| OPIC
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CIPO
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| LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
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Citation: 2017 TMOB 108
Date of Decision: 2017-08-23
IN THE MATTER OF A SECTION 45 PROCEEDING
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Andrews Robichaud
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Requesting Party
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Entechnevision Inc.
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Registered Owner
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TMA807,375 for TWENTY THOUSAND LEAGUES UNDER THE SEA
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Registration
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[1]
At the request of Andrews Robichaud (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 September 26, 2014 to Entechnevision Inc. (the Owner), the registered owner of registration No. TMA807,375 for the word mark TWENTY THOUSAND LEAGUES UNDER THE SEA (the Mark).
[2]
The Mark is registered in association with the following goods:
(1) Jewellery, namely, rings, bracelets, necklaces, pendants, earrings, stickpins, wrist watches, clocks, keychains, hair pins, barrettes, hair clips, cufflinks, brooches, money clips;
(2) Paper goods and printed matter, namely trading cards, playing cards, stickers, stationary items, namely envelopes, announcement cards, notebooks, pads, note paper, note cards, labels, posters and greeting cards; books and pamphlets;
(3) Toys and games, namely toy action figures and accessories for use therewith; dolls, doll clothing and doll accessories, children's multiple activity toys, plush toys, stuffed toys, plastic and vinyl toy characters, toy figures, musical toys, inflatable toys, jigsaw puzzles, game equipment sold as a unit for playing board games, parlor games, skill and action games, card games, role-playing games and electronic hand-held units for playing games;
(4) Clothing, footwear, headgear, namely shirts, T-shirts, sweatshirts, sweaters, blouses, tank tops, undershirts, jackets, coats, dresses, skirts, shorts, pants, jeans, overalls, sweatpants, underwear, boxer shorts, briefs, panties, swim wear, bathing suits, night shirts, robes, night gowns, pajamas, tights, leggings, leg warmers, neckties, bow ties, ascots, pocket squares, scarves, gloves, mittens, wrist bands, belts, sashes, socks, shoes, boots, athletic shoes, slippers, hats, caps, head bands, visors, hoods, Halloween costumes, masquerade costumes, infant wear, namely. [sic]
[3]
The Mark is also registered in association with the following services:
(1) Entertainment services, namely, providing entertainment in the field of interactive games by means of a global computer network; providing a website featuring games, stories, and educational materials and interactive educational activities for the primary and secondary levels;
(2) Licensing of computer software, namely software in the field of interactive games;
(3) Character and storyline licensing services, namely licensing the use of certain characters and storylines featured in interactive computer game programs;
(4) Computer services namely providing a web site on the global computer network whereon users can play interactive games; providing access to on-line interactive computer programs featuring action games and adventures.
[4]
The notice required the Owner to furnish evidence showing that the Mark was in use in Canada, in association with each of the goods and services specified in the registration, at any time between September 26, 2011 and September 26, 2014. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last used and the reasons for the absence of use since that date.
[5]
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.
[6]
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 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 and services specified in the registration during the relevant period.
[7]
In response to the Registrar’s notice, the Owner furnished the affidavit of Jeff Lord, sworn on October 26, 2015 in Montreal, Quebec. Only the Requesting Party filed written representations, but both parties were represented at a hearing held on April 26, 2017. The hearing was held jointly with respect to summary cancellation proceedings for three other registrations, namely, registration Nos. TMA807,353 (JUNGLE BOOK), TMA807,362 (RAPUNZEL), and TMA807,376 (SWISS FAMILY ROBINSON). Although the affidavit in the present case is substantively identical to the affidavits furnished in those proceedings, separate decisions will issue for each registration.
The Owner’s Evidence
[8]
In his affidavit, Mr. Lord identifies himself as the Principal of the Owner.
[9]
Mr. Lord attests that Canadians accessed the Owner’s games, stories and educational materials online during the relevant period. More specifically, Mr. Lord attests that Canadians benefitted from the following services:
Entertainment services, namely, providing entertainment in the field of interactive games by means of a global computer network; providing a website featuring games, stories, and educational materials and interactive educational activities for the primary and secondary levels; computer services namely providing a web site on global computer network whereon users can play interactive games; providing access to on-line interactive computer game programs in the field of action and adventures.
[10]
These services essentially correspond to services (1) and (4) in the registration.
[11]
In support, at Exhibit A to his affidavit, Mr. Lord provides printouts of four webpages that he indicates were accessed by Canadians during the relevant period. The pages appear to be the homepage for a RAPUNZEL-themed website and similar homepages for WIZARD OF OZ, JUNGLE BOOK and SWISS FAMILY ROBINSON websites, respectively. Mr. Lord explains that the exhibited webpages were printed after the relevant period but he attests that they are representative of how the webpages appeared during the relevant period.
