Citation: 2019 TMOB 128

Date of Decision: 2019-11-27

IN THE MATTER OF A SECTION 45 PROCEEDING

	Planmeca Oy, a legal entity	Requesting Party
and
	Eastman Kodak Company	Registered Owner
	TMA568,168 for CREO	Registration

Introduction

[1]  At the request of Planmeca Oy, a legal entity (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) on August 15, 2017, to Eastman Kodak Company (the Owner), the registered owner of registration No. TMA568,168 for the trademark CREO (the Mark). 

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

GOODS

Printing equipment, namely imagesetters, platesetters, proofers and thermal imaging heads; optical scanners; fiber optics; computer workstations; computer hardware; computer printers; computer software for performing content creation, scanning, calibration, viewing, proofing, web-access, remote collaboration, workflow processing, data management, raster image processing and device control functions in digital imaging devices used in the pre-press and printing industry.

SERVICES

Installation and repair of computer-to-plate systems, computer-to-press systems, on-press imaging systems and scanning systems used in the prepress and printing industries; installation and repair of imaging systems for the printed circuit board, electronic, semiconductor and flat panel display industries; installation and repair of optical communications systems, training in the use and operation of computer-to-plate systems, computer-to-press systems, on-press imaging systems and scanning systems used in the prepress and printing industries; training in the use and operation of imaging systems for the printed circuit board, electronic, semiconductor and flat panel display industries; training in the use and operation of optical communications systems, technical consultation and product support services relating to computer-to-plate systems, computer-to-press systems, on-press imaging systems and scanning systems used in the prepress and printing industries; technical consultation and product support services relating to imaging systems for the printed circuit board, electronic, semiconductor and flat panel display industries; technical consultation and product support services relating to optical communications systems; business-to-business electronic commerce services linking suppliers and vendors in the prepress and printing industries via the global computer network.

[3]  The notice required the Owner to show whether the trademark has been used in Canada in association with 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 August 15, 2014 to August 15, 2017.

[4]  The definitions of use are set out in section 4 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.

4(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.

4(3) A trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods.

[5]  It is well established that bare statements that a trademark is in 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 trademark 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]  In response to the Registrar’s notice, the Owner furnished the affidavit of Ari Shapiro, sworn on February 28, 2018. Both parties filed written representations. An oral hearing was not requested.

The Owner’s Evidence

[7]  In his affidavit, Mr. Shapiro states that he is the Director of Worldwide Sales and Business Development for the Owner. He states that the Owner has expended “considerable” advertising revenue in promoting the Mark in association with the registered goods, and states that these expenditures have been and continue to be successful, resulting in “impressive Canadian sales”. He states that the Owner also “continues to provide in Canada the related services from installation and repair to business-to-business electronic commerce services in relation to the CREO printing equipment”. He explains that the Mark “is used in Canada in association with [the Owner’s] range of printing equipment by way of application of the [Mark] to packaging for these products”.

[8]  In support, Mr. Shapiro attaches two exhibits to his affidavit. Exhibit A is a document Mr. Shapiro describes as “a spread sheet with sell thru data for products depicting the trademark CREO capturing the CREO branded units which are shipped from Kodak’s facilitators to Canadian purchasers/distributors/retailers of Kodak’s range of printing equipment depicting the trademark CREO”. Mr. Shapiro provides no further information correlating the items listed in the spreadsheets with the registered goods, nor does he state that these spreadsheets reflect sales during the relevant period; however, the dates “04/2016..07/2017” appear on each of the spreadsheets. The spreadsheets show sales to customers in Canada and the United States. The first spreadsheet has 47 entries, four of which are listed as sales to Mississauga, Ontario, categorized under the heading “KMBS W INTERNATIONAL”. The remaining spreadsheets appear to be larger, more legible listings of the same sets of sales, corresponding to the same time period but divided by region. The products listed as having been sold in Canada are as follows: “MATCH PACK FOR CREO IC-309 AND IC-312”, “ACTION PACK OPTION FOR CREO DFE’S”, “CREO DFE STAND”, and “CREO IC-309 CONTROLLER FOR C1070 SERIES”. Again, Mr. Shapiro does not correlate these products to any of the registered goods. A number of other products are listed as having been sold in the United States. Each spreadsheet displays “Konica Minolta Business Solutions U.S.A., Inc.” in the top left corner.

