Citation: 2019 TMOB 56

Date of Decision: 2019-06-13

IN THE MATTER OF A SECTION 45 PROCEEDING

	Cory J. Furman	Requesting Party
and
	Vinland Homes, Inc.	Registered Owner
	TMA874,373 for Vinland Homes	Registration

Introduction

[1]  At the request of Cory J. Furman (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 April 25, 2017, to Vinland Homes, Inc. (the Owner), the registered owner of registration No. TMA874,373 for the trade-mark Vinland Homes (the Mark). 

[2]  The Mark is registered for use in association with the following goods and services:

GOODS

Printed publications in the field of new home construction, land development and home design; Promotional items, namely hats, mugs, calendars, fridge magnets, and t-shirts.

SERVICES

Building and home construction services; House building and repair; Land development; Designing services in the field of landscaping and new home constructions; Operation of a website, in the field of home construction and repair.

[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 and services 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 April 25, 2014 to April 25, 2017.

[4]  The relevant definitions of use with respect to goods and services are set out in section 4 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.

4(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

[5]  It is well established that mere assertions of use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Registrar of Trade Marks (1982), 63 CPR (2d) 56 (FCTD)], 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 and services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. 

[6]  Concerning services, the presentation of the trade-mark in the advertisement of the services is sufficient to satisfy the requirements of section 4(2) of the Act, from the time the owner of the trade-mark offers and is ready to perform the services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)].

[7]  On October 12, 2017, the Owner furnished the affidavit of Terry Hussey, the President, Chief Executive Officer, and sole director of the Owner, sworn on October 4, 2017 in St. John’s, Newfoundland and Labrador. Neither party filed written representations or requested an oral hearing.

[8]  I note that the Owner’s correspondence of October 12, 2017, indicated that Erin E. Best of Stewart McKelvey had been retained as the Owner’s agent of record. This change was not recorded at this time through inadvertence on the part of the Registrar. As a result, the Registrar’s correspondence of October 19, 2017, and March 20, 2018, requesting written representations of the Requesting Party and Owner, respectively, were sent to the Owner and Requesting Party but not the Owner’s agent of record. The Owner’s agent of record has now been recorded by the Registrar.

The Owner’s Evidence

[9]  At the outset, Mr. Hussey states that the Owner does not intend to provide evidence that the Mark was used during the relevant period in association with the following goods and services:

Goods: Promotional items, namely hats, mugs, calendars, fridge magnets, and t-shirts.

Services: Operation of a website, in the field of home construction and repair.

[10]  Mr. Hussey refers to the remaining goods and services collectively as the “Subject Goods and Services”. He states that the Mark has been continuously used beginning in January 2012 in association with the Subject Goods and Services, “which form the crux of Vinland Homes’ operations as a land development, landscape design, home design building and construction service which, throughout the Relevant Period, and continuing to the present, offered all of the Subject Goods and Services.” He states that the Mark is used in the form of a logo, pictured below:

[11]  Mr. Hussey attaches the following exhibits in support of his affidavit:

·  Exhibit A: trademark details for the Mark from the online records of the Canadian Intellectual Property Office, confirming that the Mark was registered on March 28, 2014.

·  Exhibit B: a printout from the Newfoundland and Labrador Registry of Companies showing that the Owner was incorporated on February 1, 2012, and is in good standing.

·  Exhibit C: an invoice dated January 20, 2012, for the design of the Vinland Homes logo.

·  Exhibit D: a copy of a business card for the Owner, listing Mr. Hussey’s position and contact information. The Vinland Homes logo is prominently displayed on both sides of the card. Mr. Hussey attests that these business cards have been “widely distributed” by him and other employees of the Owner and its sister company Vigilant Management Inc., “in connection with” the Subject Goods and Services. No information concerning any specific goods or services offered by the Owner appears on the cards.

·  Exhibits E to H: copies of provincial permits allowing the Owner to practice professional engineering in Newfoundland and Labrador in 2014, 2015, 2016, and 2017, respectively. Mr. Hussey states that these permits were prominently displayed in the Owner’s offices and distributed to potential and existing clients during the corresponding years. I note that “Vinland Homes” appears only once on each certificate: in Exhibit E, in the Owner’s mailing address, and in Exhibits F, G and H, as part of the phrase “This is to certify that Vinland Homes Inc. is authorized to practice Professional Engineering in the Province of Newfoundland and Labrador.”