[12]
However, the Mark does not appear on any of these webpages.
[13]
Rather, Mr. Lord explains that, in 2012, he secured a commission to create and produce a stage production of Twenty Thousand Leagues Under the Sea. He attests that, in July 2015, the production premiered in Toronto at PANAMANIA, the Arts and Cultural Festival of the Pan American Games. Photographs from a PanAm press conference in April 2014 and an excerpt from a third-party website describing the production are attached as Exhibit B to Mr. Lord’s affidavit.
[14]
Also included at Exhibit B is an extract from the website for the show; the Mark appears throughout the page, which describes the production as a “theatrical adaptation of the Jules Verne undersea adventure classic.” At the bottom of the page, the following notation appears: “TM/MC EnTechnevision Inc. lic. Use/usager lic. KIDOONS Inc.” However, the trade-mark appearing above this notation is WIZARD OF OZ.
[15]
With respect to the registered goods, Mr. Lord attests that “Sales of goods bearing the trademarks commenced shortly before the declaration[s] of use were filed”, but he indicates that such sales “ceased” at an unspecified point in time.
[16]
Mr. Lord further states that the “original vision was to activate all of the trade-marks at once” but that, “in 2010, Disney released its Rapunzel-themed film ‘Tangled’ which smothered that market and rendered the entire exercise as originally envisioned unsustainable”. He states that he decided to “recalibrate” his strategy as a result.
[17]
He explains that, by 2012, he had begun implementing a new strategy of interlinking the Mark with studio productions and, as noted above, was successful in securing a commission to produce a Twenty Thousand Leagues Under the Sea show.
[18]
However, Mr. Lord attests that, prior to the premiere of the show, he experienced severe medical issues which ultimately led to two surgeries. Following the premiere, Mr. Lord also suffered from another serious medical condition, resulting in a third surgery from which he is still recovering. Attached as Exhibit C is an unsigned letter that Mr. Lord identifies as a “true copy of a note from my trusted employee Craig Francis”. The note describes the challenges in achieving Mr. Lord’s “vision”, noting the producing of “an ambitious stage production”, Mr. Lord’s absences for medical reasons, and efforts to make contacts with various non-profit organizations.
[19]
Mr. Lord states that it has always been his “intention to establish an incredible, Canadian-based network that has as its mandate to educate, entertain, and empower Canadian youth” and to use the Mark in a socially positive and ethically sound manner.
Analysis – Use with respect to Goods
[20]
With respect to the registered goods, Mr. Lord provides no evidence of transfers of any goods during the relevant period or otherwise. Furthermore, Mr. Lord provides no evidence of the manner of association between the Mark and any of the registered goods.
[21]
Accordingly, I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered goods within the meaning of sections 4 and 45 of the Act.
[22]
Whether special circumstances existed to excuse such non-use of the Mark will be discussed below.
Analysis – Use with respect to Services (1) and (4)
[23]
Although Mr. Lord provides some evidence regarding a theatrical presentation in association with the Mark, such a production does not correlate with any of the registered services.
[24]
As noted above, none of the Exhibit A website pages reference the Mark; unlike with respect to its other properties, the Owner does not appear to have operated a “Twenty Thousand Leagues Under the Sea” website featuring games and stories during the relevant period.
[25]
In short, there is no evidence before me that the Owner ever used the Mark in association with registered services (1) and (4).
[26]
In view of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with such services within the meaning of sections 4 and 45 of the Act.
Analysis – Use with respect to Services (2) & (3)
[27]
Similarly, there is no evidence of use of the Mark in association with the registered licensing services, being (2) “Licensing of computer software …” and (3) “Character and storyline licensing…” services.
[28]
Although there is a reference to a licence with Kidoons Inc. on the theatrical production’s webpage at Exhibit B, on its face, the trade-mark referenced is WIZARD OF OZ. In any event, the display of the Mark in the performance of theatrical productions does not constitute display of the Mark in association with the particular registered licensing services. Furthermore, Mr. Lord does not speak directly to services (2) and (3) in his affidavit and does not provide a copy of any licensing agreement, letterhead, correspondence or other documentation to show that the Mark was displayed during the advertising and/or performance of the Owner’s licensing services.
[29]
As such, I am also not satisfied that the Owner has demonstrated use of the Mark in association with services (2) and (3) within the meaning of sections 4 and 45 of the Act.
Analysis - Special Circumstances
[30]
In the absence of evidence of use of the Mark, the issue is whether, pursuant to section 45(3) of the Act, special circumstances existed to excuse such non‑use.
[31]
The general rule is that absence of use should result in expungement, but there may be an exception where the absence of use is due to special circumstances [Scott Paper Ltd v Smart & Biggar, 2008 FCA 129, 65 CPR (4th) 303].
