OPIC		CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADE-MARKS

  Citation: 2018 TMOB 27

Date of Decision: 2018-02-28

IN THE MATTER OF A SECTION 45 PROCEEDING

	Rock and Rose Inc.	Requesting Party
and
	Mexx Global B.V.	Registered Owner
	TMA334,906 for MEXX	Registration

[1]  At the request of Rock and Rose Inc. (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 March 20, 2015 to Mexx Europe B.V., the predecessor-in-title of Mexx Global B.V. (the Owner), the registered owner of registration No. TMA334,906 for the trade-mark MEXX (the Mark).

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

(1) Printed matter, namely, magazines, catalogues, newsletters, newspapers, video-sleeves, stylesheets, postcards, colourcards, press-release sets, posters, advertising sets, windowstanding boards, retail-promotion maps, polybags, X-mas cards, answering-cards, yearbooks, trend reports, advertising campaign books, hangtags, labels, outdoor signs, indoor signs, stickers and boards, merchandising aids, and give-aways; photographs; plastic bags; office equipment, namely, computer software; men's and women's clothing, namely, pants, shorts, bermuda shorts, sweatshirts, cardigans, sweaters, T-shirts, jackets, blazers, suits, vests, coats, raincoats, scarves, belts, socks, gloves; men's trousers, shirts, ties; women's skirts, dresses, blouses; footwear, namely, men's and women's shoes; headgear, namely, caps and hats.

(2) Children's clothing, namely, pants, shorts, skirts, waistcoats, singlets, t-shirts, sweatshirts, cardigans, blouses, jackets, dresses, jumpsuits, scarves, caps, hats, swimwear, mittens, headbands, culottes, shawls, joggingsuits, sleepwear, underwear, sweaters, socks, suspenders, tights, beachshirts, bodywarmer, bermuda shorts, vests, belts, blazers, coats, ties, cummerbunds, spencer, and children's shoes.

 

[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 between March 20, 2012 and March 20, 2015.

[4]  The relevant definition of “use” in association with goods is set out in section 4(1) of the Act:

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]  It is well established that the purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for removing “deadwood” from the register and, as such, the evidentiary threshold that the registered owner must meet is quite low [Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270].

[6]  In response to the Registrar’s notice, the Owner furnished the affidavit Bülent Taşci, sworn on October 8, 2015, a member of the board of directors for the Owner.

[7]    Only the Owner filed written representations. A hearing was not held.

Overview of the Evidence.

[8]  In his affidavit, Mr. Taşci states that in December of 2014 the Owner’s predecessor-in-title, Mexx Europe B.V., was declared bankrupt (para 6, Exhibit 1) and the registration for the Mark was assigned to the Owner on January 28, 2015 (para 7(d), Exhibit 1).  Mr. Taşci further states at para 6:

For decades, the mark MEXX has been used in Canada in association with the Goods, namely men’s, women’s, and children’s clothing.  In December of 2014, the predecessor-in-title, Mexx Europe B.V., was declared bankrupt by the district court of Amsterdam.  At that time, there was about 95 retail Mexx stores in operation in Canada selling the Goods.  The retail Mexx stores in Canada remained open while the Goods were sold off and the stores closed in and around February of 2015.  The Goods continued to be sold in other retailer’s stores.  My company is now restructuring the Mexx business operations in Canada and strategizing on re-expanding operations in Canada.  At this time, Mexx will continue to sell the Goods bearing the mark MEXX through other retailers.

[9]  Mr. Taşci’s affidavit includes pictures of clothing with Mexx labels and tags, evidence of advertising and social media engagement and invoices and purchase orders corroborating his statement above.

Analysis

No Use of the Mark With the Non-Clothing Goods

[10]  With respect to the non-clothing goods set out below, Mr. Taşci’s affidavit is silent and the Owner made no representations regarding use of the Mark in association with these goods.  As there is no evidence of special circumstances excusing non-use, the registration will be amended to delete the following goods which will not be discussed further in this decision.

Printed matter, namely, magazines, catalogues, newsletters, newspapers, video-sleeves, stylesheets, postcards, colourcards, press-release sets, posters, advertising sets, windowstanding boards, retail-promotion maps, polybags, X-mas cards, answering-cards, yearbooks, trend reports, advertising campaign books, hangtags, labels, outdoor signs, indoor signs, stickers and boards, merchandising aids, and give-aways; photographs; plastic bags; office equipment, namely, computer software.

Use of the Mark With Certain Clothing Goods is Shown

[11]  With respect to use of the Mark in association with clothing goods, Mr. Taşci provides that the goods are sold with labels and tags featuring the Mark and provides representative examples of some of the registered clothing goods with labels and tags which are the “same or substantially the same” as the labels and tags used during the relevant period (para 9(a), Exhibit 2).  Mr. Taşci further states “the net revenues in Canada attributed to the advertisement and sales of the [clothing goods] bearing the Trade-mark for each of the years in the relevant period were in the millions of dollars” (para 10).