·  Exhibit I: an invoice from GoDaddy Domains Canada, Inc., dated January 18, 2012, for the purchase of the domain name www.vinlandhomes.ca. Mr. Hussey states that the Owner continues to own this domain address but ceased operating a website at that address as of July 3, 2015.

·  Exhibit J: redacted project drawings which appear to be plans for the construction of buildings. The Vinland Homes logo appears on the side of each drawing. Mr. Hussey states that these are representative of project drawings spanning the relevant period, and that “These drawings are an important part of Vinland Homes’ business and are used in connection with all of the Subject Goods and Services from project conception through to the building phase.”

·  Exhibit K: copies of emails dated March 3, 2012, November 9, 2015, January 6, 2015, January 16, 2015, and January 18, 2016. In each case, the recipient and most of the body of the text is redacted. The Vinland Homes logo appears in the signature portion of each email.

[12]  Mr. Hussey states that the “Applicant” in these proceedings is a Saskatchewan-based entity called Vinland Homes Ltd., whom he states has been knowingly infringing the Mark and Vinland Homes logo since at least April 2015. He attaches a cease-and-desist letter sent to this entity, dated April 13, 2015, as Exhibit L. He states that the logo then disappeared from this entity’s website, but recently reappeared, and attaches a screenshot from this website as Exhibit M. As Exhibit N, he attaches a second letter, dated October 4, 2017, advising the entity that the Owner was prepared to take legal action to protect its intellectual property.

Analysis

[13]  As a preliminary matter, I note that Mr. Hussey’s evidence concerning the identity and motivation of the Requesting Party cannot be considered within the limited scope of section 45 proceedings [88766 Canada Inc v Mark Michel Enterprises Ltd, 2011 TMOB 252 at para 6; Norton Rose Fulbright Canada v VSL Canada Ltd, 2016 TMOB 68 at para 30]. I have therefore disregarded Exhibits L to N and Mr. Hussey’s statements on this topic. Further, I note that enforcement of intellectual property rights does not constitute use within the meaning of section 4 of the Act [Deeth Williams Wall LLP v Overwaitea Food Group Ltd Partnership, 2013 TMOB 124 at paras 12-13; Fasken Martineau DuMoulin LLP v Little Blackbird, Inc, 2019 TMOB 38 at paras 24-26].

Goods

[14]  To establish use of a trade-mark in association with goods, an owner must provide sufficient evidence to allow the Registrar to conclude that the goods were transferred in association with the trade-mark in Canada in the normal course of trade during the relevant period. Although there is no specific form that this evidence must take, some evidence of transfers in the normal course of trade in Canada is necessary. As a result, such evidence will often be in the form of documentation like invoices or sales reports, or it can be through clear sworn statements.

[15]  In this case, as noted above, Mr. Hussey has stated that the Owner does not intend to provide evidence of use in association with “Promotional items, namely hats, mugs, calendars, fridge magnets, and t-shirts.” Thus, I must consider whether the Owner has provided evidence of use in association with the remaining goods, “Printed publications in the field of new home construction, land development and home design.” Further details on the nature of these goods are not provided in Mr. Hussey’s affidavit.

[16]  Mr. Hussey’s affidavit does not contain any evidence showing that any printed publications of any nature were transferred in the normal course of trade during the relevant period. Indeed, there is no clear statement in the affidavit that such goods were sold at all during the relevant period; Mr. Hussey states only that the Mark was used and promoted “in respect of the Subject Goods and Services” or that the Owner “offered all of the Subject Goods and Services.” It is not sufficient that the goods were merely offered during the relevant period; some evidence of transfers in the normal course of trade in Canada is necessary [see, for example, Molson Cos v Halter (1976), 28 CPR (2d) 158 (FCTD); and Gowling, Strathy & Henderson v Royal Bank (1995), 63 CPR (3d) 322 (FCTD)]. Here, no such evidence is provided. In addition, Mr. Hussey does not provide any evidence regarding the manner in which the Mark was presented on, or in association with, the registered goods at the time of any transfer during the relevant period. In the absence of such evidence or a clear sworn statement, I cannot conclude that, if there had been transfers, that the Mark as registered was associated with the subject publications.

[17]  Although Mr. Hussey references the Exhibit J project drawings as having been “are used in connection with all of the Subject Goods and Services”, it does not appear that the drawings themselves are the registered goods “printed publications”. In any event, there is no evidence that such drawings were sold or transferred to customers in the normal course of trade.