[32]
To determine whether special circumstances have been demonstrated, the Registrar must first determine why the trade-mark was not used during the relevant period. Second, the Registrar must determine whether those reasons for non-use constitute special circumstances [Registrar of Trade Marks v Harris Knitting Mills Ltd (1985), 4 CPR (3d) 488 (FCA)]. Special circumstances means circumstances or reasons that are unusual, uncommon, or exceptional [John Labatt Ltd v Cotton Club Bottling Co (1976), 25 CPR (2d) 115 (FCTD)].
[33]
If the Registrar determines that the reasons for non-use constitute special circumstances, the Registrar must still decide whether such circumstances excuse the period of non-use. This determination involves the consideration of three criteria: (i) the length of time during which the trade-mark has not been in use; (ii) whether the reasons for non-use were beyond the control of the registered owner; and (iii) whether there exists a serious intention to shortly resume use [per Harris Knitting Mills, supra].
[34]
The intention to shortly resume use must be substantiated by “a sufficient factual basis” [NTD Apparel Inc v Ryan, 2003 FCT 780, 27 CPR (4th) 73 at paragraph 26; see also Arrowhead Spring Water Ltd v Arrowhead Water Corp (1993), 47 CPR (3d) 217 (FCTD)].
[35]
All three criteria are relevant, but satisfying the second criterion is essential for a finding of special circumstances excusing non-use [per Scott Paper, supra].
[36]
In this case, the Owner submits that the reason the Mark was not used during the relevant period was due to Mr. Lord’s illness, described above.
[37]
However, the Requesting Party notes that Mr. Lord essentially admits, at paragraph 6 of his affidavit, that the initial decision to cease use of the Mark was due to Mr. Lord’s “decision to recalibrate my strategy”. The Requesting Party further notes that, while Mr. Lord alleges various personal medical issues, he still indicates that the Owner continued to operate, but he provides no clear reasons why the Owner delayed returning to the use of the Mark. .
[38]
Indeed, I agree with the Requesting Party that Mr. Lord’s timeline is somewhat vague, given that he provides no evidence of sales of the registered goods at any time. The inference, then, is that the Owner did not have sales of any TWENTY THOUSAND LEAGUES UNDER THE SEA-branded goods, even before Mr. Lord’s health problems began.
[39]
It has been held that unfavourable market conditions and voluntary business decisions are not the sort of unusual, uncommon, or exceptional circumstances that constitute special circumstances [see Harris Knitting, supra; Lander Co Canada Ltd v Alex E Macrae & Co (1993), 46 CPR (3d) 417 (FCTD)]. In cases where the registered owner had no intent to abandon its trade-mark in Canada, but lacked any orders for its goods during the relevant period, this was found in itself not sufficient to maintain the registration in question [see Garrett v Langguth Cosmetic GMBH (1991), 39 CPR (3d) 572 (TMOB) and Bereskin & Parr v Magnum Marine Corp, 2011 TMOB 68, 93 CPR (4th) 327].
[40]
As such, it would appear from the evidence that the reasons for non-use were at least in part due to the business decisions and marketing efforts of the Owner. In the present case, Mr. Lord provides evidence regarding the Owner’s several other trade-marks and websites, as well as its theatrical production of Twenty Thousand Leagues Under the Sea. It is not clear that non-use was due to Mr. Lord’s illness rather than voluntary business decisions of the Owner to, for example, focus on some or all of the Owner’s other trade-marks rather than the subject trade-mark during the relevant period. As noted by the Requesting Party, the theatrical production for Twenty Thousand Leagues Under the Sea suggests a focus on services not set out in the registration.
[41]
I note the following observation from the Federal Court in Plough, supra, at paragraph 10:
There is no room for a dog in the manger attitude on the part of registered owners who may wish to hold on to a registration notwithstanding that the trade mark is no longer in use at all or not in use with respect to some of the wares in respect of which the mark is registered.
[42]
As the reason for non-use appears to be the voluntary business decisions of the Owner, I do not find that the Owner has established that the reasons for non-use constitute special circumstances. As such, it is not necessary to consider whether such circumstances excuse the period of non-use. Suffice to say, the voluntary business decisions of the Owner that contributed to non-use of the Mark were not beyond its control.
Disposition
[43]
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 expunged.
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| Andrew Bene
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| Hearing Officer
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| Trade-marks Opposition Board
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| Canadian Intellectual Property Office
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TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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HEARING DATE: 2017-04-26
APPEARANCES
| Steven Leach
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For the Registered Owner
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| Michael Andrews |
For the Requesting Party
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AGENTS OF RECORD
| Ridout & Maybee LLP
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For the Registered Owner
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| Andrews Robichaud
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For the Requesting Party
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