[9]  As Exhibit B, Mr. Shapiro attaches several screenshots from the website of Konica Minolta, an entity which Mr. Shapiro describes as the Owner’s Canadian distributor. He explains that the Owner’s “printing equipment and related products” sold in association with the Mark have been promoted and advertised in Canada during the relevant period, including through Konica Minolta’s website. He states that these exhibited webpages were available during the relevant period. The first screenshot shows a press release from the Owner and Konica Minolta, introducing “the latest technology development in the KODAK CREO Server family – the IC-309 Server”. The screenshot shows a picture of a desktop computer tower displaying the word CREO. The last page of this screenshot includes a heading entitled “About Kodak” which states that “Kodak serves customers with disruptive technologies and breakthrough solutions for the product goods packaging, graphic communications and functional printing industries”, and that it “also offers leading products and services in Entertainment Imaging and Commercial Films”. These screenshots provide no further information about the services offered by the Owner.

[10]  The second set of screenshots shows pages from the Konica Minolta Canada website. The word “creo” appears to have been typed into the webpage’s “Search” bar. The webpage does not otherwise display the Mark, but instead includes the headings “Business Solutions” and “Production Print Systems”. Underneath these headings are references to laser printers, digital colour printing systems, and the like, as well as a link to “Support & Downloads”. The third screenshot shows search results on the Konica Minolta webpage for “creo”, with three results referring to “AccurioPress Digital Colour Presses” with “Creo DFE options”, as well as a reference to “Creo controllers” affected by “CPU vulnerabilities”.

Analysis

[11]  The Requesting Party raises a number of issues with respect to the Owner’s evidence which can be summarized as follows: the Owner’s evidence does not establish use of the Mark in association with the registered goods within the meaning of sections 4(1) and 4(3), and the Owner’s evidence does not establish use of the Mark in association with the registered services within the meaning of section 4(2).

Use of the Mark in association with each of the registered goods

[12]  At the outset, I note that, while the Requesting Party made submissions regarding section 4(3) of the Act, it is not clear whether the Owner is actually relying on section 4(3) of the Act; the Owner’s written representations do not refer to use in association with goods exported from Canada. In any event, I would note that while some of the buyers listed in the Exhibit A spreadsheets appear to be located in the United States, there is no indication that the seller, Konica Minolta Business Solutions U.S.A., Inc., is exporting the corresponding products from Canada.  Furthermore, Mr. Shapiro does not provide any clear statement to the effect that the spreadsheets reflect exports from Canada to the United States. Indeed, it is notable that only the sales to Canada appear to be categorized on the document as “INTERNATIONAL” sales.

[13]  As Mr. Shapiro’s affidavit includes no references to export, in view of the foregoing, I am not satisfied that the Owner has established any use of the Mark within the meaning of section 4(3) of the Act.

[14]  With respect to section 4(1) of the Act, the Requesting Party submits that, while Mr. Shapiro asserts use by way of application of the Mark to the packaging of the Owner’s products, he does not state that the Mark was displayed on the packaging of the goods at the time of transfer of property or possession.

[15]  However, I have no difficulty inferring that if the Mark was applied to the packaging of the goods, it would have remained so applied at the time of any transfer. As such, the real issue with respect to the registered goods is that the evidence of actual transfers in Canada during the relevant period is limited to the four goods indicated on the exhibited spreadsheets and identified above.

[16]  In this respect, Mr. Shapiro’s affidavit refers to advertising of the Mark in association with its registered goods, resulting in “impressive” Canadian sales; however, aside from being a vague statement generally, it is not clear whether such sales occurred during the relevant period. Furthermore, advertising of goods in association with a trademark is insufficient to establish use within the meaning of section 4 of the Act. In this case, Mr. Shapiro provides no unambiguous statements as to which, if any, of the registered goods were transferred i) in the normal course of trade, ii) in Canada, and iii) during the relevant period.

[17]  Therefore, as mentioned above, the only evidence showing specific instances of sales/transfers can be found in the Exhibit A spreadsheets. As noted above, Mr. Shapiro describes Exhibit A as “a spread sheet with sell thru data for products depicting the trademark CREO capturing the CREO branded units which are shipped from Kodak’s facilitators to Canadian purchasers/distributors/retailers of Kodak’s range of printing equipment depicting the trademark CREO.” As noted by the Requesting Party, this statement is ambiguous and difficult to parse. It seems to suggest that the spreadsheets contain data for products displaying the Mark which were shipped from Konica Minolta to third parties who sell the Owner’s CREO printing equipment. While one possible inference is that the “products depicting the trademark CREO” are in fact printing equipment, this is not clearly stated; another possible interpretation is that the “products depicting the trademark CREO” or the “CREO branded units” are not the registered goods or printing equipment at all. This ambiguity is compounded by the fact that Mr. Shapiro does not provide any detail as to the nature of the goods referenced in these spreadsheets, making it difficult to determine whether they refer to any of the goods listed in the registration.

[18]  As further noted by the Requesting Party, it is not for the Registrar to speculate as to the nature of the registered goods; it is the responsibility of the registered owner to show the connection between the registered goods and those included in the evidence [Fraser Milner Casgrain LLP v Fabric Life Ltd, 2014 TMOB 135 at para 13; Wrangler Apparel Corp v Pacific Rim Sportswear Co (2000), 10 CPR (4th) 568 at para 12 (TMOB)].

