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

Citation: 2018 TMOB 90

Date of Decision: 2018-08-04

IN THE MATTER OF AN OPPOSITION

	USA PRO IP Limited	Opponent
And
	Courtaulds Textiles America, Inc.	Applicant
	1,603,627 for USAPRO & Design	Application

Introduction

[1]  As the evidence will show, USA PRO IP Limited (the Opponent) sells sporting wear and equipment in association with the USA PRO trade-mark in many countries around the world.  Between 2011-2014, the Opponent sold over £40 million USA PRO branded products.  Several years prior to the filing of this application for the trade-mark USAPRO & Design set out below by Montfort Services Sdn. Bhd (“Montfort Services”), a company related to Montfort Services, was in negotiations with the Opponent’s predecessor-in-tite  to purchase a 50% stake in it.

[2]  For the reasons that follow, I refuse this application. In the absence of any evidence being filed by Montfort Services or the current owner of the trade-mark Courtaulds Textiles America, Inc., I cannot find that the application complies with section 30(i) of the Trade-marks Act, RSC 1985, c T-13 [Act] which requires that an applicant be satisfied of its entitlement to use the trade-mark in Canada.

Background

[3]  On November 22, 2012, Montfort Services filed an application to register the Mark.  This trade-mark was subsequently assigned to Courtaulds Textiles America, Inc. (both entities referred to collectively as the Applicant).  The application was filed based on proposed use of the Mark in Canada in association with the following Goods:

(1) Leather and imitation leather; bags, namely, sports bags, backpacks, bags and holdalls for sports clothing, daypacks, duffel bags, gym bags, sports packs, mini rucksacks, rucksacks, waist packs, handbags and travelling bags; valises, satchels, cases for travel kits, vanity cases, drawstring pouches, shoulder bags, kitbags, shopping bags, beach bags, briefcases, wallets, key cases, credit card cases, change purses; umbrellas, parasols; walking sticks;

(2) Articles of clothing, namely, shirts, blouses, t-shirts, tank tops, shorts, pullovers, cardigans, sweaters, sweatshirts, sweatpants, jackets, vests, skirts, dresses, suits, pants, jeans, coats, windbreakers, raincoats, hosiery, socks, scarves; sports and leisure wear namely sports bras, skirts, shorts, polo shirts, jackets, exercise pants, tights, shirts, tennis dresses, underwear, thermal long pants, thermal vests, support vests, camisoles, tank tops; headgear namely hats, baseball caps, toques, bandanas, headbands; footwear namely shoes, boots, sandals;

(3) Games and playthings, namely gymnastic, fitness and sporting articles and equipment, namely, balance beams, horizontal bars, mats, rings, rhythmic gymnastic hoops, ribbons and ropes, trampolines, training stools; Ankle and wrist weights for exercise, athletic equipment, namely, training devices, namely weights to be attached around the waist, elasticated belts for stretching calves, quads and backs, skipping ropes, weightlifting belts, bags specially adapted for sports equipment, balls for sports, namely, cricket balls, golf balls, basket balls, soccer balls, rugby balls, footballs, tennis balls, medicine balls and inflatable balls, barbells, exercise balls, exercise bars; exercise weights, leg weights, personal exercise mats, portable ski carriers, running gloves, shin guards for athletic use, shoulder pads for athletic use, stretch bands used for yoga and physical fitness purposes, treadmills, trolley bags specially adapted for sports equipment, weight lifting gloves, workout gloves, wrist guards for athletic use, yoga mats.

[4]  The application was advertised for opposition purposes in the Trade-marks Journal of October 7, 2015.

[5]  On March 7, 2016, the Opponent filed a statement of opposition.  Following a request from the Applicant, the Registrar issued an interlocutory ruling.  On August 31, 2016, leave was granted to amend the statement of opposition in compliance with the ruling. Following a request from the Opponent, leave was granted to file a second amended statement of opposition on January 24, 2017.  All references to the grounds of opposition in this decision are references to the grounds as pleaded in the second amended statement of opposition.

[6]  The grounds of opposition are summarized below:

(a)  The application does not conform to the requirements of section 30(e) of the Act because the Applicant’s statement that it intends to use the Mark with the applied-for goods is false.

(b)  The application does not conform to the requirements of section 30(i) of the Act because the Applicant could not have been satisfied when it filed the application that it was entitled to use the Mark.

