Citation: 2018 TMOB 93

Date of Decision: 2018-08-28

IN THE MATTER OF SECTION 45 PROCEEDINGS

	Parlee McLaws LLP	Requesting Party
and
	Barry Callebaut AG	Registered Owner
	TMA837,071 for CHOCOLATE MASTERS & DESIGN TMA377,673 for CHOCOLATE MASTERS & DESIGN	Registrations

[1]  At the request of Parlee McLaws LLP (the Requesting Party), the Registrar of Trade-marks issued notices under section 45 of the Trade-marks Act, RSC 1985, c T-13 (the Act) on April 13, 2016 to Barry Callebaut AG (Callebaut), the registered owner of registrations Nos. TMA837,071 and TMA377,673 for the trade-marks CHOCOLATE MASTERS & DESIGN shown below (the Marks):

[2]  The Script Design, which consists of the words “Chocolate Masters” in script with an underline of “Masters”, is registered for use in association with the goods “chocolate and chocolate products, namely chocolate cups, chocolate decorations and chocolate shavings”. The registration includes the following colour claim: “The words ‘Chocolate Masters’ are dark brown and the line under the word ‘Masters’ is light brown.”

[3]  The Oval Design, which consists of the words “Chocolate Masters” in a slightly different script in an oval frame, is registered for use in association with the goods “chocolate and chocolate products namely chocolate cups, chocolate decorations, and chocolate shavings”.

[4]  The notices required Callebaut to furnish evidence showing that the Marks were in use in Canada, in association with the goods specified in the registrations (the Goods), at any time between April 13, 2013 and April 13, 2016. If the Marks had not been so used, Callebaut was required to furnish evidence providing the dates when the Marks were last so in use and the reasons for the absence of such use since that date.

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

[6]  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. As such, the evidentiary threshold that the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448, 31 CPR (4th) 270]. A registered owner need only establish a prima facie case of use during the relevant period within the meaning of sections 4 and 45 of the Act [see Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184, 90 CPR (4th) 428 at paragraph 2].

[7]  I note that, for most of the relevant period, until April 4, 2016, the Marks were registered in the name of Callebaut’s predecessor-in-title, Barry Callebaut Decorations B.V. A confirmatory assignment dated March 1, 2016 was filed in support of the Marks’ transfer to Callebaut; the date of the original assignment is not on file.

[8]  In response to the Registrar’s notices, Callebaut furnished the statutory declaration of Jean-Jacques Berjot, solemnly declared on November 9, 2016. Neither party filed written representations; a hearing was not requested.

Callebaut’s Evidence

[9]  In his declaration, Mr. Berjot identifies himself as the Commercial Director for Canada of the Callebaut Group’s Gourmet & Decorations Division, and an employee of Barry Callebaut USA, LLC (Callebaut USA). He states that Callebaut is part of the Callebaut Group and that Callebaut USA and Barry Callebaut Canada Inc. (Callebaut Canada) are wholly owned subsidiaries of Callebaut or of a subsidiary of Callebaut.

[10]  Mr. Berjot states that, during the relevant period, Callebaut USA and Callebaut Canada were licensed by Callebaut to use the Marks. He further states that “Callebaut, as owner of the [Marks], had, under the license, direct or indirect control of the character or quality of the Goods to which the [Marks] were affixed or associated and exercised such control”.

[11]  Mr. Berjot states that Callebaut operates as a business-to-business chocolate and cocoa manufacturer and is “the world’s leading supplier of high-quality chocolate and cocoa products”. He explains that Callebaut “serves the entire food industry, whether it be industrial food manufacturers or artisans and personal users of its chocolate and cocoa products.” He specifies that such products are sold through Callebaut USA and Callebaut Canada to customers that include wholesalers of bakery products and other suppliers of food products and ingredients.

[12]  With respect to use of the Marks, Mr. Berjot attests that, during the relevant period, the Marks were displayed on documents that accompanied shipments of chocolate cups, chocolate decorations, and chocolate shavings to Canadian customers. In this respect, he attaches to his declaration the following exhibits:

• Exhibit A­1 consists of two price lists titled “Chocolate Masters Decoration Blowout Sale!”, for products that include various cups, decorations, shavings, and truffle shells. I note that the product descriptions all begin with the letters CM, which Mr. Berjot explains refer to the product “Chocolate Masters”. The footer of each list provides telephone numbers for two “Barry Callebaut customer service representative[s]”, as well as the address for Callebaut Canada. The Oval Design is prominently displayed at the top of each price list.
• Exhibit A­2 is a six-page product catalogue for “Chocolate Masters ready made quality decorations and tailor made chocolate innovations”. It contains images and brief descriptions of various forms of chocolate and chocolate products—including cups, decorations, shavings, truffle shells and napkin rings. The product category descriptions include references to “Chocolate Masters chocolate decorations” and “Chocolate Masters truffle shells”. The catalogue provides contact information for Barry Callebaut sales team members in Canada, including Mr. Berjot. The title page prominently displays the Script Design, above the words “Gourmet Collection” in small, plain lettering.
• Exhibit A­3 contains five invoices, dated from August 29, 2013 to May 13, 2014, showing sales of various chocolate and chocolate products by Callebaut USA to companies in Quebec, Ontario, and British Columbia. Mr. Berjot identifies each of these companies as a supplier or wholesaler of bakery or other food products or ingredients. Among the invoiced products are ones that appear in the exhibited price lists and catalogue, including cups, decorations, shavings, and truffle shells. The product descriptions for these entries begin with the letters CM or the abbreviation “Choc. Masters”, and their product codes match those in the price lists and catalogue. Mr. Berjot states that the exhibited invoices are representative of invoices for sales of the Goods in Canada in the normal course of trade.

