Citation: 2020 TMOB 11

Date of Decision: 2020-01-30

IN THE MATTER OF A SECTION 45 PROCEEDING

	Frady Yacoub	Requesting Party
and
	E-source, Inc.	Registered Owner
	TMA766,618 for E SOURCE	Registration

[1]  This is a decision involving a summary expungement proceeding under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) with respect to registration No. TMA766,618 for the trademark E SOURCE (the Mark), owned by E-source, Inc.

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

(1) Distributorship services, featuring computer hardware and software, electronic computer components, integrated circuits, active/passive board level components, and semiconductors.

(2) Management services for others in the field of computer hardware and software, electronic computer components, integrated circuits, active/passive board level components, and semiconductors.

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

Introduction

[4]  At the request of Frady Yacoub (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on August 30, 2017, to E-source, Inc. (the Owner), the registered owner of the Mark. 

[5]  The notice required the Owner to show whether the trademark has been used in Canada in association with each of the 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 30, 2014 to August 30, 2017.

[6]  The relevant definition of use for services is set out in section 4 of the Act as follows:

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.

[7]  It is well established that 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)]. However, 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 services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. 

[8]  In response to the Registrar’s notice, the Owner furnished two statutory declarations of Gene Fontaine, declared on March 27, 2018, and March 28, 2018, respectively. Both parties filed written representations. An oral hearing was not requested.

The Owner’s Evidence

[9]  In his statutory declaration dated March 27, 2018, Mr. Fontaine identifies himself as president of the Owner, a Massachusetts corporation, and states that he owns a controlling interest in the Owner. He states that the Owner has been using the Mark in association with the registered services during the relevant period. As Exhibit A, he attaches a signed “background document” in which he explains the Owner’s normal course of trade. The contents of the document can be summarized as follows: the Owner is an independent distributor of electronics equipment whose business involves purchasing inventory and brokering sales of both electronic hardware parts, such as semiconductor materials and “board level” components, and completed electronic devices. The Owner makes use of a web-based database called “netComponents”, through which it engages in advertisement, purchase, and sale of such components. In a management role, the Owner also assists third parties in securing parts on the secondary market, assessing the quality of vendors, offering expertise on industry trends, and the like.

[10]  In his statutory declaration, Mr. Fontaine explains that the Owner has been a registered member and supplier of netComponents from 2000 to the present, and has used netComponents extensively in the course of performance and advertisement of the registered services. He states that the Owner is classified as a Level 2 supplier on netComponents, allowing it to upload lists of items for sale. Mr. Fontaine explains that at least 100 Canadian electronics companies are currently registered on the netComponents database, and states that he is aware based on conversation with representatives of netComponents that most of these companies were active members during the relevant period and were therefore able to search, view, and access the Owner’s materials during the relevant period. As Exhibit D, Mr. Fontaine attaches two user profiles of long-standing Canadian electronics companies operating on the site.

[11]  As Exhibits G and H, Mr. Fontaine attaches screenshots showing an upload of a list of inventory to netComponents by the Owner, dated within the relevant period, and photographs of the products listed in the inventory, respectively. He explains that the listed products include computer hardware in the form of a peripheral board, and a CD-ROM containing retail computer software (both shown in Exhibit H), as well as electronic computer components, integrated circuits, active components in the form of an Intel CPU, passive components in the form of a Panasonic capacitor, and other items that can be classified as semiconductors or board level components.

[12]  Mr. Fontaine explains that once an inventory list has been uploaded to netComponents, the listed products can be found by prospective buyers conducting a search on the database. In addition, he states that the Owner itself conducts searches of the database to evaluate and analyze market conditions in the course of providing its services. As Exhibit I, he attaches screenshots from netComponents showing a search result that includes the Owner’s components. He acknowledges that the screenshots are dated outside the relevant period but explains that they are for “illustration purposes”. The Owner’s goods are identified by the words “E-Source, Inc.” under the “Supplier” heading. He explains that because netComponents is a “legacy style system”, it allows suppliers to upload only their company name, rather than logos or other graphics, to identify themselves.