(c)  The Applicant is not the person entitled to register the Mark pursuant to sections 16(3)(a) and 16(3)(c) of the Act because it was confusing with the Opponent’s USA PRO trade-marks and with the USA PRO trade-name.

(d)  The Mark is not distinctive under section 2 of the Act.

[7]  The Applicant filed and served a counter statement in which it denies the Opponent’s allegations.

[8]  The Opponent filed as its evidence the affidavits and declarations of Linda Joyce Elford, Cameron Olsen, Andrew Ngo, Dane Penney as well as a certified copy of application no. 1,454,804.  In arriving at my decision, I did not find it necessary to have regard to Mr. Penney’s affidavit, as such I will not reference it or discuss it in my decision.

[9]   The Applicant did not file any evidence.  The Opponent filed a written argument.  Borth parties attended a hearing.

Legal Onus and Evidential Burden

[10]  Before considering the grounds of opposition, it is necessary to review some of the technical requirements with regard to (i) the evidential burden on an opponent to support the allegations in the statement of opposition and (ii) the legal onus on an applicant to prove its case. 

[11]  With respect to (i) above, there is, in accordance with the usual rules of evidence, an evidential burden on the opponent to prove the facts inherent in its allegations pleaded in the statement of opposition [John Labatt Limited v The Molson Companies Limited, 30 CPR (3d) 293 at 298 (FCTD)]. The presence of an evidential burden on the opponent with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. With respect to (ii) above, the legal onus is on the applicant to show that the application does not contravene the provisions of the Act as alleged by an opponent in the statement of opposition (for those allegations for which an opponent has met its evidential burden). The presence of a legal onus on an applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against an applicant. 

Evidence of Mr. Olsen

[12]  As this case turns on the evidence of Mr. Olsen, I provide a brief summary of his affidavit below and discuss two issues raised by the Applicant at the hearing.

[13]  Mr. Olsen is the Company Secretary of the Opponent (para 1) and has held his position since December 4, 2013 (para 2).  He attests that he has full access to the books and records of the Opponent (para 3).  Mr. Olsen provides information about the Opponent’s ownership of trade-marks for USA PRO (and design versions of this trade-mark) in various jurisdictions (para 8, Exhibit C), sales and advertising of its sportswear (paras 6-7, 11), and the Opponent’s relationship with a company related to the Applicant (paras 14-15, Exhibit F).  Mr. Olsen attaches to his affidavit: invoices, receipts, marketing materials and third party references to the USA PRO brand (Exhibits B, D, E).

Ambiguities in Evidence

[14]  At the hearing, the Applicant submitted that any ambiguities in the evidence should be resolved against the Opponent.  I agree.  Even though the Applicant may have requested cross-examination of Mr. Olsen to clear up areas of evidence where there are ambiguities, it was under no obligation to do so as the Registrar has consistently held that such ambiguities are to be resolved against the party putting forward the evidence in an opposition case [Power Budd, LLP v Beaudry, 2006 CanLII 80342 (TMOB); Ben Sherman Group Limited v Knautz, 2013 TMOB 122 at para 53].

No Certified Translations

[15]  Attached to Mr. Olsen’s affidavit are several opposition and cancellation decisions concerning applications for USA PRO which he indicates were filed by the Applicant or Courtaulds in other jurisdictions (para 17, Exhibit H).  Some of the decisions are not translated and other decisions include translations which are not certified.  I agree with the Applicant that the exhibits which are in languages other than English or French and not accompanied by a certified translation are inadmissible.  This is consistent with section 68(1) of the Federal Court Rules¸ SOR/ 98-106, which states that, “…all documents required under these Rules to be filed in a proceeding shall be in English or French or be accompanied by a translation in English or French and an affidavit attesting to the accuracy of the translation”.

Grounds of Opposition

[16]  Below, I consider each of the grounds of opposition beginning with the section 30(i) ground of opposition.