[12]  Mr. Taşci states that the Owner has only limited access to the business materials of its predecessor-in-title Mexx Europe B.V. (para 8) and provides the following evidence of sales of the goods listed below in association with the Mark by Mexx Canada Company (the licensee of Mexx Europe B.V.) (para 4).  I find the documentary evidence provided by Mr. Taşci of invoices (Exhibit 13), purchase orders (Exhibit 15), and archived webpage printouts from the licensee website mexxcanada.ca (Exhibit 3) and the retailer website hudsonbay.ca (Exhibit 9) to be sufficient proof of sales of the following goods.  Given that the Owner does not have full access to the historical sales information and considering that sales of clothing goods in the relevant period exceeded millions of dollars, I consider the display of certain goods on the archived website to meet the prima facie burden of showing sales.  For ease of reference, the specific evidence relied on as proof of sales is indicated in brackets beside the goods.

(1) men's and women's clothing, namely, pants (Invoice No. 805864), shorts (Exhibit 3), bermuda shorts (Exhibit 3), sweatshirts (Invoice No. 805787), cardigans (Invoice No. 783367), sweaters (Invoice No. 783302), T-shirts (Invoice No. 805864), jackets (Invoice No. 783424), blazers (Invoice No. 805906), suits (Exhibit 3), raincoats (Exhibit 3), coats (Invoice No. 783312), scarves (Invoice No. 783775), belts (Invoice No. 805774), socks (Invoice No. 783574), men's trousers (Purchase Order CA0006698); shirts (Exhibit 3), ties (Exhibit 3); women's skirts (Invoice No. 805864), dresses (Invoice No. 805866), blouses (Invoice No. 805906); headgear, namely, hats (Invoice No. 783575).

(2) Children's clothing, namely, pants (Invoice No. 783562), shorts (Exhibit 3), skirts (Invoice No. 805834), t-shirts (Invoice No. 783562), sweatshirts (Invoice No. 783423), cardigans (Invoice No. 783348), blouses (Exhibit 3), jackets (Invoice No. 783278), dresses (Invoice No. 783562), jumpsuits (Invoice No. 783280), caps (Invoice No. 809608), hats (Invoice No. 783424), swimwear (Invoice No. 809608),  headbands (Invoice No. 783562), jogging suits (Invoice No. 805811), sleepwear (Invoice No. 783563), sweaters (Invoice No. 783424), socks (Invoice No. 783562), tights (Invoice No. 783562), bodywarmer (Invoice No. 783290), bermuda shorts (Exhibit 3), vests (Exhibit 3), belts (Invoice No. 783638), blazers (Invoice No. 783289), coats (Exhibit 3), spencer (Exhibit 3) and children's shoes (Invoice No. 783360).

[13]  Mr. Taşci’s evidence also includes printouts from the Owner’s Twitter account and retailer websites offering for sale MEXX branded goods dated within six months after the relevant period (Exhibits 6 and 12).  These printouts include footwear, namely, men's and women's shoes and children’s underwear in addition to the other clothing goods for which use is shown.  Given that the Owner has explained that it did not have full historical evidence from its predecessor-in-title and in the absence of submissions from the Requesting Party, I infer from this evidence that there was a continuity of sales of footwear and children’s underwear throughout and after the relevant period [Boutique Progolf Inc v Marks & Clerk (1993) 54 CPR (3d) 451 (FCA)] and accept that the Owner has also shown use of the Mark in association with these goods.  I do not, however, consider that the principle of continuity of sales applies for the remaining registered clothing goods for which use is not shown during the relevant period, as I do not find sales of these goods has been shown by the Owner after the relevant period. 

[14]  Accordingly, in view of the labels and other evidence provided by the Owner, I am satisfied that the Owner has demonstrated use of the Mark in association with the following goods within the meaning of sections 4 and 45 of the Act:

(1) Men's and women's clothing, namely, pants, shorts, bermuda shorts, sweatshirts, cardigans, sweaters, T-shirts, jackets, blazers, suits, coats, raincoats, scarves, belts, socks; men's trousers, shirts, ties; women's skirts, dresses, blouses; footwear, namely, men's and women's shoes; headgear, namely, hats.

(2) Children's clothing, namely, pants, shorts, skirts, t-shirts, sweatshirts, cardigans, blouses, jackets, dresses, jumpsuits, caps, hats, swimwear, headbands, jogging suits, sleepwear, underwear, sweaters, socks, tights, bodywarmer, bermuda shorts, vests, belts, blazers, coats, spencers and children's shoes.

