UNREVISED ENGLISH CERTIFIED TRANSLATION

Citation: 2020 TMOB 146

Date of decision: 2020-12-28

IN THE MATTER OF A SECTION 45 PROCEEDING

	Robinson Sheppard Shapiro S.E.N.C.R.L./L.L.P.	Requesting Party
and
	Pouliot Machinerie Inc.	Registered Owner
	TMA456,139 for RE-TRACK	Registration

[1]  At the request of Robinson Sheppard Shapiro S.E.N.C.R.L./L.L.P. (the Requesting Party), the Registrar sent a notice under section 45 of the Trademarks Act, RSC 1985, c. T‑13 (the Act) on February 2, 2018, to Pouliot Machinerie Inc. (the Owner), the registered owner of registration No. TMA456,139 for the trademark RE-TRACK (the Mark).

[2]  All references are to the Act as amended June 17, 2019, unless otherwise noted.

[3]  The Mark is registered in association with the following goods:

[Translation]

Retractable 4’ x 6’ or 4’ x 8’ platform that rests inside a truck box of a similar size; the platform is used to assist recreational vehicle users with safe loading when transporting their vehicle.

(the Goods)

[4]  The notice under section 45 of the Act requires that the Owner indicate whether the Mark has been used in Canada in association with the Goods at any time within the three-year period immediately preceding the date of the notice and, if not, the date on which the Mark was thus used the last time and the reason for its absence of use since that date. In this case, the relevant period is from February 2, 2015 to February 2, 2018.

[5]  The relevant definition of “use” for the goods in this case is set out in section 4(1) 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.

[6]  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. The threshold for establishing use in section 45 proceedings is quite low [Woods Canada Ltd v Lang Michener et al (1996), 71 CPR (3d) 477 (FCTD)] and evidentiary overkill is not required [Union Electric Supply Co v Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD)]. It is sufficient to establish a prima facie case of use of the Mark under sections 4 and 45 of the Act [1459243 Ontario Inc v Eva Gabor International, Ltd., 2011 FC 18]. However, mere assertions of use are not sufficient to do so [Plough (Canada) Ltd. v Aerosol Fillers Inc (1980), 53 CPR (2d) 63 (FCA)].

[7]  In response to the Registrar’s notice, the Owner submitted statutory declarations by Jean Pouliot and Sébastien Noël, sworn on March 19 and April 27, 2018, respectively. Only the Requesting Party filed written representations; no hearing was held.

[8]  The statutory declarations filed in evidence are very brief (only three paragraphs each) and have substantially similar content. Mr. Pouliot and Mr. Noël describe themselves as President and Director of Produits Métalliques Pouliots Machinerie inc. (Produits Métalliques PMI), respectively [paras 1]. They state that the Owner changed its name by articles of amendment dated September 21, 2002, to Produits Métalliques PMI [paras 2], and both stated that Produits Métalliques PMI [translation] “still uses the mark RE-TRACK as seen on the invoices [...] and the list of sales” attached to their declarations [paras 3].

[9]  In its written representations, the Requesting Party essentially puts forward three arguments that can be summarized as follows:

-  The statutory declarations by Mr. Pouliot and Mr. Noël dated March 19 and April 27, 2018, are additional evidence and are inadmissible as evidence.

-  The exhibits included with those declarations are not identified or sworn and are inadmissible as evidence.

-  The use of the Mark has not been demonstrated, as the evidence contains no information on how the Goods may have been sold in association with the Mark or on the Owner’s normal course of trade.

[10]  I will now examine them in that order.

The Registrar’s decision on the admissibility of the evidence in the file was not reviewed

[11]  The Requesting Party questions the admissibility of the statutory declarations by Mr. Pouliot and Mr. Noël dated March 19 and April 27, 2018, filed by the Owner. More specifically, referring to certain documents previously submitted by the Owner, it alleges that these declarations are in fact additional evidence and are therefore inadmissible.

[12]  I note that, in an official letter dated June 5, 2018, the Registrar dismissed the “declarations” filed on April 27, 2018, as evidence from the Owner (which the Requesting Party identifies as “Pouliot No. 1 Declaration” and “Noël No. 1 Declaration.), as they were not in the prescribed form. Those documents are therefore not part of the file and do not warrant further discussion.

[13]  I also note that, in an official letter dated October 15, 2018, the Registrar granted the Owner extra time retroactively to allow it to file its evidence in an acceptable form, and confirmed receipt of the statutory declarations by Mr. Pouliot and Mr. Noël filed as such on September 7, 2018. No objections concerning those documents were raised at that time by the Requesting Party or the Registrar. At this time, I see no reason to reconsider the Registrar’s decision to permit the Owner’s evidence into the record.

The documents filed by the Owner as exhibits are admissible

[14]  The Requesting Party also criticizes the documents attached in support of Mr. Pouliot and Mr. Noël’s statutory declarations. More specifically, it alleges that the exhibits included with them are not identified or sworn and are therefore inadmissible.

