Citation: 2018 TMOB 9

Date of Decision: 2018-01-31

IN THE MATTER OF A SECTION 45 PROCEEDING

	Osler, Hoskin & Harcourt LLP	Requesting Party
and
	Esprit International	Registered Owner
	TMA820,694 for ESPRIT COLLECTION	Registration

[1]  At the request of Osler, Hoskin & Harcourt LLP (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 14, 2015, to Esprit International (the Owner), the registered owner of registration No. TMA820,694 for the trade-mark ESPRIT COLLECTION (the Mark).

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

(1) Women’s wearing apparel, namely, jeans, pants, shorts, skirts, dresses, blazers, vests, suits, indoor jackets, outdoor jackets, coats, blouses, tops, sweaters, shirts, overshirts, t­shirts, belts, caps, hats, scarves, gloves.

(2) Bags, namely cosmetic bags, luggage bags, gym bags, shoulder bags, clutch bags, hand bags, purses, portfolios, wallets, tote bags, drawstring bags, duffle bags, backpacks, key chains, wrap-around-wrist jogger’s key and money holder strap.

(3) Perfumes, eau de colognes, fragrant preparations, fragrances for personal use, eau de toilette, essential oils, room sprays.

(4) Men’s wearing apparel, namely, jeans, pants, shorts, blazers, vests, suits, ties, indoor jackets, outdoor jackets, coats, tops, sweaters, shirts, overshirts, t­shirts, belts, hats, scarves, gloves.

[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 the trade-mark was last used and the reasons for the absence of such use since that date. In this case, the relevant period for showing use is September 14, 2012 to September 14, 2015.

[4]  The relevant definition of “use” 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]  In response to the Registrar’s notice, the Owner furnished two affidavits of Laura Fuentes, sworn on March 31, 2016, and April 7, 2016, respectively, in New York, NY. Only the Owner filed written representations and was represented at an oral hearing.

The Owner’s Evidence

[6]  In her first affidavit, Ms. Fuentes identifies herself as the Owner’s Head of Wholesale for Canada and Latin America. She states that the Owner and its affiliates comprise “a global lifestyle group” that offers “youthful products, such as apparel for women, men and children, sportswear, footwear, fragrances, jewelry, eyewear, housewares, bedding, rugs, etc.” She states that in 2010 the Owner operated over 800 retail stores worldwide and distributed its products to over 14,000 wholesale locations across five continents.

[7]  With respect to the relevant period, Ms. Fuentes states that, “[i]n around 2012”, the Owner’s North American business was “incurring substantial losses”, as a result of which its parent company Esprit Holdings Limited “decided to close down and liquidate [the Owner’s] North American operations towards a future restructuring”.  Ms. Fuentes states that the Owner nevertheless “continued to try and sell products that depicted its well known ESPRIT brands, including its ESPRIT COLLECTION brand”.

[8]  In this respect, Ms. Fuentes states that the Owner “actively worked with various retailers, i.e. The Bay, to sell its product in Canada.” Ms. Fuentes specifies that the Owner provided The Bay with ESPRIT COLLECTION branded products up to and including December 2012 and that such products were sold “until June/July 2013”. She further states that, in 2013, the Owner signed an agreement with a distributor to continue sales of ESPRIT COLLECTION branded products in Canada. Ms. Fuentes attests that, from October 2012 to June 2013, gross sales for the Owner’s “product division called Esprit Collection” were “around CAD$675,000 in relation to its Women Collection and CAD$130,000 in relation to its Men Collection”.

[9]  Ms. Fuentes further states that, from 2013 to 2015, the Owner “sold its products through the Millenium Group in Canada, primarily through sample sales”. She states that the Owner held various such sample sales “to sell its ESPRIT branded products, including those branded with the ESPRIT COLLECTION mark” and specifies that “ESPRIT COLLECTION branded women’s apparel was sold at the sample sales”.

[10]  Overall, Ms. Fuentes attests that, during the relevant period, the Owner sold “more than 15 thousand units of Women Collection products (which encompass a variety of women’s wearing apparel and bags), more than 2 thousand units of Men Collection products (which encompass a variety of men’s wearing apparel) and almost 9 thousand units of Bodywear Collection products (which encompasses casual wear and undergarments) all bearing the ESPRIT COLLECTION mark”. She states that gross sales of these products during the relevant period exceeded CA$875,000.

