Citation: 2018 TMOB 98

Date of Decision: 2018-09-17

IN THE MATTER OF A SECTION 45 PROCEEDING

	Method Law Professional Corporation	Requesting Party
and
	Urban Rags Clothing Inc.	Registered Owner
	TMA670,460 for VOLTAGE SYSTEM	Registration

Introduction

[1]  This decision pertains to a summary expungement proceeding with respect to registration No. TMA670,460 for the trade-mark VOLTAGE SYSTEM (the Mark), owned by Urban Rags Clothing Inc. (the Owner).

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

Jeans, shirts, t-shirts, tank tops, shorts, swim trunks, skirts, sweaters, coats, jackets, ski-suits, polo shirts, for men, ladies, boys and girls (collectively referred to as “the Products”).

[3]  For the reasons that follow, I conclude that the registration ought to be amended so that it covers only “shirts for men”.

The Proceedings

[4]  On September 16, 2016, at the request of Method Law Professional Corporation (the Requesting Party), the Registrar of Trade-marks sent a notice (the Notice) under section 45 of the Trade-marks Act, RSC 1985, c T-13 (the Act) to the Owner.

[5]  The Notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between September 16, 2013 and September 16, 2016 (the Relevant Period), in association with the Products. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last used and the reasons for the absence of use since that date.

[6]  The relevant definition of “use” in association with goods reads 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.

[7]  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. The criteria for establishing use are not demanding and an overabundance of evidence is unnecessary. Nevertheless, sufficient facts must be presented to allow the Registrar to conclude that the trade-mark was used in association with each of the goods specified in the registration at any time during the relevant period [see Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448, 31 CPR (4th) 270]. Mere statements of use are insufficient to prove use of the trade-mark [see Aerosol Fillers Inc v Plough (Canada) Ltd (1980), 53 CPR (2d) 62 (FCA)].

[8]  The Owner filed, as its evidence, the affidavit of Parsegh Vahe Tashdjian dated November 8, 2016 to which were annexed Exhibits A-1 to A-3 inclusive.

[9]  Only the Requesting Party filed written representations and no hearing was held.

The Owner’s Evidence

[10]  Mr. Tashdjian is the Owner’s Secretary and Treasurer. He refers to registration TMA670,460 property of the Owner which covers the Products. However, Mr Tashdjian uses interchangeably in his affidavit the defined term “Goods” to refer to “shirts for men” with explicit references to those goods. Throughout my decision, I will simply refer to “shirts for men” or I will use the defined term “the Products”, as applicable.

[11]  Mr. Tashdjian states that the Owner was using the Mark well before and during the Relevant Period in the normal course of trade in Canada in association with shirts for men. He adds that during the Relevant Period the Owner sold shirts for men to retailers in Canada, which in turn were selling those goods to consumers.

[12]  To substantiate these allegations, Mr. Tashdjian annexes to his affidavit the following exhibits:

• Exhibit A-1: five invoices issued in April 2015 to a retailer located in Rimouski, Quebec to evidence the sale of shirts for men, branded with the Mark;
• Exhibit A-2: purchase orders dated September 15, 2014 addressed to the Owner’s supplier with respect to shirts for men bearing the Mark. The style numbers of the shirts depicted therein correspond to those appearing on the invoices at Exhibit A-1;
• Exhibit A-3: a representation of the kind of label affixed to the shirts for men referred to in Exhibit A-1.

[13]  Mr. Tashdjian confirms that each shirt for men sold and referred to in Exhibit A-1 had a woven sewn-in label inside the collar. Despite the fact that Exhibit A-3 refers to a woven label for fleece hoodie, he confirms that similar labels, bearing the Mark, were sewn into the shirts sold and referred to in the invoices.

[14]  Finally, Mr. Tashdjian states that the shirts for men referred to in Exhibit A-1 were delivered on or about the dates of the invoices to the named client and were paid for by that client.

Requesting Party’s Arguments

[15]  The Requesting Party raises four main issues:

• The invoices at Exhibit A-1 do not bear the Mark;
• No men’s shirts with the Mark were provided;
• No actual hangtag or label with the Mark was provided; and
• The evidence of use of the Mark in the record is limited to shirts for men.

 

Discussion on the Requesting Party’s Arguments

The invoices do not bear the Mark

[16]  The Requesting Party argues that none of the invoices attached as Exhibit A-1 bear the Mark, which is an essential element for an invoice to establish use of a trade-mark. Furthermore, despite  the deponent’s statement that the item numbers shown on the invoices correspond to shirts for men bearing the Mark, which were delivered to the client and for which payment was received, the Requesting Party submits that no shipping or packing slip or proof of payment has been provided by the deponent.

[17]  It is true that invoices alone can constitute evidence of use of a trade-mark if the Mark appears on the invoices in a manner that provides notice of association with the goods and the invoices accompanied the goods at the time of their delivery [see Novopharm Ltd v Novo Nordisk A/S (2005), 41 CPR (4th) 188 (TMOB)].

