Citation: 2021 TMOB 82

Date of Decision: 2021-04-30

IN THE MATTER OF A SECTION 45 PROCEEDING

	Fédération Internationale de l’Automobile	Requesting Party
and
	Canadian Formula 3 Championship, Inc.	Registered Owner
	TMA868,504 for A red maple leaf with a Fleur de Lis and the letters F3 written in silver	Registration

Introduction

[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. TMA868,504 for the trademark titled “A red maple leaf with a Fleur de Lis and the letters F3 written in silver” (the Mark) shown below:

[2] The Mark is registered for use in association with numerous services set out in Schedule A to this decision.

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

The Proceedings

[4] At the request of the Fédération Internationale de l’Automobile (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on November 14, 2017 to the owner, Canadian Formula 3 Championship, Inc. (the Owner).

[5] The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, in association with the registered services, at any time within the three-year period immediately preceding the date of the notice, which in this case is between November 14, 2014, and November 14, 2017 (the Relevant Period). 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.

[6] The relevant definition of use 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 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 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 services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA) (John Labatt)]. Display of a trademark in the advertisement of services is sufficient to satisfy the requirements of section 4(2) of the Act when the owner of the trademark is willing and able to perform the services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)].

[8] In the absence of use as defined above, pursuant to section 45(3) of the Act, a trademark is liable to be expunged, unless the absence of use is due to special circumstances.

[9] In response to the Registrar’s notice, the Owner furnished the affidavit of Mark Tosa sworn on April 24, 2018 (the Affidavit).

[10] Both parties submitted written representations and attended a hearing.

Overview of the Owner’s Evidence

[11] The body of the Affidavit is relatively brief and is reproduced in its entirety below:

I, Mark Tosa, of Needham, Massachusetts, United States of America, MAKE OATH AND SAY AS FOLLOWS:

1. The Trademark has been used within’ the last 3 years pursuant to the rules of maintaining the Trademark and is continuously used to this present day.

2. Attached (Exhibit #1) for your consideration is a true and accurate print-out of the home landing page from the website for Canadian Formula 3 Championship, last visited February 7, 2018. You will note the mark at the bottom of the page being actively used in Canadian Formula 3 Championship’s internet marketing efforts vis-à-vis being prominently displayed on its home landing page.

3. Attached (Exhibit #2) for your consideration is a true and accurate print-out of the home landing page from the website for Canadian Formula 3 Championship as it appeared publicly via the internet on the date of August 2, 2017.

4. Attached (Exhibit #3) for your consideration is Wayback Machine’s internet archive data showing the website has been in consistent use since 2010 until the present day.

[12] The content of the above-referenced Exhibits 1 through 3 is summarized below:

· Exhibit 1 is a screen capture of a webpage at the domain www.formula3.ca. The webpage bears the Mark in two locations, namely, in the top left corner as well as at the bottom. The webpage also displays the image of a racing automobile and various statements including, “The Formula 3 Championship over time, has evolved into the premier, global, and one of the most advanced, junior development formulae available in today’s marketplace.”

· Exhibit 2 is a screen capture of what appears to be the same webpage bearing the Mark in the same two locations. The affiant states that this screen capture represents the webpage as it appeared on August 2, 2017.

· Exhibit 3 is a printout of information from the Internet archive known as the Wayback Machine relating to the domain www.formula3.ca.

Analysis

Preliminary Matter – Admissibility of the Affidavit

[13] In its written representations and at the hearing, the Requesting Party raised a number of technical objections to the admissibility of the Affidavit, including that it is hearsay because the Affidavit does not establish Mr. Tosa’s relationship to the Owner, and that the exhibits to the Affidavit have not been notarized.