Section 30(i) Ground of Opposition

[17]  The Opponent alleges that the application does not comply with section 30(i) of the Act because the Applicant could not have been satisfied when it filed the application that it was entitled to use the Mark in Canada.  The Opponent alleges that the Applicant could not have been satisfied because:

(a)  it was aware at that time that the Opponent and/or its predecessor-in-title had previously used in Canada one or more of the USA PRO Trademarks and the USA PRO trade name, with which it knew the [Mark] had been confusing …; and/or

(b)  it was aware, based on a commercial relationship between it and/or its predecessor-in-title and the Opponent and/or its predecessor-in-title, that the Opponent was the rightful owner of the [Mark], and knew that its use would have been illegal and/or violate the Opponent’s rights (the Applicant had this knowledge because a company related to the Applicant entered into discussions in 2007 and 2008 with the Opponent’s predecessor-in-title to acquire a 50% stake in the Opponent’s predecessor-in-title, pursuant to which the company related to the Applicant would have provided financing for extension and growth of the USA PRO brand worldwide); and/or

(c)  it was aware that the assignment pursuant to which it acquired the application was legally ineffective or void ab initio, and knew that its use of the [Mark] would have been illegal and/or violate the Opponent’s rights.

[18]  The material date for considering this ground of opposition is November 22, 2012, the date of filing the application [Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475].

[19]  Section 30(i) requires an applicant to indicate as part of its application that it is satisfied that it is entitled to use the trade-mark in Canada in association with the applied-for goods and services.  The statement provided by section 30(i) purports to be evidence of the applicant’s good faith in submitting its application [Cerverceria Modelo SA de CV v Marcon (2008), 70 CPR (4th) 355 (TMOB) at 366].  The Registrar explains in FremantleMedia North America Inc v Wright Alternative Advertising Inc (2009), 77 CPR (4th) 311 at 317:

Section 30(i) of the Act requires the applicant to indicate as part of its application that the applicant is satisfied that it is entitled to use the trade-mark in Canada in association with the listed wares and/or services.  In Canadian Trade-marks Act – Annotated Robic Leger, rev. ed. (Scarborough, Ont.: Carswell) (looseleaf), H.G. Richard discusses s. 30(i) (formerly s. 29(i)) as follows at 30-47, 30-48:

The final consideration before proceeding to the actual search of the indexes and examination of the mark itself, is whether or not the applicant is satisfied "that he is entitled to use the mark in Canada in association with the wares or services described in the application". This can be looked at as a type of contract between the applicant and the public, establishing that all information and supporting evidence, including revisions or additions of same, have been submitted in good faith, and that the application as it stands, is approved by the applicant... (emphasis added)

[20]  Where an applicant has provided the statement required by section 30(i), this ground of opposition should only succeed in exceptional cases.  The Registrar has previously found exceptional cases where (i) there is evidence of bad faith on the part of the applicant [Sapodilla Co Ltd v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]; and (ii) where there is a prima facie case of non-compliance with a federal statute such as the Copyright Act RSC 1985, c C-42 or Food and Drugs Act, RSC 1985, c F-27 [Interactiv Design Pty Ltd v Grafton-Fraser Inc (1998), 87 CPR (3d) 537 (TMOB) at 542-543].

Has the Opponent Met its Evidential Burden?

[21]  At the outset, I acknowledge that a person may file an application for a trade-mark in Canada which it knows has been used and registered in another country and this does not necessarily constitute bad faith [Viper Room Development, LLC v 672661 Alberta Ltd, 2014 TMOB 201 at para 14; Santa Barbara Restaurant Group, Inc v Jay Veto, 2014 TMOB 286 at paras 32-33; Taverniti SARL v DGGM Bitton Holdings Inc (1986), 8 CPR (3d) 400 (TMOB) at 404-405].   What distinguishes this case, in my view, is the pre-existing relationship between companies related to the Applicant and the Opponent which I find relevant to the issue of good faith.  While the subject opposition is admittedly distinguishable from the CBM Kabushiki Kaisha v Lin Trading Co (1987), 14 CPR (3d) 32 (FCTD) case due to the state of the negotiations between the parties and the passage of time between the negotiations and the filing of the application, I find the following comments of Joyal J instructive (paras 19-20):

I would not wish to suggest that the kind of ownership in the trade mark enjoyed elsewhere than in Canada by the respondent is necessarily a bar to an applicant securing the registration of an identical trade mark in Canada. I need to repeat again that the issue before me arises out of the special relationships between the parties where not only were contracts made to buy and sell Q & Q watches in Canada but communications were exchanged with respect to the possibility of appointing the appellant exclusive distributor of Q & Q watches and of setting up a system for the assembly of watch parts in Canada. I should doubt in such circumstances that the appellant can successfully argue that the trade mark had not been made known in Canada by any other person. Nor can the appellant successfully establish that it is the person entitled to registration. To find otherwise would be to gloss over the cloud under which the appellant purported to adopt the trade mark in the first place. To find otherwise would make a virtue of questionable conduct and give legitimacy to what I consider to be dubious commercial practice.

