Citation: 2019 TMOB 2

Date of Decision: 2019-01-03

 

IN THE MATTER OF A SECTION 45 PROCEEDING

	Island IP Law	Requesting Party
and
	Blunt Wrap USA Inc.	Registered Owner
	TMA707,508 for KUSH	Registration

[1]  This is a decision involving a summary expungement proceeding with respect to registration No. TMA707,508 for the trade-mark KUSH (the Mark), owned by Blunt Wrap USA Inc.

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

(1) Non-alcoholic beverages, namely sports drinks, soft drinks, water (both flavoured and non-flavoured), aloe vera drinks.

(2) Alcoholic beverages, namely alcoholic aperitif bitters produced from a brewed malt base, of fruit, coffee-based beverages, tea-based beverages, wines, brandy, brandy spirits, calvados, champagne, cognac, gins, grappa, hard cider, herb liqueurs, sake, sangria, schnapps, sherry, tequila, vermouth, vodka, whiskey.

[3]  For the reasons that follow, I conclude that the registration ought to be maintained in part.

The Proceedings

[4]  On November 29, 2016, the Registrar of Trade-marks sent a notice under section 45 of the Trade-marks Act RSC 1985, c T-13 (the Act) to Blunt Wrap USA Inc. (the Owner). The notice was sent at the request of Island IP Law (the Requesting Party).

[5]  The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between November 29, 2013 and November 29, 2016, in association with the goods specified in the registration.  If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last in use and the reasons for the absence of use since that date.

[6]  The relevant definition of use 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.

[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 and, as such, the evidentiary threshold that the registered owner must meet is quite low [see Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448, 31 CPR (4th) 270].

[8]  In response to the Registrar’s notice, the Owner furnished the affidavit of Duane Phillippi, sworn May 24, 2017, together with Exhibits A and B.

[9]  Only the Requesting Party filed written submissions. An oral hearing was not requested.

The Evidence

[10]  Mr. Phillippi is the President of Flying Creek Trading 101093493 Saskatchewan LTD (Flying Creek), an authorized licensee of the Owner’s Mark. He attests that there is a verbal license between Flying Creek and the Owner whereby the Owner has direct control over the character and quality of the registered goods bearing the Mark. He further notes that the Owner has established quality standards that Flying Creek must meet that are enforced through regular verbal contact.

[11]  Mr. Phillippi attests that the Owner’s registered goods are distributed by Flying Creek to the Canadian retail store, Hemp Haven, where they are sold.

[12]  Mr. Phillippi further states that during the relevant period, the Mark was prominently displayed on the product packaging of the Owner’s registered goods. In support, he attaches as Exhibit A, photographs showing the Mark displayed on the packaging of bottles of lemon flavoured and non-flavoured herbal infused water.

[13]  Lastly, Mr. Phillippi states that Flying Creek sold approximately 700 units of non-alcoholic beverages bearing the Mark during the relevant period, to customers in Canada. In support, he attaches as Exhibit B, representative invoices showing the sale of KUSH brand products, in Canada, during the relevant period, to Hemp Haven. The goods on the invoice are identified as KUSH products in the product description column, and reflect the sale of non-flavoured and lemon flavoured water.

Analysis and Reasons for Decision

[14]  In its written submissions, the Requesting Party raises several issues with the Owner’s evidence. Specifically, the Requesting Party submits that Flying Creek is an unrelated company alleged to be a verbal licensee of the Owner and subject to the Owner’s direct control over the character and quality of the registered goods bearing the Mark; however, no evidence of the details of such quality standards are specified in the affidavit. 

[15]  Additionally, the Requesting Party submits that the photographs in Exhibit A show that the Mark is licensed by Flying Creek, but do not indicate the Owner’s name. Further, the Requesting Party notes that the invoices in Exhibit B do not indicate the name of the Owner of the trademark.

[16]  Further, the Requesting Party submits that there is no evidence that the invoices accompanied the registered goods.

[17]  Finally, the Requesting Party asserts that the photographs in Exhibit A are only of water and there is no evidence of use provided with respect to the other goods in the registration.

[18]  Turning first to the licensing issue, it is well established that licensing agreements need not be in writing [Well’s Dairy Inc v U L Canada Inc (2000), 7 CPR (4th) 77 (FCTD)]. As such, the oral nature of the license described by the affiant, between the Owner and Flying Creek, does not affect its validity.

[19]  Further, Mr. Phillippi has made an express assertion that the Owner had direct control over the character and quality of the registered goods distributed and sold by Flying Creek, bearing the Mark. It is well established that an affiant clearly attesting that the owner of a trademark exerts the control required by section 50 (1) of the Act is sufficient [Empresa Cubana Del Tabaco Trading v Shapiro Cohen, 2011 FC 102, 91 CPR (4th) 248]. There is no need for the affiant to have specified details of the quality standards imposed on the licensee.

[20]  Given the above, I find that Flying Creek is a licensee of the Owner and that its use of the Mark constitutes use that accrues to the benefit of the Owner. As such, public notice is not required under section 50(2) of the Act for use of a trademark by a licensee to be deemed use of the mark by the Owner.

[21]  In addition, it is not necessary for the invoices to have accompanied the registered goods at the time of transfer because the Mark appears directly on the goods themselves.

[22]  In conclusion, I am satisfied that the Owner used the Mark in association with non-flavoured and flavoured water in the normal course of trade in Canada during the relevant period. Mr. Phillippi attests that Exhibit A, which depicts the Mark prominently displayed on the labels of lemon flavoured and non-flavoured herbal infused water, is the product packaging of the Owner’s non-alcoholic beverages during the relevant period. Additionally, the invoices in Exhibit B demonstrate that sales of KUSH brand non-flavoured and lemon flavoured water were sold in Canada during the relevant period. 

[23]  However, I agree with the Requesting Party that the Owner has not provided evidence in reference to any of the registered goods other than water. The affidavit is silent in this regard, and no special circumstances have been alleged to explain non-use of the Mark in association with the other registered goods. As such, the registration will be maintained for flavoured and non-flavoured water and the remaining goods will be deleted from the registration.  

disposition

[24]  Having regard to the aforementioned, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be maintained in part in compliance with the provisions of section 45 of the Act.

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

Non-alcoholic beverages, namely, water (both flavoured and non-flavoured).

Kathryn Barnett

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

Clancy P.C.	FOR THE REGISTERED OWNER
Island IP Law	FOR THE REQUESTING PARTY