[15]  Indeed, I note that the documents attached to those statutory declarations are provided in single copies and are neither dated, signed or sworn, nor expressly identified as “exhibits” as such in either declaration (neither has a cover page or any other identifier).

[16]  However, it is well established that technical deficiencies should not prevent a party from responding to a notice under section 45 of the Act where the evidence provided could be sufficient to show use of the trademark [Baume & Mercier SA v Brown (1985), 4 CPR (3d) 96 (FCTD)]. For example, the Registrar may sometimes accept exhibited evidence that is not properly endorsed if it is clearly identified in the body of the declaration [Borden & Elliot v Raphaël Inc (2001), 16 CPR (4th) 96 (TMOB)]. In this case, as the declarations by Mr. Pouliot and Mr. Noël both clearly identify the nature and date of each of the attached documents, I am prepared to accept them as evidence despite their deficiencies described above.

Use of the Mark has not been demonstrated

[17]  The Requesting party submits that the evidence contains no information on how the Goods may have been sold in association with the Mark. More specifically, the Requesting Party submits that the Owner did not provide any photographs, labels or other material showing how the Mark appears or is otherwise used in association with the Goods, or any information on its normal course of trade.

[18]  The evidence submitted by the Owner does not in fact show the use of the Mark under section 4(1) of the Act at any time, including during the relevant period.

[19]  As noted above, the statutory declarations by Mr. Pouliot and Mr. Noël are very brief, with the affiants essentially claiming that the Owner “still uses the mark [...] as seen on the invoices [...] and the list of sales” attached to their declarations. Although assertions contained in a statutory declaration are generally given substantial credibility [Ogilvy Renault v Compania Roca-Radiadores SA, 2008 CarswellNat 776 (TMOB)], I find that the declarations by Mr. Pouliot and Mr. Noël concerning the use of the Mark in this case are too vague and unclear. Indeed, neither of the statements describes how the Mark was used in association with the Goods during the relevant period, even when considered in association with the exhibits produced in support of them, for the following reasons.

[20]  On reviewing the invoices attached to the declarations by Mr. Pouliot and Mr. Noël, I note that there are three and that only two cover the relevant period, namely the invoices dated September 8 and December 13, 2017. These invoices are both from Produits Métalliques PMI to the same company in Canada and reflect the same product number, followed by “RETRACK RAMPE 48” X 96” TOLE GALV.” in the “description” portion in the body of the invoices. I find this reference to the Mark without a hyphen to be of no consequence, as it is a minor difference from the Mark as registered. However, I find that the same is not necessarily true for the description of the Good, as I am of the view that there is the question of whether the Good described as a [translation] “ramp” in the invoices is actually the [translation] “retractable platform” referred to in the registration.

[21]  That said, with no representations from either party on this issue, I find that there is no need to rule on it because, regardless, the evidence on record does not allow me to determine the extent to which the invoices actually accompanied the goods referred to in them at the time of transfer so as to give notice of association between the Mark and such goods and thus show use of the Mark as defined in section 4 of the Act [see Riches, McKenzie & Herbert v Pepper King Ltd (2000), 8 CPR (4th) 471 (FCTD)].

[22]  Indeed, Mr. Pouliot and Mr. Noël do not specify whether those invoices actually accompanied the Goods when they were transferred to the client. Apart from the fact that they indicate the same address for sale and shipment, the invoices do not mention any shipping date or any other information in that respect. There is also no information on how clients take ownership or possession of the Goods (e.g., whether they must necessarily be delivered or whether a client could not also take possession by going to the Owner’s point of sale).

[23]  The summary report referred to by the Owner as the “list of sales” in no way addresses these inaccuracies. Indeed, the report essentially consists of a list of sales between January 1, 2013 and December 31, 2017 (including at least a dozen during the relevant period) for the same product number as indicated on the invoices dated September 8 and December 17, 2017, also described as “RETRACK RAMPE 48” X 96” TOLE GALV.”, including transaction dates, invoice numbers and selling prices.

[24]  However, it is well established that, without evidence to that effect, the Registrar cannot assume that the invoices accompanied the goods at the time of transfer [Riches, McKenzie & Herbert].

[25]  Given the lack of explanation and evidence of how the Mark appeared on the Goods or was otherwise associated with them such that notice of association is given by the Owner to the consumers when the Goods are transferred, I cannot conclude that the Mark was used in association with the Goods within the meaning of sections 4 and 45 of the Act during the relevant period. No facts were provided to justify non-use.

Disposition

[26]  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.

Iana Alexova

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

Certified translation

Gerald Woodard

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No hearing held

AGENTS OF RECORD

CAIN LAMARRE LLP	For the Registered Owner
ROBINSON SHEPPARD SHAPIRO S.E.N.C.R.L./L.L.P.	For the Requesting Party