For those who subscribe to the Kelsen school of law and who might object to any moralistic flavour to statute interpretation, I may add that recognizing the appellant's claim would, in my respectful view, go against public policy and impose artificial meanings to the provisions of ss. 16 and 29 of the Trade Marks Act. 

[22]  In my view, the following evidence raises doubt about the Applicant’s good faith in submitting its application and is sufficient to meet the Opponent’s evidential burden:

(a)  There were negotiations between Courtaulds and the Opponent’s predecessor-in-title to acquire a 50% stake in the Opponent’s predecessor-in-title, pursuant to which the company related to the Applicant would have provided financing for extension and growth of the USA PRO brand worldwide (paras 14-15).  These negotiations took place between January 2007-February 2008 (para 14).

(b)  Mr. Olsen attaches internal emails concerning the negotiations.  Even though these emails may not satisfy the requirements of the business records hearsay exception, I am satisfied that the emails are admissible as it was necessary for Mr. Olsen to file them to assist in meeting the Opponent’s evidential burden and that they are reliable.  Mr. Olsen provides at paragraph 2 to his affidavit that the facts and matters stated therein are in his own personal knowledge or they have been extracted from the records of the Opponent to which he has full access (either directly or through his colleagues).  While sparse in details, I find from the emails that the Opponent’s predecessor-in-title met with Mike Ellis from Courtaulds to discuss obtaining significant financing (January 30, 2007 email from Kevin Jarvis); negotiations took place discussing payment of £2 million for 50% shares (October 31, 2007 email from Kevin Jarvis); and that the deal did not go through (February 28, 2008 email from Kevin Jarvis).

(c)  The email of February 27, 2008 attached to Mr. Olsen’s affidavit references a meeting with Courtaulds which was attended by Mike Ellis and Chris McQuoid (in-house lawyer) (Exhibit F).  I note that Christopher McQuoid is also identified as the Attorney-in-Fact of Montfort Services (the entity who filed this application) and the Director of Courtaulds Textiles America, Inc. (the entity who now owns this application) in the trade-mark assignment of March 19, 2015 filed with respect to this application (Ms. Elford’s affidavit).

(d)  An entity Mr. Olsen describes as the Applicant and/or Courtaulds has applied-for the USAPRO trade-marks in a number of different jurisdictions and the Opponent has opposed them (para 17; Exhibit H).  As certified translations of the purported decisions attached to Mr. Olsen’s affdavit have not been provided, I am not having regard to the evidence as to the outcome of these oppositions or cancellation actions.  That being said, given Mr. Olsen’s position in the company, I accept his evidence that the Applicant or Courtaulds filed applications in Argentina, Japan, Macau, Taiwan, South Korea, and Malaysia and the Opponent opposed these applications. If I am incorrect in doing so, I note that I still would have found the Opponent met its initial evidential burden.

Has the Applicant Met Its Legal Onus?

[23]  As the Applicant has not filed any evidence, it fails to meet its burden of proving that it was satisfied it was entitled to use the Mark in Canada.  While it may well be that the Applicant performed investigations and did not find any evidence of use or reputation of the Opponent’s USA PRO trade-mark in Canada such that it could make the statement that it was entitled to use the Mark, there is no evidence that this did in fact occur. 

Section 30(e) Ground of Opposition

[24]   The Opponent alleges that the application does not comply with section 30(e) of the Act as the Applicant did not intend to use the Mark in association with the goods because it did not intend:

(a)  to use the Mark with all of the goods;

(b)  to use the Mark as it did not intend to use the term USAPRO with the design found in the Mark;

(c)  to use the Mark with all of the goods in a manner that would constitute use under section 4 of the Act;

(d)  to control sufficiently the character or quality of all of the goods; and/or

(e)  to use the Mark, rather the Applicant filed the application solely to prevent others from using and registering the Mark and/or confusingly similar trade-marks.