[18]  In the absence of evidence of transfers of the any registered goods in association with the Mark as registered or otherwise, I cannot conclude that the Owner has shown use in association with the registered goods within the meaning of sections 4 and 45 of the Act.

Services

[19]  As previously indicated, in accordance with section 4(2) of the Act, a trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services. As with the goods discussed above, there is no clear description in Mr. Hussey’s affidavit of any instance in which any of the registered services was actually performed or advertised during the relevant period; he states only that the Mark was used and promoted “in respect of the Subject Goods and Services” and that the Owner “offered all of the Subject Goods and Services.” At best, based upon the latter statement and Mr. Hussey’s description of the Owner as “a land development, landscape design, home design building and construction service”, I could infer that the Owner was offering and prepared to offer the registered services during the relevant period, with the exception of “Operation of a website, in the field of home construction and repair”, for which Mr. Hussey has stated that he intends to provide no evidence.

[20]  However, even if I were to infer that each of the services was offered during the relevant period, there is no evidence as to how the Mark would have been displayed in the performance or advertisement of any such services. None of the materials attached to Mr. Hussey’s affidavit refer to any of the specific registered services, and there is no indication as to the circumstances in which they were distributed to existing or potential clients.

[21]  For instance, with respect to the business cards attached as Exhibit D, Mr. Hussey states only that they were “widely distributed” by him and members of a different company. There is no evidence that they were distributed to potential customers in the context of advertising any of the specific registered services. I note that in some circumstances, including where business cards have indications of the relevant services on them or there are clear statements alleging use in the affidavit, business cards can be considered evidence of the advertisement of services [see, for example, 88766 Canada Inc v RH Lea & Associates Ltd, 2008 CarswellNat 4513 (TMOB); Tint King of California Inc v Canada (Registrar of Trade Marks), 2006 FC 1440]. Here, however, the only indication on the business cards of the relevant services is the word “homes” in the Mark. Thus, even if I were to accept that the business cards were used to advertise the Owner’s business in general, I cannot conclude that the mere presence of this single word on the business cards constitutes advertisement of the specific services set out in the registration [see Dentons Canada LLP v Penn West Petroleum Ltd, 2017 TMOB 157 at para 22; Bijoux Caroline Néron Inc v Nadoiski, 2013 TMOB 2 at para 13].

[22]  Similarly, Mr. Hussey states that the certificates attached as Exhibits E to H were displayed in the Owner’s offices and distributed to potential and existing clients. Even if I were to find that these appearances of the Owner’s trade name constituted used of the Mark, as with the business cards discussed above, such certificates cannot constitute advertising of any of the particular registered services at issue as they state only that the Owner is certified to practice civil and professional engineering.

[23]  While I note that the project drawings attached as Exhibit J do display the Mark, for the reasons discussed above, no evidence is provided that would permit me to conclude that these drawings were distributed to existing or potential clients.

[24]  With respect to the Exhibit I evidence concerning the Owner’s domain name, the mere registration of a domain name does not constitute use of a trade-mark for purposes of section 4 of the Act [see Sun Media Corp v Montreal Sun (Journal Anglophone) Inc, 2011 TMOB 15]. As the Owner furnished no evidence as to the content or appearance of the website during the relevant period, the mere existence of a domain name comprising the Mark is insufficient to demonstrate advertisement of the specific registered services.

[25]  Finally, I note that the Mark is displayed in the signature section of the emails shown in Exhibit K. The addressees and text of these emails have been fully redacted; further, their subject lines do not suggest that they were correspondence with customers. There is no evidence as to whether, or how, the Owner used this email address to correspond with customers in association with the performance or advertisement of any of the registered services.

[26]   In summary, the Hussey affidavit amounts to a mere assertion of use of the Mark with the registered services in general, rather than statements of fact showing use of the Mark in association with each of the specific services listed in the registration. In the absence of further details or supporting evidence, I cannot conclude that the Mark was used or displayed in the performance or advertising of any of the registered services in Canada during the relevant period.

[27]  Furthermore, there is no evidence before me of special circumstances excusing the absence of use in association with any of the registered goods and services.

Disposition

[28]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be expunged in compliance with the provisions of section 45 of the Act.

Gregory Melchin

Hearing Officer

Trade-marks Opposition Board

Canadian Intellectual Property Office

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

AGENTS OF RECORD

Erin E. Best	For the Registered Owner
Cory J. Furman	For the Requesting Party