Citation: 2020 TMOB 20

Date of Decision: 2020-02-26

IN THE MATTER OF A SECTION 45 PROCEEDING

	Billi R & D Pty Ltd.	Requesting Party
and
	Culligan International Company	Registered Owner
	TMA655,549 for QUADRA-HULL	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. TMA655,549 for the trademark QUADRA-HULL (the Mark), owned by Culligan International Company.

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

Water softener resin tanks.

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

Introduction

[4]  At the request of Billi R & D Pty Ltd. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on February 21, 2017, to Culligan International Company (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 the goods 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 February 21, 2014 to February 21, 2017.

[6]  The relevant definition of use for goods is 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.

[7]  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 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 the affidavit of F. John Griffith, sworn on September 20, 2017. Only the Owner filed written representations and was represented at an oral hearing.

The Owner’s Evidence

[9]  In his affidavit, Mr. Griffith explains that he has been secretary of the Owner since 2013. He explains that in the normal course of trade, the Owner sells water treatment products to consumers through over 55 authorized licensed franchisees in Canada. Mr. Griffith states that water softener resin tanks branded with the Mark are sold as “a key selling feature and functional component” of the Owner’s residential water softeners. As Exhibits A and B to his affidavit, he attaches screenshots from the Owner’s website as it appears now and as it appeared during the relevant period, respectively. The website provides product specifications for the Owner’s water softeners, including references to a “Quadra-Hull® Tank” or “Quadra-Hull® media tank”. As Exhibit C, he attaches a copy of a brochure distributed to customers during the relevant period, which refers to water tanks identified by the Mark accompanied by the ^TM symbol.

[10]  Mr. Griffith attests that in the normal course of trade, customers will order the Owner’s water softeners from the Owner through one of the Owner’s licensed franchisees. As Exhibit D, he attaches copies of a purchase agreement and warranty form, explaining that these documents are representative of documentation used to order the Owner’s water softeners in Canada during the relevant period. The warranty form includes numerous references to Quadra-Hull conditioner tanks.

[11]  As Exhibits E and F, Mr. Griffith attaches copies of invoices dated within the relevant period, showing sales of various items to franchisees and customers in Canada. Mr. Griffith explains that the product code 01022680, which appears on the Exhibit E invoices along with the descriptor “SOFTENER”, refers to water softeners containing resin tanks bearing the Mark as shown in the website and brochure evidence attached as Exhibits A through C. He further explains that Exhibit F shows a sale from a franchisee to a customer of a water softener containing Quadra-Hull resin tank. I note that the initials “Q-H” appear on the invoice.

[12]  Finally, as Exhibit G, Mr. Griffith attaches copies of product manuals for several of the Owner’s water softeners. He explains that these copies are representative of product manuals that accompanied water softeners sold to customers in Canada during the relevant period. The manuals refer to a “Quadra-Hull ^TM Tank” contained within the water softeners.

Analysis

[13]  The Owner submits that it has established use of the Mark in association with the registered goods within the meaning of section 4(1) of the Act. I agree. By virtue of the Exhibit E and F invoices, the Owner has shown sales of water softeners containing the registered goods in Canada during the relevant period. While these invoices do not display the Mark or refer specifically to resin tanks, Mr. Griffith has provided sworn statements confirming that these water softeners are the same as those depicted in Exhibits A through C, which are shown in those exhibits to contain the registered goods.

[14]  Further, Mr. Griffith’s evidence is sufficient to establish notice of association between the Mark and the registered goods at the time of transfer of property or possession. In this respect, I note that Mr. Griffith’s affidavit confirms that at the time of delivery and installation of the water softeners, purchasers are provided with the sales brochure, warranty form, and product manual attached as Exhibits C, D, and G, all of which display the Mark. It is well established that the display of a trademark on a product manual provided at the time of transfer can establish use of the Mark within the meaning of section 4 of the Act [Altos, Re (2003), 30 CPR (4th) 562 (TMOB) at para 11; BCF LLP v THAT Corp, 2016 TMOB 190 at paras 31-33]. Finally, I am satisfied that there is no issue concerning whether the Owner controls the character and quality of its goods sold by its licensees as it is clear that the Owner manufactures the registered goods itself.

Disposition

[15]  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

___________________________________________________

HEARING DATE 2020-01-15

APPEARANCES

Laurent Massam

For the Registered Owner

AGENTS OF RECORD

Gowling WLG (Canada) LLP	For the Registered Owner
Chantal St. Denis	For the Requesting Party