[25]  The material date for considering this ground of opposition is November 22, 2012, the date of filing the application [Georgia-Pacific Corp v Scott Paper Ltd, supra].  There is no evidence that supports the ground of opposition based on section 30(e) of the Act.  Consequently, this ground is rejected on the basis that the Opponent has not satisfied its evidential burden.

Section 16(3)(a) Ground of Opposition

[26]  The Opponent alleges that the Applicant is not the person entitled to register the Mark because it is confusing with the Opponent’s USA PRO trade-mark and the five design versions of this trade-mark which include the component USA PRO in stylized format (collectively the Opponent’s USA PRO Trade-marks), shown below.

[27]  In order to meet its evidential burden under this ground of opposition, the Opponent must demonstrate that it had used one or more of its pleaded USA PRO Trade-marks prior to November 22, 2012 and that it had not abandoned its trade-mark(s) prior to the date of advertisement of the subject application (October 7, 2015) [see sections 16(3)(a), 16(5) and 17(1) of the Act]. 

[28]  Mr.Olsen provides copies of a few invoices dated in 2007 showing sales of the Opponent’s USA PRO-branded goods with the “Deliver to” field including an address in Canada (Exhibit B).  Reviewing the evidence as a whole, I am satisfied that Invoice Nos. 51330, 51332, 51606, 51607, 51608 and 51892 support a finding that the Opponent used this trade-mark in Canada prior to the filing date for the application for the Mark in association with the goods referenced therein.  At the hearing, the Applicant raised the issue that the invoices were silent as to whether the trade-mark USA PRO was marked on the goods or whether the invoices accompanied the goods at the time of transfer.  I agree with the Applicant with respect to the delivery of the invoices and have not had regard to use of the trade-mark on the invoices.  While ambiguities in the evidence are to be resolved against the Opponent, considering the evidence as a whole, I infer that the goods featured the trade-mark USA PRO.  In this regard, the catalogues attached as Exhibit D to Mr. Olsen’s affidavit feature the trade-mark USA PRO on the same type of clothing as referenced in these invoices.  Based on the foregoing, the Opponent has met the first portion of its evidential burden.

[29]  As there is no evidence of use of the Opponent’s USA PRO Trade-marks after 2007, the issue is whether or not such marks had been abandoned as of the date of advertisement of the subject application, October 7, 2015.  Abandonment requires both the absence of use and an intention to abandon use of a trade-mark [Labatt Brewing Co v Formosa Spring Brewery Ltd (1992), 42 CPR (3d) 481 (FCTD); Marineland Inc v Marine Wonderland & Animal Park Ltd (1974), 16 CPR (2d) 97 (FCTD)].  The question of abandonment in this case concerns whether the Opponent has abandoned its USA PRO Trade-marks in Canada as opposed to in other jurisdictions [Borden Inc v Hostess Food Products Ltd (1989), 28 CPR (3d) 45 (FCTD) at 56].

[30]  At the oral hearing, the Opponent submitted that the evidence of Mr. Olsen, including the following, supports a finding that the trade-mark USA PRO has not been abandoned:

·  The Opponent’s USA PRO brand is sold in over 470 stores worldwide and through its website store.usa.pro.co.uk (paras 4 and5).  Sales of USA PRO branded products between the years 2011-2014 exceeded £40 million (para 6).

·  The Opponent spent over £220,000 on marketing and promotion of its USA PRO brand worldwide between 2012-2014 (para 11).

·  The USA PRO brand is referenced in a number of online news articles and magazines (Exhibit E).  I note, however, that all these articles and magazines post-date the advertisement date of the application.

[31]  As there is no evidence of use of the Opponent’s USA PRO Trade-marks in Canada for a period of over seven years prior to and including the advertisement date of the application, I find that there is a presumption that the Opponent had abandoned its trade-mark in Canada [Iwasaki Electric Co Ltd v Hortilux Schreder BV, 2012 FCA 321 at para 21].  While I acknowledge that the Opponent has evidenced worldwide sales, advertising expenditures and that its USA PRO mark is referenced in a number of online news articles and magazines (albeit after the advertisement date), the evidence in this case does not rebut the presumption that the Opponent had abandoned its trade-mark in Canada at the advertisement date.  Accordingly, the Opponent does not meet its initial evidential burden and this ground of opposition is rejected.