[14] Given the summary nature of section 45 proceedings, it has been held that in certain circumstances concerns with respect to the hearsay nature of evidence can go to weight, rather than admissibility [see Eva Gabor International Ltd v 1459243 Ontario Inc, 2011 FC 18 at para 18]. In my view, that principle is instructive in the present case. I note that the Owner has not been represented by a Canadian trademark agent in these proceedings and correspondence received by the Registrar from the Owner has primarily been from Mr. Tosa, who identifies himself in that correspondence as the President/CEO of the Owner. To the extent that the Affidavit constitutes hearsay, in my view, that can speak to weight in this case rather than admissibility. In any event, as discussed below, even when considering the Affidavit as admissible in its entirety, the Affidavit does not demonstrate use of the Mark in Canada during the Relevant Period or special circumstances which justify the absence of use.

[15] With respect to the unnotarized exhibits to the Affidavit, the Registrar has frequently considered certain deficiencies in affidavits to be mere technicalities [see, for example, Brouillette, Kosie v Luxo Laboratories Ltd (1997), 80 CPR (3d) 312 (TMOB); and 88766 Canada Inc v Tootsie Roll Industries Inc (2006), 56 CPR (4th) 76 (TMOB)]. In particular, the Registrar has accepted exhibits that were not properly notarized where the exhibits were clearly identified or explained in the body of the affidavit [see Borden & Elliot v Raphaël Inc (2001), 16 CPR (4th) 96 (TMOB) at para 11; and Smith, Lyons, Torrance, Stevenson & Mayer v Pharmaglobe Laboratories Ltd (1996), 75 CPR (3d) 85 (TMOB) at para 7]. In the present case, the body of the Affidavit appears to have been properly commissioned, and the exhibits to the Affidavit each have numbered cover pages which correspond to descriptions in the body of the Affidavit. In these circumstances, I consider the exhibits to be admissible.

[16] In view of the above, I consider the Affidavit, including the exhibits, to be admissible as evidence in this proceeding.

Preliminary Matter – New evidence in the Owner’s written representations

[17] At the hearing, the Requesting Party argued that the Owner sought to introduce new evidence in its written representations by way of certain allegations of fact, and that these statements should not be taken into consideration. I agree.

[18] Pursuant to sections 45(1) and (2) of the Act, I can only consider evidence submitted in the form of an affidavit or statutory declaration filed within three months of the date of the Registrar’s notice, plus any extensions granted under section 47. The alleged facts referred to in the Owner’s written representations are not in the form of an affidavit or statutory declaration and were filed outside of the prescribed time; accordingly, I cannot consider them [Ridout & Maybee LLP v Encore Marketing International Inc (2009), 72 CPR (4th) 204 (TMOB) at para 5].

[19] Therefore, I am disregarding any new evidence presented in the Owner’s written representations, and have considered only those submissions relating to the Affidavit which is of record.

Registered Services

[20] While evidentiary overkill is not required and representative evidence can be furnished in section 45 proceedings, the registered owner must still establish a prima facie case of use of the trademark in association with each of the services specified in the registration [John Labatt; see also Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184].

[21] As set out in Schedule A to this decision, the registration lists in excess of one hundred different services. Notably, the Affidavit does not discuss any of these services or the Owner’s ability to perform the services in Canada.

[22] The first paragraph of the Affidavit consists of a bare statement that the Mark has been in use within the last 3 years, with no material facts to support that assertion. Such statements alone 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)].

[23] The second paragraph of the Affidavit introduces Exhibit 1, namely, a screen capture of a webpage displaying the Mark. This screen capture is not dated, but the Affidavit suggests that this screen capture is of the webpage as it appeared on February 7, 2018. That date is after the Relevant Period, and thus paragraph 2 and Exhibit 1 of the Affidavit do not demonstrate use of the Mark during the Relevant Period.