[11]  Ms. Fuentes adds that, during this period, the Owner also “attempted entering into license agreements with third parties to facilitate the sale of its ESPRIT branded products in Canada, including its ESPRIT COLLECTION branded products”. In this respect, Ms. Fuentes states that, “[p]rior to the date the Section 45 notice was issued,” the Owner negotiated an agreement with Freemark Apparel Brands in Montreal to sell all of the registered goods under the Mark. She specifies that this agreement was executed in November 2015.

[12]  With respect to display of the Mark, Ms. Fuentes attests that, during the relevant period, the Mark was “consistently and continuously depicted on, among other things, hangtags for clothing, catalogues and brochures, sales packs and signage.”

[13]  In support of her assertions, Ms. Fuentes attaches the following exhibits to her first affidavit:

• Exhibit A is an excerpt from the Owner’s website, outlining the Owner’s corporate history since its inception in 1968. I note that the 2016 entry states, “In spring, Esprit re-enters Canada together with strategic partner FAB Inc. for the first time after the North America exit was announced in 2011.”
• Exhibits B, C and D contain catalogues and a “sell sheet” that Ms. Fuentes attests were distributed to the Owner’s Montreal and Toronto showrooms, for distribution to Canadian sales agents and customers. She attests that over 500 copies of each of these documents were shipped to customers in Canada during the relevant period. She identifies the document at Exhibit B—titled “ESPRIT COLLECTION”—as a global product catalogue from the Owner’s corporate office in Europe. Dated “November 2012”, the catalogue contains approximately 30 pages of drawings of various women’s apparel products, accompanied by style and colour numbers and brief descriptions. The Mark is displayed at the top of each page.
• Ms. Fuentes identifies the four-page document at Exhibit C—titled “Block Overview Men Collection”—as a global sell sheet forwarded from the Owner’s corporate office in Europe as part of a “sales pack”. The document contains line drawings of various men’s apparel products with brief descriptions. The Mark is displayed at the top of each page.
• Ms. Fuentes identifies the document at Exhibit D—titled “ESPRIT COLLECTION” and dated “Season K – November 2012”—as an excerpt of a Canadian catalogue featuring “the ESPRIT COLLECTION women’s wearing apparel line”. The catalogue references the “Esprit Montreal Showroom” and contains approximately 30 pages featuring photographs of various women’s apparel and accessory products, with style and colour numbers and brief descriptions for the apparel. I note that mannequins dressed in men’s apparel and accessories are also visible in the background of the first few photographs. In addition, the catalogue contains ordering information and a price list with abbreviated “style descriptions” for much of the depicted women’s apparel—for example, the depicted “viscose nylon Cashmere Cardigan” with a V­neck is referenced in the price list as “VINYCA CARDI VN”. Only a few of the internal catalogue pages are branded: on the initial pages featuring an overview of the ESPRIT COLLECTION line, either the Mark or ESPRIT is displayed.
• Exhibits E and F contain drawings of five hangtags that Ms. Fuentes attests were for “women’s dresses, including formal and holiday dresses” sold in Canada in 2012 (Exhibit E) and “various clothing apparel” sold in Canada during the relevant period (Exhibit F) .The Mark is displayed on each of the depicted hangtags.
• Exhibit G consists of the Mark printed three times in a logo format: ESPRIT in stylized block letters above a smaller “collection” in lower case.Ms. Fuentes identifies the exhibit as “[p]ictures of a sample of logos used during the Relevant Period on visual displays in stores in Canada”. I note that, throughout the exhibits, the Mark is generally displayed in this logo format.
• Exhibits H and I contain photographs of a coat (Exhibit H) and a sweater (Exhibit I); each article features the Mark on its neck label, which Ms. Fuentes refers to as a “hangtag”.Ms. Fuentes attests that such coats and sweaters were sold in Canada during the relevant period.
• Exhibit J is a 12­page document that Ms. Fuentes identifies as an “[i]nternal PowerPoint presentation” that was “circulated internally and to Esprit retailers and agents” in Canada during the relevant period. Titled “ESPRIT”, the presentation describes the Owner’s North American “Brand Portfolio”, which comprises three brands: ESPRIT, ESPRIT COLLECTION and EDC BY ESPRIT. A logo for each brand and four collages depicting various men’s and women’s apparel and accessory items are included in the presentation.
• Exhibit K relates to the sample sales through Millenium Group and consists of three parts. The first part contains two photographs of clothing racks and a photograph of a line-up outside a building.Ms. Fuentes attests that these photographs were taken at sample sales held in 2013 and 2014 in Toronto. Indeed, the visible portions of the signage at the entrance to the building are consistent with “Millenium Group” and “ESPRIT SAMPLE”. The second part of the exhibit depicts an e-mailed “brochure” advertising the “Esprit Fall 2013 Sample Sale at Millenium”, with a reference to “Clothing for both Women and Men” being available, including sweaters, pants, skirts, dresses, suit jackets, suit pants, dress shirts, coats, leather coats, and “Mens T’s”. The third part of the exhibit contains four spreadsheets that Ms. Fuentes attests “outline the types of products that were sold that depict the ESPRIT COLLECTION Mark”. Each spreadsheet relates to an “Esprit” sale during the relevant period and together they provide sales figures for various categories of men’s and women’s apparel and accessories, including jeans, pants, shorts, skirts, dresses, blazers, vests, ties, jackets, coats, blouses, tanks, sweaters, shirts, t­shirts, belts, hats, scarves, purses, wallets and “leather”.
• Exhibit L contains seven invoices, dated during the relevant period, from Esprit Canada Wholesale Inc. to customers in various Canadian cities. Two of the invoices are addressed to Hudsons Bay Company; the remaining customer names are redacted. Although the Mark does not appear on the invoices themselves, Ms. Fuentes identifies various “Collections” referenced in the invoices—namely “Women Collection Main Line”, “WCO Essentials”, “Bodywear Collection” and “Men Collection”—as headings for products branded with the Mark. These products are listed in the invoice using abbreviated descriptions, for example, “METAL SWEA”, “SOVINY SWE”, “LFICOLY TO”, “VILY STRAP”, “ARGYLE CAR” and “L/S AOP”. In the invoices to Hudsons Bay, the listings “SWEATER”, “SHIRT” and “JACKET” appear, but under the heading “EDC Men Main Line”. Finally, the exhibit contains a spreadsheet that Ms. Fuentes identifies as an invoice summary for products branded with the Mark; however, no specific products are identified in this spreadsheet.

