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

Citation: 2018 TMOB 1

Date of Decision: 2018-01-02

IN THE MATTER OF A SECTION 45 PROCEEDING

	Low Murchison Radnoff LLP	Requesting Party
and
	Groupe Phoenicia Inc.	Registered Owner
	TMA591,863 for MARQUE DE CÈDRE - CEDAR BRAND et dessin	Registration

introduction

[1]  At the request of Low Murchison Radnoff 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 February 4, 2016, to Groupe Phoenicia Inc. (the Owner), the registered owner of registration No. TMA591,863 for the trade-mark MARQUE DE CÈDRE – CEDAR BRAND et dessin reproduced below (the Mark):

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

Processed and canned foods, namely fava beans, chick beans, red and white romano beans, broad beans, lupini beans, black eye beans, large lima, green lentils, chick peas dip, eggplant dip, mixed beans, salad beans, okra, artichoke hearts, artichoke bottoms, molouckhia (Egyptian Spinach), spinach, apricot jam, fig jam, cherry jam, strawberry jam, quince jam, bitter orange jam, date jam, rose jam, orange blossom jam, walnut jam, sardines, canned meat, chicken, peas, orange blossom water, rose water, pomegranate molasses, carob molasses, date molasses, grape molasses, honey, olives, olive oil, corn oil, vegetable oil, ghee, butter ghee pure, vegetable ghee, fruits syrup, dates syrup, minced dates, falafel, mouhalabia (cooked mix of milk and starch), sahlab, moughrabiyia (small macaroni grains), taboule, cracked wheat, burghol, wheat, semolina, rice, jasmin rice, basmati rice, red lentils, brown lentils, roasted nuts, nouga, roasted seeds, dry fruits, cheese, yogourt, yogourt spread, pressed yogourt, liquid yogourt, labneh (dried yogourt), kieshk (blé concassé pétri dans le lait caillé fermenté), pickled pepper, pickled cucumber, wild cucumber, turnips, mixed vegetables, canned vegetables, sesame oil (tahina), and halawa (a confectionnery made of sesame oil, seeds and glucose with or without pistachio), vegetable salads, fruit salads.

[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 February 4, 2013 and February 4, 2016.

[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. While mere assertions of use are not sufficient to demonstrate use in the context of a section 45 proceeding [see Plough (Canada) Ltd v Aerosol Fillers Inc (1979), 45 CPR (2d) 194, aff’d (1980), 53 CPR (2d) 63 (FCA)], the threshold for establishing use in these proceedings is quite low [see Lang, Michener, Lawrence & Shaw v Woods Canada Ltd (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [see Union Electric Supply Co v Canada (Registrar of Trade-marks) (1982), 63 CPR (2d) 56 (FCTD)]. However, 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 an affidavit of its Executive Director, Antoine Gholam, sworn September 1, 2016 (the Gholam affidavit).

[7]  Only the Owner filed written representations; an oral hearing was not requested.

the owner’s evidence

[8]  In his affidavit, Mr. Gholam attests that the Owner specializes in the marketing of a wide variety of food products. He further specifies that the Owner is in business since 1989 and is recognized in Canada and the United States of America as a “major pioneer” in the marketing of food products from the Middle East. [Gholam affidavit, para 3]

[9]  Mr. Gholam states that the Owner’s diverse range of products, including the registered goods sold under the Mark, are available throughout Canada. [Gholam affidavit, para 4] Mr. Gholam collectively refers to the registered goods as the “Products” [in French “les Produits”], and I will do the same while reviewing his affidavit.

[10]  Mr. Gholam then broadly states at paragraph 5 of his affidavit that, since at least as early as 1999, including during the relevant period, the Owner has sold the Products under the Mark in Canada, and that the Products have been found in more than 600 points of sale, which are mostly food markets and restaurants.

[11]  Mr. Gholam adds at paragraph 6 of his affidavit that:

Plus particulièrement, je sais que les Produits suivants ont été vendus par Phoenicia durant la période pertinente [translation] “More particularly, I am personally aware that the following Products were sold by [the Owner] during the relevant period”:

Processed and canned foods, namely fava beans, falafel, mouhalabia, (cooked mix of milk and starch), sahlab, taboule, sesame oil (tahina).

[12]  Mr. Gholam goes on to provide the sales figures for the years 2016 (until June 30); 2015 and 2014 for each of the particular products listed in paragraph 6 of his affidavit. He further explains that each of these products is sold in cases (“vendu en caisses”) displaying the Mark and that the falafel is also sold in bulk in a container displaying the Mark. [Gholam affidavit, paras 7, 8 and 9]

[13]  In support of the foregoing, Mr. Gholam attaches the following exhibits to his affidavit:

• Exhibit 1: copies of invoices dated from within the relevant period covering the particular products listed in paragraph 6 of his affidavit.
• Exhibit 2: copies of photographs of tin cans displaying the Mark. I note that the products depicted therein consist of tahini and fava beans. Mr. Gholam adds that these photographs are representative of how the Mark was displayed on the Products during the relevant period.
• Exhibit 3: copy of a photograph of a cardboard box (“caisse de carton”) displaying the Mark. Mr. Gholam adds that this photograph is representative of how the Mark was displayed on the cardboard boxes used for the packaging of the Products during the relevant period.