[24] The third paragraph of the Affidavit introduces Exhibit 2, namely, a screen capture of the webpage as it appeared on August 2, 2017. That date is within the Relevant Period. The content of the screen capture in Exhibit 2 is nearly identical to that in Exhibit 1. The Mark is displayed twice in this image, in the top left corner and a smaller version at the bottom of the page. However, neither the body of the Affidavit, nor any of the webpage content depicted in Exhibit 2, describe or reference the specific registered services or indicate that the Owner was willing and able to perform such services in Canada. The Affidavit makes no attempt to correlate the webpage content with the numerous registered services, or explain how the Owner was willing and able to perform the services in Canada during the Relevant Period. Demonstrating that the Mark was displayed on a webpage is alone not sufficient; the Owner must provide evidence showing how the Mark was displayed in association with the performance or advertising of each of the registered services. To the extent that Exhibit 2 demonstrates advertising of the Mark in Canada during the Relevant Period, in my view, it is not possible to deduce from the content of Exhibit 2 the specific services being advertised, or whether the Owner was willing and able to perform those services in Canada.

[25] The last paragraph of the Affidavit introduces Exhibit 3, namely, internet archive data from the Wayback Machine. This Exhibit does not display the Mark, and does not otherwise assist the Owner, given my finding above that the other paragraphs and exhibits to the Affidavit do not demonstrate use of the Mark in Canada in association with the registered services.

[26] Ultimately, the Affidavit does not provide sufficient facts to demonstrate use of the Mark in association with any of the registered services in Canada during the Relevant Period pursuant to sections 4(2) and 45 of the Act, nor does the Affidavit provide evidence of special circumstances excusing the absence of use. Therefore, the registration should be expunged in its entirety.

Disposition

[27] 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 expunged.

 

Timothy Stevenson

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

 

SCHEDULE A

 

