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

  Citation: 2018 TMOB 37

Date of Decision: 2018-04-20

IN THE MATTER OF A SECTION 45 PROCEEDING

	Homer TLC, Inc.	Requesting Party
and
	C.G. Punjani Investments Ltd.	Registered Owner
	TMA414,246 for HOME ACCENTS	Registration

[1]  At the request of Homer TLC, 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 December 9, 2015 to C.G. Punjani Investments Ltd. (the Owner), the registered owner of registration No. TMA414,246 for the trade-mark HOME ACCENTS (the Mark).

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

Glassware, tableware namely: batter bowls, cake pans, pie plates, loaf pans, chip and dip sets, creamers, sugar bowls, salt and pepper shakers, butter dishes, banana split boat dishes, sundae glasses; measuring cups, mixing bowls, glass ovenware, jars, bowls, plates, glasses, cups, saucers, platters, punch bowls, salad bowls, jugs, candy dishes, candle holders, ashtrays, food keepers, casserole dishes, glass microwave cookware, flower vases, tumblers, mugs, stemware, teapots, picture frames.

[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 December 9, 2012 and December 9, 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 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 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.

[6]   In response to the Registrar’s notice, the Owner furnished the affidavit of Bertram Sinnathamby, sworn on July 8, 2016 in Burnaby, British Columbia.

[7]    Both parties filed written representations, but only the Owner was represented at an oral hearing.

Overview of the Evidence

[8]  In his affidavit, Mr. Sinnathamby identifies himself as the controller for Modern Houseware Imports Inc. He explains that Modern is a licensee of the Owner, authorized to use the Mark in association with various goods and services, including the registered goods. He attests that, since 1982, Modern has been in the business of importing, selling and distributing a variety of houseware and household items to retail stores in Canada for resale to customers.  Such retail stores include Army & Navy, Sobey’s and Buck Or Two. Attached as Exhibit A to his affidavit is a copy of the subject trademark license agreement, dated March 24, 2015. 

[9]  Mr. Sinnathamby further states that, in 2014, the Owner amalgamated with The Hutchings Company (Canada) Inc., the original owner of the subject registration.  He explains that the Owner, Modern and Hutchings were and are related companies under common control. 

[10]  With respect to the Mark, Mr. Sinnathamby attests that, during the relevant period, it was “used in association with a variety of goods (including those in the Registration) sold in Canada by Hutchings (before the amalgamation) or Modern (after the amalgamation)”.

[11]  In particular, Mr. Sinnathamby provides evidence of sales and use of the Mark with respect to eight household items, described below.

[12]  One of the issues in this case is that the affiant does not clearly correlate these eight goods with any of the goods as registered.  As such, I will summarize the evidence as it is described by Mr. Sinnathamby in his affidavit.

[13]  Exhibits C through F relate to a two-piece “glass cruet set”.  Exhibit C is an image of the product, which the affiant identifies as representative of the cruet sets sold in Canada by Hutchings or Modern during the relevant period.  I note that the Mark appears on the product packaging.  Exhibit D is a sales history report from Hutchings showing sales of such cruet sets in Canada during the relevant period.  In particular, Exhibits E and F are printouts of invoices showing sales of cruet sets from Hutchings to retailers in British Columbia during the relevant period.

[14]  Exhibits G through I relate to a “four-piece liqueur glass set”.  Exhibit G is an image of the packaging, which displays the Mark.  The packaging also depicts one of the glasses, which has a stem.  Exhibit H is a sales history report from Hutchings showing sales of these liqueur glass sets to retailers in Canada during the relevant period.  Exhibits I and J are copies of invoices showing sales of such goods from Hutchings to retailers in Quebec and British Columbia during the relevant period.

[15]  Exhibits B and K through M relate to “mixing bowls”. Exhibit B is a printout of portions of Hutchings’ catalogues from the relevant period. One of the products shown in the catalogues is a mixing bowl set, displaying the Mark.  Exhibit K is a printout of a sales history report from Hutchings showing sales in Canada of such bowl sets.  Exhibits L and M are copies of invoices showing sales of such mixing bowl sets from Hutchings to retailers in British Columbia during the relevant period.

[16]  Exhibits N through P relate to “flower vases”.  Exhibit N consists of two photographs of a flower vase. The first photograph shows the vase displayed for sale and the other photograph shows the UPC sticker on the bottom of the vase. The sticker also displays the Mark.  Exhibit O is a sales inventory report from Modern showing sales of such vases in Canada during the relevant period.  In particular, Exhibit P is a copy of an invoice from Modern to a retailer in Nova Scotia, showing a sale of such vases during the relevant period.

[17]  Exhibits Q through T relate to a “two-piece baking dish set”.  Exhibit Q is an image of the packaging for such a set, displaying the Mark.  Exhibit R is a sales history report from Hutchings, showing the sale of such dish sets in Canada during the relevant period.  Exhibits S and T are copies of invoices for the product sold by Hutchings to retailers in British Columbia during the relevant period.

[18]  Exhibits U through W relate to a “rectangular roaster”.  Exhibit U is an image of the roaster, displaying the Mark.  Exhibit V is a sales history report from Modern, showing sales of such rectangular roasters to Canadian retailers during the relevant period.  In particular, Exhibit W is an invoice showing a sale of such roasters from Modern to a retailer in Vancouver during the relevant period.