[14]  I note that Ms. Fuentes does not specifically correlate each of the registered goods with particular items represented in the exhibits, although she does—in her general descriptions of the exhibits—list some of the goods that are depicted in the catalogues and sell sheet. Upon reviewing the exhibits as a whole in light of Ms. Fuentes’ statements and certain correlations suggested by the Owner at the hearing, I am able to identify a number of the registered goods in the exhibits, as will be further discussed below.

[15]  Ms. Fuentes asserts that the Owner used the Mark in Canada during the relevant period in association with all of the registered goods, with the exception of the perfume products at goods (3). In this respect, Ms. Fuentes states that, “[g]iven the challenges it has faced, [the Owner] made a concerted effort to continue to use its ESPRIT COLLETION mark with all of its Goods, but was unable to do so in association with perfume products.” She points to the agreement reached with Freemark to sell all of the registered goods in Canada under the Mark—including perfume—as an indication of the Owner’s continuing intention to use the Mark with all of the registered goods.

[16]  In her brief second affidavit, Ms. Fuentes specifies that the Owner was unable to sell perfume-related products “since late 2012”. She adds that the Owner’s “financial challenges over the last few years” were “beyond its control” and that the Owner has “a serious intention to resume use of the ESPRIT COLLECTION mark with perfume related products”.

Analysis

[17]  Although Ms. Fuentes asserts that the Owner used the Mark in Canada during the relevant period in association with all of the registered goods except “perfume products”, 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 section 45 proceedings 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 (1984), 80 CPR (2d) 228 (FCA)].

[18]  However, the test to be met in this respect is not a heavy one: the registered owner need only establish a prima facie case of use within the meaning of sections 4 and 45 of the Act [see Cinnabon, Inc v Yoo-Hoo of Florida Corp (1998), 82 CPR (3d) 513 (FCA); and Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184, 90 CPR (4th) 428].

Transfers of the Registered Goods

[19]  The strongest evidence that ESPRIT COLLECTION goods were sold in Canada during the relevant period is with respect to “sweaters” and “tops”. With respect to “sweaters”, the Owner furnished representative images of the Mark displayed on the neck label of a sweater, and I am prepared to accept the invoice entries for “METAL SWEA” and “SOVINY SWE” under the heading “Women Collection Main Line” as being for “sweaters”. I also note that the style number for “SOVINY SWE” corresponds to a drawing of what appears to be a sweater in the catalogue at Exhibit B. With respect to “tops”, the exhibited catalogues depict a tank top—described as a “Straptop” in Exhibit B and as a “Stretch basic camisole” in Exhibit D—which I accept as corresponding to the invoiced “VILY STRAP” having the same style number.

