Citation: 2019 TMOB 75

Date of Decision: 2019-07-25

IN THE MATTER OF A SECTION 45 PROCEEDING

	Aird & Berlis LLP	Requesting Party
and
	Erick Factor	Registered Owner
	TMA863,582 for Medicann	Registration

 

[1]  This is a decision involving a summary expungement proceeding with respect to registration No. TMA863,582 for the trademark Medicann (the Mark), owned by Erick Factor.

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

Goods:

Natural herbs, tinctures, oils and edibles containing some form of THC, Cannabinoides and Cannabidiols for the treatment of cancer, spinal cord injury, HIV, severe arthritis, epilepsy and multiple sclerosis.

 

Services: 

Operation of a retail outlet dealing in the sale of medicinal and therapeutic products.

 

[3]  For the reasons that follow, I conclude that the registration ought to be maintained with respect to the goods, but amended to remove the services for failure to show use of the Mark as registered in association with the services.

The Proceeding

[4]  On March 20, 2017, the Registrar of Trademarks sent a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) to Erick Factor (the Owner). The notice was sent at the request of Aird & Berlis LLP (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 March 20, 2014 and March 20, 2017, in association with each of the goods and services 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 definitions of use in the present case are set out in sections 4(1) and 4(2) of the Act as follows:

4(1)  A trademark 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.

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

[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 [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 his own affidavit, sworn June 16, 2017, together with Exhibits A to Q.

[9]  Neither party filed written representations. Only the Owner elected to make representations at an oral hearing.

The Evidence

[10]  Mr. Factor attests that on November 5, 2010, he opened a medical marijuana dispensary in Vancouver, British Columbia, called Westcoast Medicann (the Dispensary). He attests that the Dispensary has sold and continues to sell various cannabis products, including the registered goods. He states that the location of the Dispensary has changed, but it has, since 2010, continuously displayed the Mark on prominent signage, and the products sold by the Dispensary have each been affixed or otherwise labelled with the Mark.

[11]  Mr. Factor explains that he has also used, since November 2010, a stylized-cross logo together with the Mark. He attaches as Exhibit A to his affidavit two versions of the Medicann logo (shown below), each of which he states prominently displays the Mark:

Version 1  Version 2

 

[12]  Mr. Factor attests that on July 20, 2010, he registered the domain name westcoastmedicann.com, and in November 2010, he began to sell either by himself or through his licensees, via that website (the Online Store), the same products available in the Dispensary, including marijuana buds (natural herbs), tinctures, oils, and edibles containing some form of THC, Cannabinoides and Cannabidiols for the treatment of various medical conditions, including, for example, cancer, spinal cord injury, HIV, severe arthritis, epilepsy and multiple sclerosis. He attests that he also owns the following domains medicann.net, medicann.ca, mymedicann.com, eastcoastmedicann.net, and eastcoastmedicann.com, all of which redirect to the Online Store. He attaches as Exhibit B, printouts from Whois showing particulars of these domain names, which he attests are registered in his name or that of his society or one of his companies. Mr. Factor is listed as the registrant or administrative contact with respect to four of the domain name registrations, two of which also refer to Westcoast Medicann Society or Westcoast Medicann Society Inc. as the organization or registrant contact. Several of the registrations also list the same address, which is the address that Mr. Factor identifies on his affidavit as his personal address in his introductory statement.

[13]  Mr. Factor states that at all times during the relevant period, that he sold by himself and/or through his licensees, in the Dispensary and via the Online Store:

• dried marijuana buds – i.e.“natural herbs… containing some form of THC, Cannabinoides and Cannabidiols” (“Herbs”) for the treatment of various medical conditions, including, for example, cancer, spinal cord injury, HIV, severe arthritis, epilepsy and multiple sclerosis;
• cannabis-based tinctures – i.e.“tinctures… containing some form of THC, Cannabinoides and Cannabidiols” (“Tinctures”) for the treatment of various medical conditions, including, for example, cancer, spinal cord injury, HIV, severe arthritis, epilepsy and multiple sclerosis;
• cannabis-based oils – i.e.“oils… containing some form of THC, Cannabinoides and Cannabidiols” (“Oils”) for the treatment of various medical conditions, including, for example, cancer, spinal cord injury, HIV, severe arthritis, epilepsy and multiple sclerosis; and
• cannabis-based edibles – i.e.“Edibles… containing some form of THC, Cannabinoides and Cannabidiols” (“Edibles”) for the treatment of various medical conditions, including, for example, cancer, spinal cord injury, HIV, severe arthritis, epilepsy and multiple sclerosis.