[18]  However, in our case, more than just invoices were filed as evidence of use of the Mark: there is a label bearing the Mark and there are purchase orders of shirts for men in association with the Mark. The evidence must be viewed as a whole and not dissected into individual components with a view to then criticizing each element [Kvas Miller Everitt v Compute (Bridgend) Limited (2005), 47 CPR (4th) 209 (TMOB)]. As stated above, a section 45 proceeding is administrative in nature and its purpose is to get rid of the “deadwood” on the register.

[19]  Mr. Tashdjian attests that the item numbers appearing on the invoices correspond to shirts for men sold in association with the Mark. In fact, the item numbers on the invoices correspond to the item numbers appearing on the purchase orders, filed as Exhibit A-2.

[20]  The Requesting Party argues that purchase orders sent to a manufacturer of goods for the Owner do not constitute evidence of use of a trade-mark. Moreover, the Requesting Party asserts that we cannot see the Mark on the shirt depicted on each purchase order filed.

[21]  Again, one must not look at the purchase orders in isolation, but together with the statements contained in the affidavit and the other exhibits filed.

[22]  There is a reference to the Mark, on those purchase orders, under the heading “MAIN LABEL”. I agree with the Requesting Party’s observations that the Mark is not visible on the shirts depicted in the bottom right hand corner of each purchase order. However, there appears to be a representation of a label in that corner, although it is largely illegible, the word VOLTAGE can be made out in some of the images.

[23]  The Requesting Party points out that, elsewhere on the purchase orders, there is the mention “HANGTAG: VOLTAGE” whereas under the heading “MAIN LABEL”, the Mark appears, which creates some ambiguity. The Requesting Party submits that Mr. Tashdjian has not provided any explanation on the meaning of those inscriptions in the purchase orders. However, it is possible to make use of two distinct trade-marks simultaneously [see AW Allen Ltd v Canada (Registrar of Trade Marks) (1985), 6 CPR (3d) 270 (FCTD)],

[24]  In all, I consider that there is no contradiction between the statements made by Mr. Tashdjian concerning the sale of shirts for men by the Owner in association with the Mark during the Relevant Period and the content of the purchase orders. They all contain a reference to the Mark and the item numbers indicated therein correspond to the item numbers mentioned in the invoices.

No men’s shirts with the Mark were provided

[25]  The Requesting Party argues that the Owner did not file a sample of a shirt for men bearing the Mark. As mentioned above, the evidence must be viewed as a whole. Mr. Tashdjian affirms that the Owner sold shirts for men in association with the Mark in Canada during the Relevant Period. In support , he filed invoices, a label and purchase orders corresponding to the items described in the invoices. Under these circumstances, the fact that the Owner has not filed a sample of a shirt for men is not prejudicial to it.

No actual hangtag or label provided

[26]  The Requesting Party points out that the tag illustrated at Exhibit A-3 was affixed to fleece goods and not shirts for men. Mr. Tashdjian does not state that the Mark was used in association with fleece hoodies during the Relevant Period. Therefore, according to the Requesting Party, the label must date from before the Relevant Period. It adds that a negative inference must be drawn from the fact that an actual sample of a label bearing the Mark used during the Relevant Period has not been provided by the Owner, particularly since the Tashdjian affidavit was sworn and provided merely two months after the Notice and just over one year after the alleged use of the Mark.

[27]  I do not agree with the Requesting Party’s position. Concerning the label, Mr. Tashdjian states:

9. Now shown to me and marked as Exhibit A-3 to this my affidavit is a representation of the kind of label affixed to the shirts referred to in Exhibit A-1 to this my affidavit. Even though this Exhibit A-3 refers to a woven label for fleece hoodie, I do confirm that similar labels, bearing the Trade-mark, were sewed in these shirts.

[28]  Fleece hoodies are not included in the description of the goods covered by the registration. I fail to see why Mr. Tashdjian should have stated that fleece hoodies were sold with the label at Exhibit A-3 during the Relevant Period in order for me to conclude that such a label was used during the same period on shirts for men. He attests that similar labels were affixed to the shirts for men described in the invoices at Exhibit A-1, all sold during the Relevant Period. That is sufficient.

Use of the Mark limited to men’s shirts

[29]  As pointed out by the Requesting party, the evidence of use of the Mark in the record is limited to shirts for men. As indicated above, Mr. Tashdjian has defined “the Goods” in his affidavit to mean “shirts for men” only. Consequently, there is no evidence of use of the Mark in Canada during the Relevant Period in association with the remainder of the Products. Mr. Tashdjian has not provided any explanations to justify such non-use of the Mark.

[30]  Consequently, the registration ought to be amended accordingly.

Disposition

[31]  Pursuant to the authority delegated to me under section 63(3) of the Act, and in compliance with section 45 of the Act, the registration will be amended to read:

  Shirts for men.

Jean Carrière

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

Robic, LLP	FOR THE REGISTERED OWNER
Method Law Professional Corporation	FOR THE REQUESTING PARTY