[13]  As Exhibit K, Mr. Fontaine attaches screenshots of a Canadian company’s emailed request to the Owner for a price quote, dated December 17, 2015, along with the Owner’s emailed response, dated the same day. The words “e source” appear in the signature line of the reply email from the Owner in the following configuration (the Logo):

[14]  As Exhibit L, Mr. Fontaine attaches an invoice and a packing slip dated within the relevant period, showing the purchase of the product “Semiconductor; Voltage Controller” from the Owner by a Montreal-based company. The Logo appears in the top left corner of the invoice and the packing slip. As Exhibit M, he attaches a photograph of a packaged product bearing labels that display the Logo, explaining that this is representative of how the Owner’s goods are packaged for shipping.

[15]  As Exhibit N, Mr. Fontaine attaches copies of emails and phone records dated during the relevant period showing correspondence with representatives of a Mississauga-based electronics company called Atlantis Electronics, which is identified in the email screenshot as a division of Lantek Corporation, an American company. Exhibit N also includes a copy of a purchase order by Lantek Corporation to the Owner for a capacitor, to be delivered to an address in New Jersey. Mr. Fontaine explains that the order was placed through the Canadian office of Atlantis Electronics on behalf of Lantek Corporation. The Logo appears in the signature line of Mr. Fontaine’s email correspondence.

[16]  Mr. Fontaine explains that the Owner’s management services are inextricably linked to its distribution services. As Exhibit S, he attaches screenshots of a series of emails exchanged with the operations manager of an Ottawa-based company, in which the operations manager inquires about the availability of an electronics part, and Mr. Fontaine indicates that he will attempt to locate a seller, but appears to have been ultimately unsuccessful in doing so. The exchange is dated within the relevant period and the Logo appears in the signature line of Mr. Fontaine’s emails. Mr. Fontaine explains that this is one instance of a longstanding relationship between the Owner and the Ottawa company, in which the Owner has managed excess inventories and product shortages, performed risk management assessments, and contacted customers on the company’s behalf.

[17]  Finally, Mr. Fontaine states that the Owner advertised its services in Canada during the relevant period by way of its website and print materials. As Exhibits P and R, Mr. Fontaine attaches screenshots of the Owner’s websites, www.esourcetrade.com and www.esourcetrade.ca. He explains that the latter subdomain redirects users to www.esourcetrade.com, and that the attached screenshots show the webpages as they appeared during the relevant period. The webpages describe the Owner’s business and include a link to download the Owner’s brochure, which is attached as Exhibit U and further describes the Owner’s services. The Logo is prominently displayed on the various exhibited webpages and on the brochure. I note that the screenshot attached as Exhibit R describes three “basic services” offered by the Owner, quoted in full below:

Shortage requirements: We source product that is short, allocated or obsolete

Cost reduction: We help companies leverage the open market to save money

Excess management: We manage excess inventory and work to increase poor rates of return on distressed assets

[18]  As Exhibit Q, Mr. Fontaine attaches documentation showing that the Owner’s webpage was visited by Canadian IP addresses during the relevant period. The documentation includes the Owner’s website’s statistical data showing a list of IP addresses that visited the page in February and March 2016, along with a screenshot from the website www.infobyip.com showing that several of the listed IP addresses originated in the Greater Toronto Area.

[19]  In his statutory declaration of March 28, 2018, Mr. Fontaine attaches documentation from GoDaddy Operating Company, LLC, showing that the domain names www.esourcetrade.com and www.esourcetrade.ca are owned by the Owner.

Analysis

[20]  As a preliminary matter, I note that the Owner’s written submissions refer to facts not in evidence, including facts concerning the identity and motivation of the Requesting Party. These submissions will be disregarded [per Ridout & Maybee LLP v Encore Marketing International Inc (2009), 72 CPR (4th) 204 (TMOB); see also 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].

[21]  The Requesting Party’s submissions can be generally categorized as follows: that Mr. Fontaine did not state the source of his knowledge of the matters detailed in his statutory declarations; that the Logo is an unacceptable deviation from the Mark as registered; that the appearances of the word “E-source” and the Logo throughout the Owner’s evidence constitute use of a trade name rather than a trademark; and that the Owner has not shown that it performed its distribution and management services in Canada during the relevant period. Each submission will be discussed in turn.

Hearsay

[22]  The Requesting Party submits that because Mr. Fontaine did not state that he was president of the Owner during the relevant period, that he had access to the Owner’s business records, or that he had personal knowledge of the matters described in the statutory declarations, the statutory declarations should be disregarded as hearsay.

