Citation: 2018 TMOB 16

Date of Decision: 2018-02-12

IN THE MATTER OF A SECTION 45 PROCEEDING

	Smart & Biggar	Requesting Party
and
	NutraSun Foods Ltd.	Registered Owner
	TMA725,125 for NUTRABAKE	Registration

[1]  At the request of Smart & Biggar (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 December 23, 2015 to NutraSun Foods Ltd. (the Owner), the registered owner of registration No. TMA725,125 for the trade-mark NUTRABAKE (the Mark). 

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

Flour; bakery mixes; bakery pre-mixes; packaged and processed pulse crops, mill feeds; pet foods; frozen and par baked doughs; pancake mixes; biscuit mixes; cake mixes; cookie mixes; organic flour; organic bakery mixes; organic bakery pre-mixes; organic packaged and processed pulse crops; organic mill feeds; organic pet foods; organic frozen and par baked doughs; organic pancake mixes; organic biscuit mixes; organic cake mixes; and organic cookie mixes.

[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 it was last in use and the reason for the absence of such use since that date. In this case, the relevant period for showing use is December 23, 2012 to December 23, 2015.

[4]  The definitions of “use” for goods are set out in section 4 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(3) A trade-mark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.

[5]  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 specified in the registration during the relevant period [John Labatt Ltd v Rainer Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. 

[6]   In response to the Registrar’s notice, the Owner furnished the affidavit of Kelvin Maloney, sworn on July 21, 2016 in Winnipeg. Only the Owner filed written representations; a hearing was not requested.

The Owner’s Evidence

[7]  In his affidavit, Mr. Maloney identifies himself as the Director of Corporate Development for the Owner.  He attests that, since 2003, the Owner has operated a flour mill located in Regina, Saskatchewan.  He explains that the Owner supplies “organic and conventional flour and bakery mixes and products” to customers in Canada and the United States for human consumption.

[8]  With respect to the registered goods, Mr. Maloney attests that, during the relevant period, the Owner sold whole flour and various “bakery mixes” in association with the Mark.  He provides annual sales figures for such NUTRABAKE products for 2012 to 2015, amounting to millions of dollars. 

[9]  In particular, attached as Exhibit A to his affidavit is a sales report for NUTRABAKE products covering each month of the relevant period.  He explains that the sales set out in the report were to customers in Canada and the United States, which included members of the general public, retail bakeries and wholesalers.  I note that every item listed is described as “Organic”, for example, “Organic NutraBake White Bulk Flour”, “Organic Nutrabake Dough Conditioner”, “Organic Flax Bread Mix”, “Organic Pancake Mix” and “Organic Multigrain Bread Mix”.

[10]  With respect to display of the Mark, attached as Exhibit B to the affidavit are representative pictures of flour bags bearing the Mark, and attached as Exhibit C are representative pictures of packaging for various mixes bearing the Mark.  These mixes include “Organic Nutrabake dough conditioner”, “Organic Nutrabake Multigrain Mix” and “Organic Nutrabake Flax Bread Mix”.  Again, all the depicted packaging identifies the products as “Organic”.

[11]  Mr. Maloney also attests to bulk sales of NUTRABAKE products that “did not require packaging”.  However, he explains that the invoices for such products displayed the Mark.  By way of example, attached as Exhibit E to his affidavit is a representative invoice from 2015 showing the sale of “Organic NutraBake White Bulk Flour” to a customer in the United States.

[12]  Mr. Maloney also attests to the Owner’s various means of advertising and promoting its NUTRABAKE products during the relevant period.  Attached as Exhibits F to H of his affidavit are promotional sheets, emails to customers and excerpts from the Owner’s website, respectively.  I note that Exhibit F includes promotional sheets for “NutraBake Organic Cookie Mixes” and “NutraBake Organic Complete Pancake Mix”, although the packaging for such products is not shown.

Analysis

[13]  In its written representations, the Owner submits that the evidence shows use of the Mark in association with “flour, bakery mixes and bakery pre-mixes, organic or otherwise.” 

[14]  Acknowledging that some of its sales were to customers in the United States, the Owner correctly notes that such sales still constitute use of the Mark pursuant to section 4(3) of the Act, as the Mark appeared on the packaging of the goods at the time of export.  I would note, however, that the “bulk” sale of organic flour to a customer in the United States evidenced by the Exhibit E invoice would not fall under this definition of use, as Mr. Maloney confirms that the flour product was shipped without packaging and that the Mark only appeared on the subject invoice.

[15]  In any event, the main issue in this case is that the Owner’s use of the Mark appears to be limited to “organic” products, rather than “flour, bakery mixes and bakery pre-mixes … otherwise”.  To the extent that there is a difference between “flour” and “organic flour”, the Owner’s own invoices, packaging and promotional materials indicate that it only sold various types of organic flour in association with the Mark during the relevant period.  Similarly, it would appear that the “bakery mixes” and “bakery pre-mixes” sold by the Owner during the relevant period were also limited to the “organic” variety. 

[16]  As the evidence does not reflect use of the Mark in association with “flour, bakery mixes and bakery pre-mixes” other than organic products, the registration will be amended accordingly [per John Labatt, supra].

[17]  With respect to the remaining goods, although not referenced by the Owner in its representations, I accept that the exhibited sales report reflects a transfer in the normal course of trade of NUTRABAKE “Organic Pancake Mix”.  Although sample packaging for such a product was not provided at Exhibit C, I accept the depicted packaging as being representative of how the Mark would have been displayed on such “organic pancake mix” sold during the relevant period.

[18]  Otherwise, while the evidence arguably includes reference to other registered goods – such as the Exhibit F promotional sheet for “NutraBake Organic Cookie Mixes” – there is no evidence of sales or transfers of such goods during the relevant period or otherwise. 

[19]  In view of the foregoing, I am only satisfied that the Owner has demonstrated use of the Mark in association with “organic flour; organic bakery mixes; organic bakery pre-mixes” and “organic pancake mixes” within the meaning of sections 4 and 45 of the Act. 

[20]  As there is no evidence of special circumstances excusing non-use of the Mark before me, the registration will be amended accordingly.

Disposition

[21]  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 amended to delete the following goods from the registration:

Flour; bakery mixes; bakery pre-mixes; packaged and processed pulse crops, mill feeds; pet foods; frozen and par baked doughs; pancake mixes; biscuit mixes; cake mixes; cookie mixes; ...; organic packaged and processed pulse crops; organic mill feeds; organic pet foods; organic frozen and par baked doughs; …; organic biscuit mixes; organic cake mixes; and organic cookie mixes.

[22]  The amended statement of goods will be as follows: “Organic flour; organic bakery mixes; organic bakery pre-mixes; organic pancake mixes”.

Andrew Bene

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

Pitblado LLP	For the Registered Owner
Smart & Biggar	For the Requesting Party