relevant period, the Requesting Party does not question whether there was continuous use of the Mark. Rather, the Requesting Party’s submissions appear to be based upon Mr. Rafati’s statements that refer to a time period much broader than the relevant period. Specifically, the Requesting Party questions whether Mr. Rafati’s statements pertain to activities that occurred between 2007 and 2011; thus, being ambiguous as to the relevant period itself.

[18]  However, it is the evidence as a whole that must be considered. When considering Mr. Rafati’s affidavit in conjunction with the associated exhibits, although his statements regarding advertising of the Mark encompass the years 2007 to 2013, the exhibit evidence showing invoices for the printing of such advertising materials are dated April and September 2013.  Furthermore, I note that Mr. Rafati clearly swears in his affidavit, that the brochure shown in Exhibit D to his affidavit was circulated between September 2013 and January 2014 to approximately 3000 individuals, principally in Greater Vancouver.

[19]  Having regard to the aforementioned, I am satisfied that the Owner has shown use of the Mark during the relevant period that satisfies section 4(2) of the Act. In this case, I accept that the Mark was clearly displayed in the advertising of the services, with the Licensee offering and prepared to perform the services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (RTM)].  Furthermore, I am satisfied that the services shown in the evidenced advertising materials are consistent with and cover all of the registered services.

Disposition

[20]  Accordingly, 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.

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 No Hearing Held

AGENTS OF RECORD

BOUGHTON LAW CORPORATION	FOR THE REGISTERED OWNER
DENNISON ASSOCIATES	FOR THE REQUESTING PARTY