Section 16(3)(c) – Ground of Opposition

[32]  The Opponent alleges that the Applicant is not the person entitled to register the Mark since the Mark was confusing with the USA PRO trade-name which had been previously used by the Opponent in Canada.  For the same reasons as with respect to the section 16(3)(a) ground of opposition, I reject this ground of opposition on the basis that the Opponent has not met its evidential burden of demonstrating that it had not abandoned its trade-name in Canada prior to the date of advertisement of the subject application.

Section 2 Ground of Opposition

[33]  The Opponent alleges that the Mark is not distinctive because it does not actually distinguish, nor has it been adapted so to distinguish, the Goods from the goods and services of the Opponent associated with its USA PRO Trade-marks and the Opponent’s business of providing of those goods and services in association with the confusing trade-name USA PRO.

[34]  A ground of opposition based on non-distinctiveness is not restricted to the sale of goods or services in Canada. It may also be based on evidence of knowledge or reputation of the an opponent’s trade-mark or trade-name including that spread by means of word of mouth or newspaper and magazine articles [Motel 6, Inc v No 6 Motel Ltd, (1981), 56 CPR (2d) 44 (FCTD) at 58-59].

[35]  The material date with respect to distinctiveness is the date of filing of the opposition, March 7, 2016 [Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].

[36]  The following propositions summarize the relevant jurisprudence on distinctiveness [Bojangles’ International, LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC) at paras 33-34].

• The evidential burden lies on the party claiming that the reputation of its mark prevents the other party’s mark from being distinctive;

• However, a burden remains on the applicant for the registration of the trade-mark to prove that its mark is distinctive;

• A mark should be known in Canada to some extent at least to negate another mark’s distinctiveness and its reputation in Canada should be substantial, significant or sufficient;

• Alternatively, a mark could negate another mark’s distinctiveness if it is well known in a specific area of Canada; and

• A foreign trade-mark owner cannot simply assert that its trade-mark is known in Canada, rather it should present clear evidence to that effect.

 

Has the Opponent Met its Evidential Burden?

[37]  While Mr. Olsen’s evidence described below supports an inference that there may be a number of Canadians who have come into contact with the Opponent’s USA PRO Trade-marks and trade-name, taken as a whole it is not sufficient to show that any of its trade-marks or its trade-name is known to some extent in Canada and has a reputation in Canada substantial, significant or sufficient to negate the distinctiveness of the Mark.  As such, the Opponent has not met its evidential burden.

Worldwide Sales and Advertising Information

[38]  Mr. Olsen provides that the annual sales of USA PRO branded products between the years 2011-2014 was in excess of £40 million (para 6) and the expenditure on marketing and promotion for this brand for the years 2012-2014 was £220,000 (para 11).  The fact that there is significant worldwide sales and expenditures on advertising does not result in the inference that the brand is known in Canada.

References on Websites

[39]  Mr. Olsen attaches printouts from the website store.usapro.co.uk  from which he says products are sold worldwide (paras 4-5, Exhibit A).  There is, however, no evidence of sales or visits to the website from Canada.

Catalogues, Advertisements and References in Third Party Publications

[40]  Mr. Olsen attaches printouts from websites referencing that the band Little Mix are ambassadors for the USA PRO brand (Exhibit E), as well as catalogues and advertisements (Exhibit D).  There is no evidence that any of these have been viewed by a sufficient number of Canadians as of the material date.  Furthermore, per the declaration of Andrew Ngo, I do not consider the fact that Mr. Ngo was able to purchase various UK publications (some of which are print versions of the few on-line magazines in Exhibit E) to support an inference that the Opponent’s trade-marks and trade-name have a reputation in Canada.

Sales in Canada

[41]  The Opponent’s few invoices showing sales in Canada in 2007 (Exhibit B) does not result in the inference that as of the material date the Opponent’s USA PRO Trade-marks and trade-name had any reputation in Canada.  The evidence concerning sales in Canada is both de minimus and too remote in time.

Conclusion

[42]  Accordingly, this ground of opposition is rejected on the basis that the Opponent has not met its evidential burden.

Disposition

[43]  Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application pursuant to section 38(8) of the Act.

 

______________________________

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

___________________________________________________

HEARING DATE: 2018-05-09

APPEARANCES

Jonathan G. Burkinshaw	For the Opponent
Sarah Kilpatrick	For the Applicant

AGENTS OF RECORD

Bereskin & Parr LLP/S.E.N.C.R.L.,s.r.l.	For the Opponent
McMillan LLP	For the Applicant