No Use or Special Circumstances Shown With Respect to the Remaining Goods

[15]  In the absence of evidence of use of the Mark with respect to the remaining clothing goods, the issue is whether, pursuant to section 45(3) of the Act, special circumstances existed to excuse such non‑use. 

[16]  Generally, a determination of whether there are special circumstances that excuse non-use involves consideration of three criteria, as set out in Registrar of Trade Marks v Harris Knitting Mills Ltd (1985), 4 CPR (3d) 488 (FCA).  The first is the length of time during which the trade-mark has not been in use, the second is whether the reasons for non-use were beyond the control of the registered owner and the third is whether there exists a serious intention to shortly resume use.  Further, the intent to resume use must be substantiated by the evidence [Arrowhead Spring Water Ltd v Arrowhead Water Corp (1993), 47 CPR (3d) 217 (FCTD); NTD Apparel Inc v Ryan 2003 FCT 780].

[17]  In view of the foregoing, even if I were to conclude that the predecessor-in-title’s bankruptcy and subsequent acquisition of the Mark by the Owner in this case constitutes special circumstances, I would not be satisfied that the circumstances set out in the evidence excuse the Owner’s failure to use the Mark with the remaining clothing goods.  The Federal Court has previously held that “mere intention to resume use is not satisfactory and must be substantiated by factual elements such as purchase orders or, at least, a specific date of resumption” [Lander Co Canada Ltd v Alex E Macrae & Co (1993), 46 CPR (3d) 417 (FCTD) at paragraph 15].  In this case, no such specifics with respect to the remaining clothing goods have been provided.  Specifically, it is not clear to me that the Owner has a serious intention to shortly resume use in association with the following goods as opposed to other clothing goods:

Men's and women's clothing, namely, vests, gloves; headgear, namely, caps.

Children's clothing, namely, waistcoats, singlets, scarves, mittens, culottes, shawls, suspenders, beachshirts, ties, cummerbunds.

Disposition

[18]  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 the provisions of section 45 of the Act, the registration will be amended to delete the registered goods shown struckout below:

(1) Printed matter, namely, magazines, catalogues, newsletters, newspapers, video-sleeves, stylesheets, postcards, colourcards, press-release sets, posters, advertising sets, windowstanding boards, retail-promotion maps, polybags, X-mas cards, answering-cards, yearbooks, trend reports, advertising campaign books, hangtags, labels, outdoor signs, indoor signs, stickers and boards, merchandising aids, and give-aways; photographs; plastic bags; office equipment, namely, computer software;

 

(1) Men's and women's clothing, namely, pants, shorts, bermuda shorts, sweatshirts, cardigans, sweaters, T-shirts, jackets, blazers, suits, vests, coats, raincoats, scarves, belts, socks, gloves; men's trousers, shirts, ties; women's skirts, dresses, blouses; footwear, namely, men's and women's shoes; headgear, namely, caps and hats.

(2) Children's clothing, namely, pants, shorts, skirts, waistcoats, singlets, t-shirts, sweatshirts, cardigans, blouses, jackets, dresses, jumpsuits, scarves, caps, hats, swimwear, mittens, headbands, culottes, shawls, joggingsuits, sleepwear, underwear, sweaters, socks, suspenders, tights, beachshirts, bodywarmer, bermuda shorts, vests, belts, blazers, coats, ties, cummerbunds, spencer, and children's shoes.

 

The amended statement of goods will read as follows:

 

(1) Men's and women's clothing, namely, pants, shorts, bermuda shorts, sweatshirts, cardigans, sweaters, T-shirts, jackets, blazers, suits, coats, raincoats, scarves, belts, socks; men's trousers, shirts, ties; women's skirts, dresses, blouses; footwear, namely, men's and women's shoes;  headgear, namely, hats.

(2) Children's clothing, namely, pants, shorts, skirts, t-shirts, sweatshirts, cardigans, blouses, jackets, dresses, jumpsuits, caps, hats, swimwear, headbands, joggingsuits, sleepwear, underwear, sweaters, socks, tights, bodywarmer, bermuda shorts, vests, belts, blazers, coats, spencers and children's shoes.

_________________________ Natalie de Paulsen Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

TRADE-MARKS OPPOSITION BOARD CANADIAN INTELLECTUAL PROPERTY OFFICE APPEARANCES AND AGENTS OF RECORD ___________________________________________________ No Hearing Held AGENTS OF RECORD Richards Buell Sutton LLP FOR THE REGISTERED OWNER No agent appointed FOR THE REQUESTING PARTY
Richards Buell Sutton LLP	FOR THE REGISTERED OWNER
No agent appointed	FOR THE REQUESTING PARTY