[23]  In this case, while the Owner did not state that he was president of the company during the relevant period and did not state the source of his knowledge, it is clear from a review of the evidence as a whole, including the emails between Mr. Fontaine and prospective clients of the Owner attached as Exhibits K and S, that Mr. Fontaine held a high-level position and was authorized to conduct business on behalf of the Owner during the relevant period. Absent evidence to the contrary, an affiant’s sworn statements are to be accepted at face value, and statements in an affidavit must be accorded substantial credibility in a section 45 proceeding [Oyen Wiggs Green & Mutala LLP v Atari Interactive, Inc, 2018 TMOB 79 at para 25]. In this case, given Mr. Fontaine’s position and tenure within the Owner, I accept that he would have knowledge of the Owner’s activities and I therefore accept his statements at face value [for similar conclusions, see FCA US LLC v Pentastar Transportation Ltd, 2018 TMOB 80 at para 20 [Pentastar]; Eveready Battery Co v Outillages King Canada Inc, 2016 TMOB 178 at paras 12-13].

[24]  In any event, the Federal Court has held that given the summary nature of section 45 proceedings, “concerns with respect to the hearsay nature of evidence can go to weight, rather than admissibility” [Eva Gabor International Ltd v 1459243 Ontario Inc, 2011 FC 18 at para 18; see also Pentastar at paras 47-49]. For instance, I note that Mr. Fontaine attaches the Exhibit A “background document” for the truth of its contents; however, because the background document is written and signed by Mr. Fontaine and is consistent with his sworn statements and with the totality of his evidence, I am prepared to assign it some weight.

Deviation

[25]  The Requesting Party submits that the Logo constitutes an unacceptable deviation from the Mark as registered given that it is dominated by a large letter “e” placed above the smaller word “source” in a contrasting colour. However, it is well established that a registration for a word mark can be supported by use of that mark in any stylized form and in any colour [see Stikeman, Elliott v Wm Wrigley Jr Co (2001), 14 CPR (4th) 393 (TMOB)]. The question to be asked is whether the trademark was displayed in such a way that it did not lose its identity and remained recognizable, in spite of the differences between the form in which it was registered and the form in which it was used [Canada (Registrar of Trade Marks) v Cie internationale pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA)]. In the present case, I find that the word mark retains its identity and remains recognizable, given that the Logo is simply a stylized form of the word mark “E SOURCE” with no additional textual material.

Trade Name

[26]  The Requesting Party submits that the appearances of the Logo and the words “E-source” in the Owner’s evidence, including on the netComponents database, the Owner’s marketing materials, invoices, and other materials, as a trade name rather than as a trademark.

[27]  Use of a trade name in association with services does not exclude use of that trade name as a trademark within the meaning of section 4(2) of the Act [Consumers Distributing Co / Cie Distribution aux Consommateurs v Toy World Ltd, 1990 CarswellNat 1398 (TMOB) at para 14]. Whether a word is used as a trademark or a trade name is a question of fact. The question is whether the registrant has shown use of its trademark in such a way that it is identifiable as a trademark and not merely as a corporate name or corporate identifier. Relevant factors to decide whether use is as a trademark or trade name include whether the trademark stands apart from the corporate address and other corporate identifier information to the extent that the public would perceive such use as a trademark and not merely as identification of a legal entity [see Road Runner Trailer Manufacturing Ltd v Road Runner Trailer Co (1984), 1 CPR (3d) 443 (FCTD) at para 16; Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB) at para 7; Borden Ladner Gervais LLP v GDC Communities, 2015 TMOB 50 at para 20].

[28]  In this case, while the Owner makes use only of the words “E-Source, Inc.”, rather than the Logo, within the netComponents database due to the limitations of that system, the Logo otherwise appears extensively throughout the Owner’s evidence, including on the invoice attached as Exhibit L, the packaging shown in Exhibit M, the emails attached as Exhibits K and S, and the website screenshots and promotional materials attached as Exhibits P, R, and U. While the Requesting Party argues that the Owner’s evidence fails to meet the burden of showing that the Mark stands out from the remainder of the corporate identifier information, I find that the Mark quite clearly stands out given that it appears in the form of the Logo, whereas the remaining corporate information is written in plain text [for similar conclusions, see PNC IP Group Professional Corporation v Petro Barrier Systems Incorporated, 2018 TMOB 146 at para 19; Miller Thomson v Thinklab Consulting Inc, 2019 TMOB 8 at para 16].