[14]  In support, Mr. Factor attaches as Exhibits C, G, H, and J, photographs of the containers in which the “Herbs”, Tinctures”, “Oils”, and “Edibles”, respectively, were sold in the relevant period, as well as labels for those containers. The product labels in the photographs display the Mark as per version two of the Medicann logo noted above. Each of the labels describes a product that I accept falls within the scope of the registered goods denoted by Mr. Factor.

[15]  Mr. Factor then further attaches as Exhibits D, E, and F, sales reports with the categories “Herbs”, “Tinctures”, “Oils”, and “Edibles”, for sales of these goods dated the weeks of February 9-15, 2014, August 16-19, 2015, and November 7-9, 2016 respectively through the Medicann Cambie Street location. He attests that the sales of “Herbs”, “Tinctures”, “Oils”, and “Edibles” shown in the Exhibits D to F sales reports were in bottles of the types shown respectively in Exhibits C, G, H, and J, or labelled with labels of the types shown respectively, in Exhibits C, G, H, and J, or in similar bottles labelled with the Mark.

[16]  Lastly, Mr. Factor attests that at all times during the relevant period, he has, via the Dispensary and the Online Store offered the registered services and has displayed the Mark in the advertisement of those services. In support, he attaches as Exhibits K, L, M, N, and O, printouts of the westcoastmedicann.com homepage as it appeared on February 7, 2011, August 2, 2014, June 27, 2015, August 8, 2016, and May 18, 2017, respectively.  The website printout in Exhibit M also includes a photograph of a dispensary located on Cambie Street, Vancouver, BC. He further attaches the following:

• Exhibit P – advertisements for medicinal and therapeutic products being offered for sale via the Online Store on September 26, 2014.
• Exhibit Q – an example advertisement for the Dispensary and Online Store (and the associated services) that ran in the Westender newspaper on June 5, 2014.

 

[17]  In the advertising described above, in all instances but one, including on the dispensary/store signage in the Exhibit M photograph, the Mark is displayed as Westcoast Medicann together with the stylized-cross logo, as follows:

In the singular instance wherein the Mark is displayed otherwise (Exhibit L), it appears as follows (the Cartoon version):

Analysis and Reasons for Decision

[18]  At the oral hearing, the agent for the Owner identified and provided representations with respect to two main issues, as follows:

  i.  Does use of the composite marks shown in the evidence qualify as use of the registered word mark?

  ii.  Is the use that is shown in the evidence, use by the Owner or use that accrued to the Owner’s benefit?

[19]  With respect to the use of the Mark on the goods, namely, version two of the Medicann and stylized cross logo , the Owner submits that there is no doubt that such use dominated by the word Medicann constitutes use of the word mark [citing Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA) re: deviation principle that dominant features of the mark are to be retained to constitute use]. I agree with the Owner that the term Medicann, in this case, is dominant, such that display in this manner constitutes use of the Mark per se. The dominant feature of the Mark has been retained, and remains recognizable in spite of the addition of the less dominant stylized cross logo.

[20]  Now moving to the services, the Owner submits that the Mark is primarily displayed on inside signage and otherwise, as Westcoast Medicann and stylized cross logo , which it submits also constitutes use of the word Mark. In this regard, the Owner submits that the term Westcoast is descriptive in that it refers to the geographic location of the dispensaries, and the cross feature is descriptive in conjunction with the word Medicann. The Owner submits that, in any event, there is an example in Exhibit L where there is use of the Medicann and stylized-cross logo (similar to that used on the goods) in the Cartoon version.

[21]  The Owner compares the present situation with the findings in Imex Systems Inc v Pinnacle Webworx Inc, 2015 TMOB 163, in which the Owner submits that the trademark “My City” is less dominant than Medicann in its context, as Medicann is set apart with green lettering and the term Westcoast and the cross design are descriptive. Furthermore, the Owner submits, the term Medicann echoes what appears on the product bottles, and based on the principles established in Promafil, consumers would still recognize the Mark.  

[22]  However, in Imex Systems, the word mark My City appeared in design format with descriptive terms denoting a website and location of the associated services. The Board held that the mark My City was retained as dominant, and that the other matter was descriptive in nature and, as displayed, less prominent and notably smaller than MY CITY such that it would not be construed by consumers as forming part of the trade-mark per se. Additionally, the presence of a “Change City” button on the exhibited webpages themselves, was a factor in that decision, in that as the smaller descriptive text was interchangeable, it thus was not dominant. Such is not the case in the present situation. While Westcoast may be descriptive, it is no less visually prominent than Medicann as displayed. Furthermore, the location descriptor is never interchanged with another descriptor of location, other than in the evidence of domain name registrations, which do not constitute use of the Mark themselves per se, and which are used to url redirect or forward to the Online Store at westcoastmedicann.com.   Lastly, the stylized cross design element is substantially larger per its display in association with the services than with the goods, such that it forms the dominant element of what I consider to be a composite mark. The layout and the style of font of the terms Westcoast and Medicann in conjunction with the stylized cross logo gives the appearance of a unitary or composite mark, to which all elements appear as essential elements of the whole. It is for these reasons that the present case is distinguishable from cases relied upon by the Owner [see Vermillion Intellectual Property Corporation v Vermillion Energy, Inc, 2017 TMOB 24; Norton Rose Fulbright Canada LLP v Nectar, Inc, 2017 TMOB 80].