[20]  Although the invoices in question are from Esprit Canada Wholesale and Ms. Fuentes does not indicate that company’s relationship to the Owner, when the evidence is considered as a whole I find it reasonable to infer that Esprit Canada Wholesale was acting on the Owner’s behalf, as its agent or wholesale distributor in Canada.

[21]  With respect to the other registered goods, Ms. Fuentes attests that the Mark appeared on the types of products listed in the sales spreadsheets at Exhibit K. For the purposes of this proceeding, I am prepared to accept the product types listed in the spreadsheets as being general categories that cover multiple registered goods. For example, I accept that references to “jackets” in the spreadsheets may include indoor, outdoor and suit jackets; that “hats” may include both hats and caps; and that “leather” may include items such as belts and bags.

[22]  Furthermore, bearing in mind that the Owner need only establish a prima facie case of use, I am prepared to infer that the sales evidenced by the spreadsheets included the specific types of products depicted—either as featured products or in the background—in the ESPRIT and ESPRIT COLLECTION promotional materials furnished as exhibits.

[23]  As noted above, Ms. Fuentes does not correlate any of the individual product images in the exhibits to the registered goods. However, she does make general statements attesting to the representation of certain registered goods in Exhibits B to D and additional guidance is provided by the brief style descriptions in some of the exhibits.

[24]  Upon reviewing the evidence as a whole and taking into account the Owner’s representations at the hearing, I accept that the following registered goods are represented in the exhibits:

Women’s wearing apparel, namely, jeans, pants, shorts, skirts, dresses, blazers, vests, suits, indoor jackets, outdoor jackets, coats, blouses, tops, sweaters, shirts, overshirts, t­shirts, belts, caps, hats, scarves.

Men’s wearing apparel, namely, jeans, pants, shorts, blazers, vests, suits, ties, indoor jackets, outdoor jackets, coats, tops, sweaters, shirts, overshirts, t­shirts, belts, hats, scarves.

Bags, namely luggage bags, shoulder bags, clutch bags, hand bags, purses, wallets, tote bags, duffle bags.

[25]  I make this determination bearing in mind that, in a section 45 proceeding, “one is not to be astutely meticulous when dealing with language used in a statement of wares” [see Aird & Berlis LLP v Levi Strauss & Co, 2006 FC 654, 51 CPR (4th) 434 at para 17; see also Jeanne Lanvin (une société anonyme) v Ascendia Brands (Canada) Ltd, 2010 TMOB 58, 2010 CarswellNat 1953]. For example, I am prepared to accept certain woman’s sleeveless tops depicted in the catalogue as being a “vest” and, notwithstanding the strap, I am prepared to accept the small, rectangular case depicted on the sixth page of Exhibit D as a “wallet”.

[26]  However, some of the registered goods do not appear to be represented anywhere in the exhibits. Indeed, the Owner concedes that the Mark was not used during the relevant period in association with any of the perfume-related goods. In addition, I was unable to locate any references to the following registered goods:

Women’s wearing apparel, namely, gloves.

Men’s wearing apparel, namely, gloves.

Bags, namely cosmetic bags, gym bags, portfolios, drawstring bags, backpacks, key chains, wrap-around-wrist jogger’s key and money holder strap.

[27]  Although some of the above goods might well be categorized as “leather” in the sales spreadsheets at Exhibit K, none of these goods appears to be depicted in the exhibits.

[28]  In this respect, at the hearing, the Owner submitted that the large, square bag depicted on the sixth page of Exhibit D corresponds to the registered good “drawstring bags”. However, this characterization does not appear in the affidavit and I do not find it to be consistent with the depicted bag on its face. In particular, the image of the bag does not show a drawstring; moreover, the strap along the mouth of the bag seems unlikely for such a closure.

[29]  Finally, Ms. Fuentes does not refer specifically to any of these remaining goods in her affidavit—apart from reproducing the text of the registration. As such, with respect to these remaining goods, her broad statement to the effect that the Owner used the Mark in Canada during the relevant period in association with “all” of the registered apparel and bag goods amounts to a mere assertion of use, rather than a statement of fact showing use.