Services

(1) Administration of community recreational sports leagues in the field of auto racing; Advertising agencies, namely, promoting the goods and services of others; Advertising agencies, namely, promoting the services of motorsports through the distribution of printed and audio promotional materials and by rendering sales promotion advice; Advertising agencies, namely, promoting the services of sponsorships through the distribution of printed and audio promotional materials and by rendering sales promotion advice; Advertising agency specializing in the design and execution of word of mouth, viral, buzz and experiential marketing programs; Advertising and business services, namely, securing airtime on all forms of media communications stations, systems, networks, and services for the purpose of promoting the goods and services of others; Advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium of companies and partners associated with auto racing; Advertising services, namely, creating corporate and brand identity for others; Advertising through all public communication means of auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Advertising, namely promotion of products and services of third parties through sponsoring arrangements and license agreements relating to international sports' events; Advice in the running of establishments as franchises for auto racing leagues and auto racing teams; Arranging and conducting auctions in the field of motorsports; Arranging and conducting marketing promotional events utilizing staging equipment, lights, music, showgirls and a showcar for interior trade shows and exterior exhibitions at motor racing events and at race weekend venues, for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Arranging of buying and selling contracts for third parties for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Arranging of contractual motorsports services with third parties for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Arranging of trading transactions and commercial contracts for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Arranging personal appearances by persons working in the field of film, music, television, entertainment and sport; Assistance in business management and product commercialization of a sponsor's product and/or services to elevate their brand and associate it with motorsports via their logos on racecar liveries, race team gear, race team websites within the framework of a franchise contract for auto racing leagues and auto racing teams; Assistance in franchised commercial business management for auto racing leagues and auto racing teams; Assistance, advisory services and consultancy with regard to business planning, business analysis, business management, business organization, marketing and customer analysis for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Brand idea creation and brand development services for corporate and individual clients; Brand positioning services; Branding services, namely, consulting, development, management and marketing of brands for businesses; Business advisory services, namely, search for and selection of the best potential suppliers for others to match auto racing leagues with auto racing teams with auto racing drivers, technical partners, parts suppliers, corporate sponsors, funding partners; Business consultation, analysis and management regarding marketing activities and launching of new products; Business consulting services relating to product distribution, operations management services, logistics, reverse logistics, supply chain, and production systems and distribution solutions to ensure sufficient parts supply, racing cars and equipment from numerous manufacturers to auto racing teams; Business consulting services, namely, providing assistance in development of businessstrategies and creative ideation for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Business development services, namely, providing start-up support for businesses of others; Business intermediary and advisory services in the field of selling products and rendering services for our corporate sponsors and funding partners to the general public whom could purchase or use any of our sponsor's product whether it being public consumables, food, drink, clothing, utilities, cars, any everyday product and/or services; Business management advisory services relating to franchising; Business management and consultation in the field of motorsports; Business management consulting in the field of team development; Business management services, namely, administration of competitions for all forms of motorsports; Business management services, namely, managing logistics, reverse logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product distribution processes for others; Business services, namely, developing fund raising campaigns for others; Business services, namely, matching potential private investors with entrepreneurs needing funding to assist auto racing teams, auto racing drivers and auto racing circuits with the necessary funding to be sustainable; Business services, namely, procuring qualified and credentialed third-party experts, professionals and other qualified personnel, and documentation and information all on behalf of auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Business services, namely, registering, screening, credentialing, and organizing third-party vendors, suppliers, and contractors, and documentation and information on behalf of auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Business to business direct marketing services for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Club services, namely, promoting the interests of auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, auto racing enthusiasts; Commercial administration of the licensing of the goods and services of others that are associated with the sponsors and partners of our auto racing leagues and sold to the general public; Commercial information agencies providing target marketing and demographic data to sell licensed merchandising of goods and services of others to the general public; Commercial information in the field of auto racing; Commercial management in the field of auto racing; Commissioning of works of art that are recent or historic auto racing cars, equipment or memorabilia; Brand idea creation and brand development in the motorsports arena; Brand idea creation and brand development services for corporate clients; Consultancy services in the field of business strategies to assist our sponsors and partners achieve their target goals within' our auto racing association; Consulting services in the field of publicity to promote our sponsors and partners products and services; Contests and incentive award programs to promote the sale of products and services of others; Cooperative advertising and marketing in jointly helping our sponsors and partners promote their products and services; Coordination of recreational sporting opportunities, namely auto racing driver testing sessions for individuals who wish to participate in team league sports; Corporate event management services; Corporate image consulting services to assist our sponsors and partners auto racing and marketing goals; Cost containment in the field of auto racing to help our racing teams become more sustainable; Development of marketing strategies and concepts to assist our sponsors and partners auto racing and marketing goals; Distribution of advertising materials to the general public about our auto racing leagues, auto racing teams, auto racing drivers, sponsors and partners products and services; Employment staffing in the field of motorsports; Export and import agencies; Franchise services, namely, offering business management assistance in the establishment and operation of auto racing teams, race circuits; Franchising, namely, consultation and assistance in business management, organization and promotion to help our racing teams become more sustainable; Goods import-export agencies; Import agency services in