[29]  With respect to the invoice attached as Exhibit L, showing a sale of a semiconductor to a Montreal-based company during the relevant period and displaying the Logo in the top left corner, it has been established that in the context of services, a trademark appearing at the top of an invoice for services can suffice to show use of the trademark in association with those services within the meaning of section 4(2) [see Tint King of California Inc v Canada (Registrar of Trade Marks) (2006), 56 CPR (4th) 223 (FCTD) at para 35; Bereskin & Parr v Timmy’s Coffee Service Inc, 2014 TMOB 173 at para 10; Robinson Sheppard Shapiro SENCRL/LLP v Exo Inc, 2017 TMOB 132 at para 38].

[30]  Accordingly, I find that use of the Logo in the Owner’s exhibited invoice, packaging, emails, website and promotional materials constitutes use of the Mark as a trademark.

Performance of Services in Canada

[31]  The Requesting Party submits that the Owner’s evidence establishes that the Owner is a supplier, rather than a distributor, and further, that it fails to describe and provide evidence for the Owner’s management services. In addition, the Requesting Party argues that the transaction involving Lantek Corporation establishes performance of the Owner’s services in the United States, rather than Canada; the Requesting Party cites Porter v Don the Beachcomber (1966), 48 CPR 280 (Ex Ct), for the proposition that use of a trademark in association with services is not established by advertising in Canada when the services are performed abroad. However, given that the Owner has provided other evidence of transactions involving companies based in Canada, it is not necessary for me to consider the Requesting Party’s submissions regarding the Lantek Corporation transaction.

[32]  With respect to the Owner’s distribution services, I do not consider it relevant that the Owner’s role within the netComponents database is classified as “supplier”. It is a well-established principle that when interpreting a statement of goods or services in a section 45 proceeding, one is not to be “astutely meticulous when dealing with [the] language used” [see Aird & Berlis LLP v Levi Strauss & Co, 2006 FC 654 at para 17]. I have no difficulty concluding that the Owner’s services of sourcing and purchasing inventory and selling it to third parties fall within the ambit of “distributorship services”.

[33]  It is well-established that where the trademark owner is offering and prepared to perform its services in Canada, use of the trademark in the course of advertising those services also meets the requirements of section 4(2) of the Act [see Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)]. As noted above, the Owner’s website advertises its services, including sourcing products, managing excess inventory, and “help[ing] companies leverage the open market”. When read in conjunction with the evidence as a whole, I find that the first such service constitute the Owner’s “distributorship services” and the latter two constitute the Owner’s “management services”. While the Requesting Party argues that the Mark is illegible on the website screenshots, the copy on record clearly displays the Logo. As Mr. Fontaine confirms that the screenshots are representative of the appearance of the website during the relevant period, I am satisfied that the Mark was displayed in the advertising of the Owner’s distributorship and management services on its website during the relevant period [for similar conclusions, see Aird & Berlis LLP v K W Johnston Real Estate Ltd, 2018 TMOB 143 at paras 17-18; GMAX World Realty Inc v RE/MAX, LLC, 2015 TMOB 169 at para 18; H&M, Patent and Trade-mark Agents v Kinedyne Canada Ltd, 2015 TMOB 48 at paras 21-23].

[34]  As to whether the Owner was offering and prepared to perform each of its services in Canada during the relevant period, I note that the Exhibit G inventory list includes items which Mr. Fontaine correlates with each of the products listed in services (1) and (2), indicating that the Owner was prepared to provide distributorship and management services for each of the listed products. The Exhibit L invoice, showing that the Owner shipped a semiconductor to a Montreal-based company during the relevant period, shows that the Owner was prepared to perform, and did perform, distributorship services in Canada during the relevant period. Similarly, the Exhibit S email chain, in which the Owner seeks to locate a product seller for an Ottawa-based company during the relevant period, shows that the Owner was prepared to perform its management services in Canada during the relevant period. While this particular email exchange does not appear to have resulted in the Owner connecting the company with a seller, I consider it to be evidence that the Owner performed its management services in Canada during the relevant period, especially in view of Mr. Fontaine’s sworn statement that the Owner managed excess inventories and product shortages, performed risk management assessments, and contacted customers on behalf of this company for many years.

Disposition

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

G.M. Melchin

Hearing Officer

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

AGENTS OF RECORD

No agent appointed	For the Registered Owner
Ridout & Maybee LLP	For the Requesting Party