[30]  In the circumstances, I am not prepared to infer that any of these remaining goods were included in the sales evidenced by the exhibited spreadsheets.

Display of the Mark

[31]  With respect to display of the Mark, I am prepared to accept the neck labels at Exhibits H and I and the hangtag drawings at Exhibit F as being representative of the manner in which the Mark was displayed on—or associated with—the goods in the ESPRIT COLLECTION line sold during the relevant period.

[32]  I note that, while the exhibited catalogues and sell sheet are devoted to the ESPRIT COLLECTION line, the exhibited presentation also features ESPRIT and EDC BY ESPRIT lines. However, Ms. Fuentes confirms that the Owner’s sample sales were for “ESPRIT branded products” and included “ESPRIT COLLECTION branded women’s apparel”.

[33]  Accordingly, although the evidence could have been more precise, it appears that each of the items reflected in the exhibited sales spreadsheet was branded with either the ESPRIT or the ESPRIT COLLECTION trade-mark. Furthermore, for the purposes of this proceeding, I consider the ESPRIT trade-mark to be a minor deviation from the Mark as registered.

[34]  In this respect, in applying the principles set out by the Federal Court of Appeal in Canada (Registrar of Trade Marks) v Cie international pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA) and Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA), I find that the dominant feature of the Mark as registered—being the word ESPRIT—has been maintained. Notwithstanding any marketing strategy behind the Owner’s use or omission of the word COLLECTION, this word is descriptive in association with apparel and accessories. I therefore consider its omission to be a minor variation that does not alter the Mark’s identity; the registered Mark remains recognizable.

[35]  Furthermore, given that the exhibited sample sale brochure promotes the event as an “ESPRIT” sale, I would be prepared to consider display of the EDC BY ESPRIT logo on any goods sold at the sale as being display of both ESPRIT and EDC. In this respect, nothing prevents the display of two trade-marks together [see AW Allen Ltd v Canada (Registrar of Trade Marks) (1985), 6 CPR (3d) 270 (FCTD)].

[36]  In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4 and 45 of the Act in association with the following goods only:

Women’s wearing apparel, namely, jeans, pants, shorts, skirts, dresses, blazers, vests, suits, indoor jackets, outdoor jackets, coats, blouses, tops, sweaters, shirts, overshirts, t­shirts, belts, caps, hats, scarves.

Men’s wearing apparel, namely, jeans, pants, shorts, blazers, vests, suits, ties, indoor jackets, outdoor jackets, coats, tops, sweaters, shirts, overshirts, t­shirts, belts, hats, scarves.

Bags, namely luggage bags, shoulder bags, clutch bags, hand bags, purses, wallets, tote bags, duffle bags.

Special Circumstances

[37]  In the absence of evidence of use of the Mark in association with the remaining goods, the issue is whether, pursuant to section 45(3) of the Act, special circumstances existed to excuse such non­use. 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].

[38]  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)].

[39]  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: (1) the length of time during which the trade-mark has not been in use; (2) whether the reasons for non-use were beyond the control of the registered owner; and (3) whether there exists a serious intention to shortly resume use [per Harris Knitting Mills, supra]. 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].

Do the reasons for non-use constitute special circumstances?

[40]  In this case, Ms. Fuentes states that the Owner was “unable” to use the Mark during the relevant period in association with perfume-related products because of “financial challenges” that resulted in the closure and liquidation of its North American operations. Although Ms. Fuentes’ statements in this respect are directed specifically to the perfume-related goods, the same reasons for non-use would presumably apply to any apparel and accessory goods with which the Mark was not used during the relevant period.

[41]  However, Ms. Fuentes provides no details to indicate that the circumstances surrounding the Owner’s financial challenges were uncommon or exceptional. Indeed, it is well established that, generally, unfavourable economic conditions are not the sort of uncommon, unusual or exceptional reasons for non-use that constitutes special circumstances [see, for example, Lander Co Canada Ltd v Alex E Macrae & Co (1993), 46 CPR (3d) 417 (FCTD)].

[42]  In light of the foregoing, I cannot conclude that the reasons for non-use of the Mark amount to special circumstances in the present case.

Would the circumstances excuse non-use?

[43]  In any event, even if I were to accept that the Owner’s financial challenges could be considered “unusual, uncommon or exceptional” circumstances, I am not satisfied that they excuse the period of non-use in this case. In this respect, I am not satisfied that the Owner has satisfied the criteria set out in Harris Knitting Mills.