[19]  Exhibits X through Z relate to an “oval roaster”.  Exhibit X is a photograph of the roaster, displaying the Mark.  Exhibit Y is a sales inventory report from Modern, showing sales of such oval roasters to Canadian retailers during the relevant period.  Exhibit Z is an invoice showing a sale of the product from Modern to a retailer in Alberta during the relevant period.

[20]  Finally, Exhibits AA through CC relate to a “canner”.  Exhibit A is a photograph of the canner, displaying the Mark.

[21]  The product appears to be a type of pot with an inner rack. Exhibit BB is a sales inventory report from Modern, showing sales of the product to Canadian retailers during the relevant period.  In particular, Exhibit CC is an invoice for such canners sold by Modern to a retailer in Newfoundland during the relevant period.

Analysis

[22]  To summarize, for eight products, Mr. Sinnathamby’s affidavit includes an image of the product, a sales history report and at least one invoice demonstrating sales in the normal course of trade by either Hutchings or Modern to a Canadian retailer during the relevant period.  In each case, the Mark appears on the product or its packaging.

[23]  In its written representations, the Requesting Party notes that some of the invoices do not identify the source of the goods, such that it is unclear whether these invoices originated from Hutchings or from Modern.  Accordingly, depending on whether the invoices pre-date or post-date the evidenced licensing agreement, the Requesting Party submits that the evidence is ambiguous as to whether the Mark was used by the registered owner or a proper licensee of the Mark.  However, in his affidavit, Mr. Sinnathamby clearly identifies either Hutchings or Modern for each invoice, such that I am satisfied that any evidenced use of the Mark enures to the benefit of the Owner. 

[24]  However, as mentioned above, the issue is whether each of the HOME ACCENTS products in evidence correlate with any of the goods as registered.

[25]  First, with respect to the “mixing bowl set” (Exhibit B) and the “flower vase” (Exhibit N), these products clearly correlate to the registered goods “mixing bowls” and “flower vases”, respectively.

[26]  With respect to the “glass cruet set” evidenced at Exhibits C through F, the Owner submits that this product correlates to the registered good “glassware”.  However, I agree with the Requesting Party that “glassware” is further specified in the statement of goods, in that the “namely” in “Glassware, tableware namely…” applies to both “glassware” and “tableware”.  In this respect, I note that a semi-colon does not separate “glassware” and “tableware”. 

[27]  While there is arguably some ambiguity in whether the statement of goods should be interpreted in this manner, I note that such an interpretation is consistent with the history of the file.  Specifically, in the examiner’s report on file dated February 21, 1992, it was indicated that “The wares … designated as glassware, tableware; fountainware should be defined specifically in ordinary commercial terms”.  By way of response dated August 5, 1992, the applicant at that time provided that “The wares described as ‘fountainware’ have been deleted and the wares described as ‘glassware’ and ‘tableware’ have been particularized.”  The application then proceeded to advertisement and registration in its current form. 

[28]  At the oral hearing, the representative for the Owner indicated that they were not familiar with the history of the file in this respect.  Regardless, I do not accept the evidence of use of the Mark in association with glass cruet sets to constitute use of any of the following as specified in the statement of goods: “Glassware, tableware namely: batter bowls, cake pans, pie plates, loaf pans, chip and dip sets, creamers, sugar bowls, salt and pepper shakers, butter dishes, banana split boat dishes, sundae glasses”.

[29]  With respect to the “four-piece liqueur glass set” (Exhibit G), I agree with the Owner that the stem-style glass depicted correlates with the registered good “stemware”.

[30]  Similarly, with respect to the “two-piece baking dish set” (Exhibit Q), I agree with the Owner that such dishes correlate with the registered good “casserole dishes”.  In this respect, I accept that the definition of “casserole dishes” is broad enough to encompass the evidenced baking dishes. 

[31]  With respect to the two types of roasters, evidenced at Exhibits U through Z, the Owner submits that such products correlate to the registered goods “loaf pans”.  However, neither the affiant nor the evidenced labelling for the roasters indicates that the products are also known as loaf pans. As such, I do not accept the Owner’s mere assertion in its representations that use of the Mark in association with the evidenced “roasters” constitutes use of the Mark in association with the registered good “loaf pans”.

[32]  Similarly, I do not agree with the Owner’s assertion that the “canner”, evidenced at Exhibits AA through CC, correlates to the registered good “cake pans”. Again, nothing on the evidenced labelling would indicate that a “canner” is also a “cake pan”.  More importantly, the Mr. Sinnathamby himself does not make the correlation in his affidavit.

[33]  In view of all 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: “mixing bowls”, “casserole dishes”, “flower vases” and “stemware”.

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

Disposition

[35]  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 from the statement of goods:

Glassware, tableware namely: batter bowls, cake pans, pie plates, loaf pans, chip and dip sets, creamers, sugar bowls, salt and pepper shakers, butter dishes, banana split boat dishes, sundae glasses; measuring cups, … glass ovenware, jars, bowls, plates, glasses, cups, saucers, platters, punch bowls, salad bowls, jugs, candy dishes, candle holders, ashtrays, food keepers, … glass microwave cookware, … tumblers, mugs, … teapots, picture frames.

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

Mixing bowls, casserole dishes, flower vases, stemware.

 

_________________________ 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 2018-03-12

APPEARANCES

Andy Chow	FOR THE REGISTERED OWNER
No one appearing	FOR THE REQUESTING PARTY

AGENTS OF RECORD

Smiths IP	FOR THE REGISTERED OWNER
Bereskin & Parr LLP/S.E.N.C.R.L.,s.r.l.	FOR THE REQUESTING PARTY