[19]  Nevertheless, I note that certain of the goods listed on the spreadsheets include the product code “IC-309”, which corresponds to the designation of the computer server depicted in Exhibit B. As a result, I accept that the items listed as “MATCH PACK FOR CREO IC-309 AND IC-312” and “CREO IC-309 CONTROLLER FOR C1070 SERIES” are accessories for the IC-309 computer server. In view of the evidence as a whole, I am prepared to conclude that these two products listed in the Exhibit A spreadsheets correlate with the registered goods “computer hardware”. In addition, based on the appearance of the dates “04/2016..07/2017” on the spreadsheets, I am prepared to conclude that the spreadsheets reflect sales during the relevant period.

[20]  With respect to the other goods referenced in the spreadsheet, listed as “ACTION PACK OPTION FOR CREO DFE’S” and “CREO DFE STAND”, because neither Mr. Shapiro’s affidavit nor the Owner’s written representations make any effort to correlate these items with the registered goods, I cannot conclude that these items reflect sales of any of the registered goods.

[21]  Additionally, I note that there is no evidence to suggest that the IC-309 computer server itself, depicted in Exhibit B, was sold during the relevant period in Canada; again, Mr. Shapiro states only that Exhibit B is a representative example of how the Owner’s products were promoted and advertised in Canada during the relevant period.

[22]  As a result, I find that the Owner has shown use of the Mark within the meaning of section 4 and 45 of the Act in association with the registered goods “computer hardware” only. As the Owner has not detailed any special circumstances with respect to non-use of the Mark in association with the remaining registered goods, the registration will be amended accordingly.

Use of the Mark in association with the services

[23]  With respect to the registered services, the Owner submits that its evidence “clearly provides hard evidence of ... use in Canada and during the relevant period of time”, and refers generally to the website screenshots attached as Exhibit B as advertisement of such services. Further, the Owner submits that Mr. Shapiro’s affidavit “has provided enough general information to establish sufficient facts” to allow the Registrar to conclude that the Owner is using the Mark in association with the registered services.

[24]  However, as noted above, the only reference to the registered services in Mr. Shapiro’s affidavit is his statement that the Owner “continues to provide in Canada the related services from installation and repair to business-to-business electronic commerce services in relation to the CREO printing equipment”. First, there is no clear reference to the registered services actually having been performed in Canada during the relevant period. As such, I cannot conclude that the Mark was displayed in the performance of any services during the relevant period.

[25]  Second, with respect to advertisement, the Owner’s evidence also does not show that it advertised any of the registered services during the relevant period, in association with the Mark or otherwise. In this respect, Mr. Shapiro’s affidavit describes Exhibit B as being representative of promotion and advertisement of the Owner’s “printing equipment and related products”, but the exhibited screenshots make no clear reference to advertising and promotion of any of the registered services.

[26]  Further, none of the exhibited materials refer to or show advertisement of the registered installation and repair services, training services, technical consultation and product support services, or business-to-business electronic commerce services, in association with the Mark or otherwise. I note that the word “Support” does appear in the screenshots attached as Exhibit B; however, this alone does not show that the Owner offered and was prepared to perform product support services in Canada during the relevant period, particularly since the screenshots are from the website of Konica Minolta rather than the Owner itself.

[27]  Otherwise, the first exhibited screenshot advertises a computer server in association with the Mark, but does not refer to any of the registered services. The second and third screenshots do not refer to the Owner or to any of the registered services, and the Mark only appears in conjunction with the search function on the webpage. As such, I cannot conclude that the Owner has put forward any evidence showing use of the Mark in association with advertisement of any of the registered services.

[28]  In view of the above, I find that the Owner has not established use of the Mark in association with any of the registered services within the meaning of sections 4(2) and 45 of the Act. As there is no evidence of special circumstances excusing non-use of the Mark before me, the registered services will be expunged from the registration accordingly.

Disposition

[29]  In view of all of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act and in compliance with the provisions of section 45 of the Act, the registration will be amended to delete the registered services in their entirety and to delete “Printing equipment, namely imagesetters, platesetters, proofers and thermal imaging heads; optical scanners; fiber optics; computer workstations; [...] computer printers; computer software for performing content creation, scanning, calibration, viewing, proofing, web-access, remote collaboration, workflow processing, data management, raster image processing and device control functions in digital imaging devices used in the pre-press and printing industry” from the list of registered goods.

[30]  The amended statement of goods will be as follows:

Computer hardware.

G.M. Melchin

Hearing Officer

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENTS OF RECORD

Gowling WLG (Canada) LLP	For the Registered Owner
OLLIP P.C.	For the Requesting Party