[44]  First, Ms. Fuentes’ statement that the Owner was unable to sell perfume-related products since late 2012 implies that this is the date when the Mark was last used in association with those goods. Although an explicit date of last use is not provided for the remaining apparel and accessory goods, in cases such as this, the Registrar generally considers the registration date to be the relevant date for assessing the length of non-use [see Oyen Wiggs Green & Mutala LLP v Rath, 2010 TMOB 34, 82 CPR (4th) 77]. In the present case, the Mark was registered in March 2012.

[45]  Second, although Ms. Fuentes states that the Owner’s financial challenges around this time were “beyond its control” and that the Owner “continued to try and sell” each of the registered goods, she provides no clear reasons as to why it was “unable” to do so in certain cases. For example, she does not disclose any difficulties experienced in the marketing of perfume-related products or list any steps taken to resolve such difficulties. Indeed, the exhibited catalogues and sell sheet sent to the Owner’s own showrooms in Canada for the November 2012 season do not include any perfume-related products, which suggests that the Owner itself had chosen to focus on apparel and bag products at the time.

[46]  Moreover, with respect to Esprit Holding’s decision to close and restructure the North American operations, the Owner furnished no evidence to indicate that this decision was beyond its control.

[47]  Although these decisions may have been made in response to economic conditions, they remain deliberate business strategies. Indeed, the Registrar has previously characterized the prioritization of certain markets or goods over others as voluntary business decisions [see, for example, Survival Systems Training Ltd v Survival Systems Holdings Ltd, 2016 TMOB 14, 2016 CarswellNat 429; and Canada Goose Inc v James, 2016 TMOB 145, 2016 CarswellNat 4726].

[48]  In sum, in the absence of further particulars, I am not satisfied that the circumstances leading to non-use of the Mark in this case may be considered reasons beyond the Owner’s control.

[49]  Third, an intention to shortly resume use of the trade-mark must be substantiated by “a sufficient factual basis” [NTD Apparel Inc v Ryan, 2003 FCT 780, 27 CPR (4th) 73 (FCTD) at paragraph 26; see also Arrowhead Spring Water Ltd v Arrowhead Water Corp (1993), 47 CPR (3d) 217 (FCTD); and Lander, supra]. In this case, although Ms. Fuentes states that Freemark has agreed to sell all of the Owner’s registered goods in Canada, she does not provide any timeframe for the reintroduction of the goods at issue. Nor does she indicate what concrete steps are being taken to bring such products to market. One is therefore left in the dark as to when, if ever, use of the Mark in Canada might resume in association with the remaining registered goods. In the absence of further factual particulars, the evidence concerning the agreement with Freemark is insufficient to demonstrate a serious intention to shortly resume such use.

[50]  Accordingly, I am not satisfied that the Owner has demonstrated special circumstances excusing non-use of the Mark in association with any of the remaining registered goods during the relevant period within the meaning of section 45(3) of the Act.

Disposition

[51]  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 following goods:

(1) [Women’s wearing apparel, namely,] … gloves.

(2) [Bags, namely] cosmetic bags, … gym bags, … portfolios, … drawstring bags, … backpacks, key chains, wrap-around-wrist jogger’s key and money holder strap.

(3) Perfumes, eau de colognes, fragrant preparations, fragrances for personal use, eau de toilette, essential oils, room sprays.

(4) [Men’s wearing apparel, namely,] … gloves.

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

(1) Women’s wearing apparel, namely, jeans, pants, shorts, skirts, dresses, blazers, vests, suits, indoor jackets, outdoor jackets, coats, blouses, tops, sweaters, shirts, overshirts, t­shirts, belts, caps, hats, scarves.

(2) Bags, namely luggage bags, shoulder bags, clutch bags, hand bags, purses, wallets, tote bags, duffle bags.

(4) Men’s wearing apparel, namely, jeans, pants, shorts, blazers, vests, suits, ties, indoor jackets, outdoor jackets, coats, tops, sweaters, shirts, overshirts, t­shirts, belts, hats, scarves.

Oksana Osadchuk

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2017-12-14

APPEARANCES

Stephanie Vaccari	FOR THE REGISTERED OWNER
No one appearing	FOR THE REQUESTING PARTY

AGENTS OF RECORD

Baker & Mckenzie LLP	FOR THE REGISTERED OWNER
Osler, Hoskin & Harcourt LLP	FOR THE REQUESTING PARTY