the field of motorsports equipment, race cars, merchandising; Import agency services in the field of motorsports; Logistics management in the field of auto racing; Maintaining a registry, either online or in hard paper form of sports memorabilia and works of art; Management and business consulting services in the field of auto racing; Management of event ticketing for others; Management of professional athletes namely auto racing drivers; Marketing and branding services, namely, performing consumer insight and brand strategy of company logos and placement of where to put these logos on auto racing cars, auto racing platforms, and through all media concerns; Marketing and consulting services in the field of promoting and tracking the goods, services, and brands of others through all public communication means, particularly specializing in the use of mobile, social, and print media to drive consumer interest, engagement and action using case studies and product placement sales of our auto racing sponsors, partners and suppliers products; Marketing consultation in the field of auto racing in helping our race teams gain sponsorship funding from corporate sponsors by putting both parties together to market the sponsor's product and/or services through the race team's car livery and race gear; Mediation and conclusion of commercial transactions for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Modeling services for advertising and sales promotion of female models to promote auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Negotiation and settlement of commercial transactions for third parties by working as an agent in finding suitable racing drivers for racing teams, acting as an agent in the sale of racing cars, parts and equipment between racing teams, leasing a racing circuit for a Championship race or testing days, acting as an agent for the negotiation and procurement of sponsorship funding and being responsible for all those contracts for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; New business venture development and formation consulting services for franchise auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits; Organization and conducting of product presentations for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Organization of fashion shows for commercial purposes; Organization of exhibitions for commercial and advertising purposes for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Organizing of business competitions of a Championships points race or karting race between competing sponsors and/or partners for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Personal management services for entertainers namely auto racing drivers and female models for marketing purposes; Personnel management consultation for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Preparation and realization of media and advertising plans and concepts for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Preparing and placing advertisements for others; Preparing audiovisual displays in the field of auto racing; Preparing promotional and merchandising material with print advertisements, brochures, flyers, flags, posters, pennants, key chains, branded apparel, hats and lanyards, beverage carriers, magazine and newspaper advertisements, race program advertisements for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Promoting and administering amateur athletic programs and activities for auto racing leagues, auto racing driver training and testing; Promoting commercial, trade, and other business relationships between Mexico and the United States and Canada and the United States and disseminating promotional information concerning commercial, trade, and other business relationships between such countries using auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Promoting public awareness of auto racing leagues for the benefit of the local, regional and national agencies by increasing tourism to drive an influx of business and municipal revenues to their communities; Promoting recreation and tourism throughout all of the North American continent using auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Promoting sports competitions and events namely auto races at racing circuits or traveling roadshow events of a racing car demonstrating driving stunts on city streets for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Promoting the economic development in the North American continent using auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with an awards program, a sports competition and sporting activities; Promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with sports leagues; Promoting the goods and services of others by distributing advertising materials through a variety of methods using television, radio, print, online mediums, word-of-mouth, direct marketing,; Promoting the interests of people involved and concerned with youth sports namely auto racing; Promoting, sponsoring and administering amateur athletic programs and activities namely auto racing; Providing a searchable online advertising website and informational guide featuring the goods and services of other vendors via the internet in the field of motorsports; Providing a web site that provides sports league management; Providing consulting services in the field of facilitating the planning, buying, and selling of media to promote auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Providing consumer information and related news in the field of motorsports; Providing marketing and promotion of special events utilizing staging equipment, lights, music, showgirls and a showcar for interior trade shows and exterior exhibitions namely a traveling roadshow with a racing car demonstrating driving stunts on city streets at motor racing events and at race weekend venues, for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Providing on-line registration services for athletes namely auto racing drivers; Providing public sector contract vehicle management for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Providing statistical information [for business and commercial purposes] for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Provision of information and advice to consumers regarding the selection of products and items to be purchased for sponsors and partners products to the general public namely the purchase or use any of our sponsor's product whether it being public consumables, food, drink, clothing, utilities, cars, any everyday product and/or services; Public relations; Publicity and sales promotion services for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Purchasing and procurement services, namely, procuring of contracts for others for the purchase of goods and labor contracting services for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Services with regard to product presentation to the public for sponsors and partners through marketing materials, acting as an agent for a famous racing driver sports hero to become a sponsor's product and/or services spokesman or ambassador; Social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions involving our auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Sponsorship search for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Strategic sourcing, namely, staffing in the field of engineering; Talent agencies for racing drivers and technical engineers; Talent recruiting services in the field of motorsports; Transportation logistics services, namely, arranging the transportation of goods for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers; Transportation management services, namely, planning and coordinating transportation of people for auto racing leagues, auto racing teams, auto racing drivers, auto racing circuits, sponsors, partners, and suppliers.

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-03-11

APPEARANCES

Mark Tosa	For the Registered Owner
Bayo Odutola	For the Requesting Party

AGENTS OF RECORD

No Agent Appointed	For the Registered Owner
OLLIP P.C.	For the Requesting Party