Citation: 2021 TMOB 37

Date of Decision: 2021-02-26

IN THE MATTER OF A SECTION 45 PROCEEDING

	Sim & McBurney	Requesting Party
and
	Granini France (une société par actions simplifiée)	Registered Owner
	TMA207,105 for JOKER	Registration

Introduction

[1] At the request of Sim & McBurney (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 October 30, 2017, to Granini France (une société par actions simplifiée) (the Owner), the owner of registration No. TMA207,105 for the trademark JOKER (the Mark).

[2] The Mark is registered for use in association with the goods “fruit juices and non-alcoholic carbonated or non-carbonated beverages having a fruit base” (the Goods).

[3] The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, in association with the Goods, at any time within the three-year period immediately preceding the date of the notice, which in this case is between October 30, 2014, and October 30, 2017. If the Mark had not been used within the relevant period, 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.

[4] 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.

[5] In response to the Registrar’s notice, the Owner furnished a document titled “JOINT AFFIDAVIT OF INA WANTULLA AND JULIETTE FOUCAULT AKTAS” (the Affidavit Document), which was signed by both Ina Wantulla and Juliette Foucault Aktas (the Affiants) in France on May 28, 2018. The issue of whether this document constitutes a properly sworn affidavit or statutory declaration is addressed below.

[6] No written representations were filed, but the Requesting Party was represented at an oral hearing.

[7] For the reasons that follow, I conclude that the registration ought to be expunged.

The evidence

[8] In the Affidavit Document, Ina Wantulla and Juliette Foucault Aktas identify themselves as the chief financial officer and marketing director, respectively, of Eckes-Granini France SNC.

[9] They state that Eckes-Granini France SNC is a company that uses the Mark with the approval of the Owner to do so. They further state that the Mark has been used in France for several decades in association with fruit beverages and that it is registered in several countries worldwide. According to the Affiants, approximately 10 million litres of fruit juices, fruit drinks and vegetables juices were sold in association with the Mark in multiple countries, including France, Guadeloupe, Japan, Senegal, United Arab Emirates and Russia, during the relevant period.

[10] In support, the Affiants attach nine exhibits to the Affidavit Document.

[11] The first exhibit contains examples of label artwork showing how the Mark is displayed on different products. Exhibits 2 to 7 contain slide presentations showing marketing activities regarding the Mark from 2014 to 2018 and invoices addressed to Eckes Granini France related to such activities. Exhibit 8 is a brief overview diagram of the Mark’s history and Exhibit 9 contains printouts of three International Registrations and one European Union Trade Mark registration for the Mark.

Admissibility of the Affidavit Document

[12] At the hearing, the Requesting Party objected to the Affidavit Document on the basis that it is not, on its face, a true affidavit. The Requesting Party argued that, while the document is titled an “affidavit”, it should not be considered as such, since no one authorized to administer oaths attested to Ina Wantulla and Juliette Foucault Aktas having sworn that the facts provided are true. Furthermore, the Affidavit Document appears to have been made in France and there is no explanation that it conforms with French law respecting affidavits.

[13] I would first note that the Act and the Trademarks Regulations are silent as to the form of affidavits and statutory declarations to be filed before the Registrar. Accordingly, the Registrar generally accepts affidavits sworn in foreign jurisdictions as long as that jurisdiction’s requirements are met [see Dubuc v Montana (1991), 38 CPR (3d) 88 (TMOB)]. Furthermore, especially in the context of section 45 proceedings—which are intended to be summary and expeditious—the Registrar has frequently considered certain deficiencies in affidavits and statutory declarations to be mere technicalities [see, for example, Brouillette, Kosie v Luxo Laboratories Ltd (1997), 80 CPR (3d) 312 (TMOB); 88766 Canada Inc v Tootsie Roll Industries Inc (2006), 56 CPR (4th) 76 (TMOB); and Borden & Elliot v Raphaël Inc (2001), 16 CPR (4th) 96 (TMOB)].

[14] In this case, however, I agree with the Requesting Party and find that the deficiencies in the Affidavit Document are beyond mere technicalities. They go to the very basis of the document being an affidavit [for similar conclusions, see GD Express Worldwide NV v Skyward Aviation Ltd (2000), 7 CPR (4th) 348 (TMOB); and Barrette Legal Inc v Dallevigne SPA, 2015 TMOB 12, 2015 CarswellNat 965].

[15] Although section 45 proceedings are simple and administrative in nature, the evidence must nevertheless be filed in the form of an affidavit or statutory declaration. In the present case, although the Affidavit Document is titled an affidavit—and the Affiants state at the outset that they are aware of the meaning of an affidavit—it was not sworn or affirmed before an individual authorized to administer oaths, as is required to make it a proper affidavit.

[16] More specifically, although the Affiants also state that they “make the following affidavit for presentation to the Canadian Intellectual Property Office” and “[u]pon inspection of the relevant documents … certify the following”, they do not state that the facts in the document are provided under oath, and there is no jurat or other indication that the document was sworn or affirmed in front of a notary public, commissioner of oaths, or similar authority in France.

[17] Nor does the document meet the formal requirements of a statutory declaration as set out in section 41 of the Canada Evidence Act. All that appears at the bottom of the Affidavit Document is the place and date of signature and the names, titles and signatures of the Affiants.

[18] Since the Affidavit Document cannot be considered a valid affidavit or statutory declaration, the Owner has failed to furnish the required evidence.

[19] In any event, even if I were to accept the Affidavit Document as valid evidence, for the reasons below, I find that it is insufficient to demonstrate use of the Mark within the meaning of sections 4 and 45 of the Act.

Analysis with respect to use

[20] It is well established that mere assertions of 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 a section 45 proceeding 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.

[21] In the present case, I would first note that, although the Affiants state that their company uses the Mark with the “approval” of the Owner, it is not clear that this satisfies the requirements of section 50 of the Act, such that the use would enure to the Owner’s benefit. In any event, there is no evidence that the Mark has been used in Canada, by the Owner or otherwise.

[22] Although the Affiants speak to significant sales of the Goods during the relevant period, they do not assert that any Goods were sold or otherwise transferred in Canada, nor do they provide any invoices or other documents, or even any factual particulars, from which such transfers might be inferred. Even though the Affiants name different countries in which the Goods were sold, they do not mention Canada at all in the Affidavit Document.

[23] In this respect, the first exhibit shows how the Mark appears on the Goods, but there is no indication or explanation from the Affiants that such Goods were sold or distributed in Canada, during the relevant period or otherwise. The only invoices filed with the Affidavit Document (Exhibit 2) represent “marketing spendings”; however, there is no indication that any marketing reached Canada. In any event, advertising is insufficient for demonstrating use of a trademark in association with goods within the meaning of sections 4 and 45 of the Act; some evidence of transfers in the normal course of trade in Canada is necessary [see Michaels & Associates v WL Smith & Associates Ltd (2006), 51 CPR (4th) 303 (TMOB); and Riches, McKenzie & Herbert LLP v Cleaner’s Supply Inc, 2012 TMOB 211, 2012 CarswellNat 5229].

[24] In view of all of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered goods within the meaning of sections 4 and 45 of the Act.

Disposition

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

Oksana Osadchuk

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

 

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-01-21

APPEARANCES

No one appearing	For the Registered Owner
Kenneth McKay	For the Requesting Party

AGENTS OF RECORD

ROBIC	For the Registered Owner
Marks & Clerk	For the Requesting Party