[14]  Mr. Gholam states that the supply and marketing of the Products under the Mark are in continuous expansion. More particularly, he states at paragraph 14 of his affidavit that:

[…] Phoenicia travaille toujours de concert avec ses fournisseurs et sa clientèle afin de déterminer quels produits pourront être mis en vente sous peu, pour autant que ces produits respectent les standards de rapport qualité-prix établis par Phoenicia. [translation] “[…] [The Owner] continues to work with its suppliers and its customers to determine which products can be put on sale shortly, provided that these products meet the standards of value for money established by [the Owner]”.

[15]  Mr. Gholam concludes his affidavit by stating at paragraph 15 that:

Au vu de ce qui précède, il est clair que la Marque est utilisée par Phoenicia en liaison avec les Produits. Plus particulièrement, les informations contenues à cette déclaration démontrent clairement que la Marque était utilisée par Phoenicia en liaison avec les Produits et ce, dans le cours normal de ses affaires au Canada, durant la période pertinente. [translation] “In view of the foregoing, it is clear that the Mark is used by [the Owner] in association with the Products. More specifically, the information contained in this declaration clearly demonstrates that the Mark was used by [the Owner] in association with the Products in the normal course of its business in Canada during the relevant period.

analysis

[16]  In its brief written representations, the Owner submits that the evidence of Mr. Gholam clearly demonstrates that the Owner made use of the Mark in Canada in association with all of the registered goods during the relevant period. The Owner further submits that, as the Requesting Party made no representations, it follows that the Requesting Party does not dispute that the Owner has shown use of the Mark in association with each and every one of the registered goods.

[17]  I disagree.

[18]  First, the absence of representations from the Requesting Party does not absolve me from having to assess the sufficiency of the evidence.

[19]  Second, the evidence in this case is limited to the particular goods listed in paragraph 6 of Mr. Gholam’s affidavit, reproduced above. Indeed, notwithstanding Mr. Gholam’s bald statement of use in paragraph 5 of his affidavit, none of the exhibited invoices or photographs supports his assertion of use in association with any of the remaining registered goods. Moreover, I find that Mr. Gholam’s statement in paragraph 14 of his affidavit, reproduced above, suggests that the Mark might not have been used in association with each and every one of the remaining registered goods. As a result, I cannot conclude that transfers of such goods bearing the Mark occurred in Canada during the relevant period.

[20]  Furthermore, the Owner has provided no evidence of special circumstances excusing the absence of use of the Mark in association with these goods.

[21]  In view of the foregoing, I am only satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4(1) and 45 of the Act in association with the registered goods set out in paragraph 6 of the Gholam affidavit. The registration will be amended accordingly.

Disposition

[22]  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:

[…] chick beans, red and white romano beans, broad beans, lupini beans, black eye beans, large lima, green lentils, chick peas dip, eggplant dip, mixed beans, salad beans, okra, artichoke hearts, artichoke bottoms, molouckhia (Egyptian Spinach), spinach, apricot jam, fig jam, cherry jam, strawberry jam, quince jam, bitter orange jam, date jam, rose jam, orange blossom jam, walnut jam, sardines, canned meat, chicken, peas, orange blossom water, rose water, pomegranate molasses, carob molasses, date molasses, grape molasses, honey, olives, olive oil, corn oil, vegetable oil, ghee, butter ghee pure, vegetable ghee, fruits syrup, dates syrup, minced dates, […] moughrabiyia (small macaroni grains), […], cracked wheat, burghol, wheat, semolina, rice, jasmin rice, basmati rice, red lentils, brown lentils, roasted nuts, nouga, roasted seeds, dry fruits, cheese, yogourt, yogourt spread, pressed yogourt, liquid yogourt, labneh (dried yogourt), kieshk (blé concassé pétri dans le lait caillé fermenté), pickled pepper, pickled cucumber, wild cucumber, turnips, mixed vegetables, canned vegetables, […], and halawa (a confectionnery made of sesame oil, seeds and glucose with or without pistachio), vegetable salads, fruit salads.

[23]  The amended statement of goods will read as follows:

Processed and canned foods, namely fava beans, falafel, mouhalabia (cooked mix of milk and starch), sahlab, taboule, sesame oil (tahina).

Annie Robitaille

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

Norton Rose Fulbright Canada LLP/S.E.N.C.R.L., s.r.l.	FOR THE REGISTERED OWNER
Low Murchison Radnoff LLP	FOR THE REQUESTING PARTY