[13]  Mr. Berjot attests that one or both price lists were included in shipments of the Goods to Canadian customers during the relevant period, and that customers used these lists to place orders. Similarly, he attests that the catalogue was enclosed in such shipments and used for customers to order the Goods. I also note that, for three of the four invoiced purchasers, its billing address is the same as its shipping address.

[14]  Mr. Berjot emphasizes that, “in the normal course of Callebaut’s trade, all of the [Goods] were purchased and received in Canada by purchasers during the Relevant Period, where documentation prominently featuring the [Marks] accompanied the goods at the time of receipt”.

Analysis

[15]  As indicated above, Callebaut filed a confirmatory assignment with the Registrar on April 4, 2016. However, Mr. Berjot attests that, during the relevant period, Callebaut USA and Callebaut Canada were licensed to use the Marks and that Callebaut, “as owner of the Trade-Marks”, controlled the character or quality of the licensed Goods. Such ownership is consistent with the evidence before me, including Mr. Berjot’s express statement that all of the Goods and accompanying documentation were received by purchasers in Canada during the relevant period in the normal course of Callebaut’s trade. In any event Mr. Berjot’s specifically states that, during the relevant period, the owner of the Marks controlled the character or quality of the Goods to which the Marks were affixed under licence. Accordingly, for purposes of the present case, I am satisfied that any evidenced use of the Marks during the relevant period enures to the benefit of the owner.

[16]  With respect to such use, Mr. Berjot makes a clear assertion that the Marks were used in Canada in association with the Goods during the relevant period. His assertion is supported by representative invoices showing sales and shipment of the Goods to companies in Canada in combination with the display of the Marks on price lists and a catalogue that he attests accompanied the Goods at the time of delivery. Although the catalogue’s title page displays the Script Design immediately above the words “Gourmet Collection”, the design mark stands out as distinct from the smaller, descriptive words, such that the Script Design per se is perceived.

[17]  The Federal Court of Appeal has held that display of a trade-mark on printed materials that accompany goods at the time of transfer in the normal course of trade may constitute use in association with the goods in certain circumstances where there is a notice of association between the trade-mark and the goods [see BMW Canada Inc v Nissan Canada Inc, 2007 FCA 255, 60 CPR (4th) 181]. Display of a trade-mark in catalogues and similar documents used for ordering purposes can also provide the required notice of association [see, for example, Dart Industries Inc v Baker & McKenzie LLP, 2013 FC 97, 2013 CarswellNat 188]. It has also been held that invoices displaying style or product codes that correspond to the catalogue entries used for ordering can continue the notice of association provided by the catalogues [see Rosenstein v Elegance Rolf Offergelt GmbH (2005), 47 CPR (4th) 196 (TMOB); and Plastibec Inc v Newell Window Furnishings Inc, 2011 TMOB 106, 2011 CarswellNat 2653].

[18]  In the present case, I am satisfied that the requisite notice of association was provided by the exhibited price lists and catalogue displaying the Marks. Upon review of the materials and given Mr. Berjot’s sworn statements, I accept that at least some customers would have used such price lists and catalogues to place their orders. Furthermore, given Mr. Berjot’s evidence regarding inclusion of these materials with shipments of the purchased goods, I am satisfied that the notice of association continued when the goods were transferred to the purchasers. In addition, matching the product codes in the price lists and catalogue with the product codes and “CM” or “Choc. Masters” notations in the invoices at the time of delivery would provide a further notice of association.

[19]  Although the Marks are displayed only at the top of the price lists and catalogue, I am satisfied that their display in this case provides a notice of association between the Marks and the individual products listed within the documents. In this respect, the major consideration is “whether the trade-mark is being used as a trade-mark in describing the wares” and “whether appropriate notice of such use is being given to the transferee of the wares” [see Tint King of California Inc v Canada (Registrar of Trade Marks), 2006 FC 1440, 56 CPR (4th) 223 at paragraph 32]. This determination depends upon such factors as the prominence of the trade-mark, whether other trade-marks appear in the document, and whether other goods or manufacturers are referenced [see Hortilux Schreder BV v Iwasaki Electric Co, 2012 FCA 321, 2012 CarswellNat 4836, at paragraphs 11‑12].

[20]  In the present case, each Mark is prominently displayed on the materials in question and the only goods listed therein are chocolate and chocolate products. Moreover, although some of the products have creative style names, they do not appear to be identified with any other manufacturers or brands. Accordingly, I am satisfied that the Marks would be perceived as identifying the line of chocolate and chocolate products set out in the price lists and catalogue.

[21]  As noted above, I am also satisfied that the notice of association thus provided continued with the Marks’ display on fresh copies of the price lists and catalogue delivered with the purchased goods and through the matching of product codes on invoices delivered with the goods.

Disposition

[22]  In view of all of the foregoing, I am satisfied that Callebaut has demonstrated use of the Marks in association with the registered goods within the meaning of sections 4(1) and 45 of the Act.

[23]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with section 45 of the Act, the registrations will be maintained.

Oksana Osadchuk

Hearing Officer

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

ROBIC	FOR THE REGISTERED OWNER
Parlee McLaws LLP	FOR THE REQUESTING PARTY