[23]  Indeed, each case is to be decided on its own merits, and simply because an added element may be suggestive or descriptive, does not necessarily mean that the average consumer would readily perceive this matter as purely descriptive and not part of the trade-mark per se [see for example Tasty Burger Corporation v Maple Leaf Foods Inc/Les Aliments Maple Leaf Inc, 2014 TMOB 160]. As such, I am of the view that such display amounts to a substantial variation that results in the Mark as registered being unrecognizable from the trade-mark displayed [Canada (Registrar of Trade Marks) v Cie internationale pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA)].

[24]  With respect to the use of the Medicann and stylized-cross logo (similar to that used on the goods) in the Cartoon version, as depicted on the Exhibit L website screenshot, the Mark is  visually integrated/subsumed into the delivery truck design, to the extent that the mark as used cannot be considered use of the registered mark per se.  

[25]  Thus, having regard to the aforementioned, I accept that the Owner has shown use of the Mark as registered in association with the goods, but not in association with the services.

[26]  As previously mentioned, representations on behalf of the Owner were also made that the use shown in the evidence was use of the Mark by the Owner or use that accrued to its benefit. In this regard, the Owner submits that it can be inferred that the entities which appear most frequently in the evidence, namely, West Coast Medical – WCMC and Westcoast Medical Society, are Mr. Factor’s companies.

[27]  I have no difficulty drawing this inference. Indeed, at paragraph 5 of his affidavit, Mr. Factor specifically attests that the domain names (particulars of which are shown at Exhibit B) are registered in his name or that of his society or one of his companies. As previously indicated, the particulars demonstrate the various domain registrants list the same business address as that of the personal address of Mr. Factor, several of which also list Mr. Factor as the registrant or administrative contact. I note that these are the same entities that appear throughout the evidence on the product labels and the website printouts. Given the shared businesses and personal address and Mr. Factor’s sworn statement that the entities listed in the domain name particulars belong to him, I am prepared to infer that Mr. Factor is the controlling mind of such entities such that the existence of an oral license and control of any use of the Mark by these entities can reasonably be inferred [regarding a similar inference, see for example, Gowling Lafleur Henderson LLP v Gerald Alan Croxall, 2013 TMOB 1 (CanLII), 109 CPR (4th) 148].

[28]  Indeed, in the absence of a clear statement regarding a license and control or a copy of the license agreement providing for the requisite control, the requirements of section 50(1) of the Act may also be satisfied by providing evidence that the trade-mark owner itself exerts the requisite control [see Empresa Cubana Del Tabaco Trading v Shapiro Cohen, 2011 FC 102, 91 CPR (4th) 248 at paragraph 84].  While the mere fact that a registered owner and a licensee are related companies is insufficient that control under license pursuant to section 50 exists [see MCI Communications Corp v MCI Multinet Communications Inc (1995), 61 CPR (3d) 245 (TMOB) and Dynatech Automation Systems Inc v Dynatech Corp (1995), 64 CPR (3d) 101 (TMOB)], an inference may be drawn that such control exists where an individual is a director or an officer of both the registered owner and the licensee [see Petro-Canada v 2946661 Canada Inc (1999), 83 CPR (3d) 129 (FCTD); Lindy v Canada (Registrar of Trade Marks) 1999 CarswellNat 652 (FCA)]. Consequently, having regard to the aforementioned, and in view of the light evidential burden and purpose of section 45 of the Act, I accept that any use of the Mark shown in the evidence is use by the Owner or use that enured to the Owner’s benefit.

disposition

[29]  Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, registration No. TMA863,582 will be maintained with respect to the goods, but amended to delete the services in compliance with the provisions of section 45 of the Act.

 

Kathryn Barnett

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

TRADE-MARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2019-03-26

APPEARANCES

Bruce M. Green	FOR THE REGISTERED OWNER
No one appearing	FOR THE REQUESTING PARTY

AGENTS OF RECORD

Oyen Wiggs Green & Mutala LLP	FOR THE REGISTERED OWNER
Aird & Berlis LLP	FOR THE REQUESTING PARTY