Citation: 2021 TMOB 142

Date of Decision: 2021-07-04

IN THE MATTER OF A SECTION 45 PROCEEDING

	Fasken Martineau DuMoulin LLP	Requesting Party
and
	Pharma Cosmetics Laboratories Ltd.	Registered Owner
	TMA545,065 for NEOVA	Registration

Introduction

[1] This is a decision involving a summary expungement proceeding with respect to registration No. TMA545,065 for the trademark NEOVA (the Mark).

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

(1) Medicated skin care preparations in the form of moisturizers, creams, lotions, solutions, sprays, ointments and gels (the Goods).

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

The proceeding

[4] At the request of Fasken Martineau DuMoulin LLP (the Requesting Party), the Registrar of Trademarks issued a notice pursuant to section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) to Pharma Cosmetics Laboratories Ltd. (the Owner) on June 12, 2018.

[5] The notice required the Owner to show whether the Mark was used in Canada in association with each of 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.

[6] In this case, the relevant period for showing use is between June 12, 2015 and June 12, 2018. In the absence of use during this period, pursuant to section 45(3) of the Act, the Mark is liable to be expunged, unless the absence of use is excused by special circumstances.

[7] In response to the Registrar’s notice, the Owner submitted the affidavit of Amir Dekel, CEO of the Owner, sworn on August 30, 2018.

[8] Both parties filed written representations. Only the Requesting Party attended an oral hearing.

Summary of the Owner’s evidence

[9] The Owner is an Israel-based company providing skin and beauty care products to therapists, dermatologists, beauty salons, spas and individuals, which are marketed by the Owner’s distributors around the globe. During the relevant period, these products were sold in Canada through BeautyNext Group, a distributor located in Toronto.

[10] The approximate sales figures for “NEOVA skin care preparations in Canada … would be in the range of $10,000 USD - to $15,000 USD per year during the relevant period”.

[11] The Mark was acquired by the Owner in September 2016 through the current Owner’s acquisition of PhotoMedex, Inc., the Mark’s previous owner.

[12] Finally, according the Mr. Dekel, the “NEOVA Brand includes cleansers, serums, moisturizers, exfoliants, eye care, UV protection, facial masks, body care, post-procedure, professional treatments and kits, all consisting of medicated skin preparations”. The Mark always appears on these products or their packaging. In particular, the Mark was displayed on the Goods sold in Canada during the relevant period.

[13] In support of his affidavit, Mr. Dekel attaches the following exhibits:

· Exhibit A, consisting of a copy of the registration.

· Exhibit B, consisting of excerpts from the Owner’s website located at www.neova.com, showing examples of the Owner’s different product lines, including the lines Mr. Dekel refers to as “Tri Comin Clinical” and “NEOVA”. There is no evidence that sales were ever made through this website.

· Exhibit C, consisting of a 2018 catalog of the “NEOVA portfolio”. I note that this catalogue refers to an entity identified as Pharma Cosmetics, Inc. with an address in Oradell, New Jersey. This exhibit shows a number of product containers bearing the Mark including cleansers, moisturizers, lotions, creams and serums.

· Exhibit D, consisting of photographs of the packaging for three skincare products bearing the Mark. The packaging identifies the products as “Cu₃ Post-Laser Lotion, 4.0 fl. oz.”, “Maximum Body Repair, 8.0 fl. oz.” and “Cu₃ Intensive Tissue Repair Creme, 2.0 fl. oz.”. According to Mr. Dekel, this product packaging is representative of the “NEOVA skincare products” sold in Canada.

· Exhibit E, consisting of a “site analytics report” for the Owner’s website www.neova.com indicating the location of the website’s users between January 1, 2017 and August 14, 2018, including 2060 users in Canada.

· Exhibit F, consisting of representative invoices for “sales occurring in Canada” from PhotoMedex, Inc. (dated July 5, 2016 and October 13, 2016) and from Pharma Cosmetics, Inc. (dated March 15, 2017 and October 31, 2017) to BeautyNext Group. The four invoices are each accompanied by a transaction receipt, identifying the merchant as Pharma Cosmetics Inc. and showing credit card payment information for each sale. The invoices will be discussed in greater detail in the analysis.

Preliminary remarks regarding compliance with labelling laws

[14] The Requesting Party submits that the Owner’s evidenced products were not destined for sale in Canada because their packaging did not comply with the Canadian regulatory framework requiring that information appearing on products be shown in both French and English.

[15] In my view, it would be inappropriate to expunge the registration on the basis that this alleged impropriety raises doubt as to whether the goods were sold in Canada. The Board has held that compliance with packaging regulations such as the Consumer Packaging and Labeling Act is not the sort of issue that should be addressed in a section 45 proceeding [see Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)] and should not generally be a basis for questioning an affiant’s credibility [see Molson Canada v Kaiserdom-Privatbrauverei Bamberg Wörner KG (2005), 43 CPR (4th) 313 (TMOB) for a similar approach].

Analysis and reasons for decision

[16] The relevant definition of “use” in association with goods 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.

[17] In the present case, the Owner has provided evidence of transfers in the form of four representative invoices to its distributor. The Requesting Party raises a number of issues with respect to the invoices. These will be addressed in turn below.

Are the invoices issued by the Owner?

[18] The Requesting Party argues that the invoices are ambiguous and fail to show use by the Owner, because:

· the Owner’s name, as registered, appears nowhere in the invoices or transaction receipts;

· the name of the company appearing on the 2016 invoices, namely PhotoMedex, Inc., does not match the merchant name appearing on the associated transaction receipts; and

· one of the 2016 invoices is dated after the assignment of the Mark to the Owner, but was issued by the previous owner, PhotoMedex, Inc..

[19] First, while the name “Pharma Cosmetics Inc.” appears on some of the exhibited invoices, Mr. Dekel describes these invoices as invoices “from PCL to BeautyNext Group” and defines PCL as the Owner. I am therefore prepared to accept that these invoices were issued by the Owner [see Oyen Wiggs Green & Mutala LLP v Atari Interactive Inc, 2018 TMOB 79 at para 25 for the well-established principle that an affiant’s statements are to be accepted at face value and must be accorded substantial credibility in a section 45 proceeding]. I also note that there is no requirement to identify a trademark owner on invoices or otherwise in association with its mark [see Novopharm Ltd v Monsanto Canada Inc (1998), 80 CPR (3d) 287 (TMOB); and Gowling Lafleur Henderson LLP v Classical Remedia Ltd, 2008 CarswellNat 4604 (TMOB)].

[20] Second, the fact that invoices issued by PhotoMedex, Inc. are accompanied by transaction receipts which appear to identify the merchant as Pharma Cosmetics Inc., does not render these invoices ambiguous. In fact, the receipts appear to be copies of internal records, retrieved and printed for the purpose of preparing evidence in the context of this proceeding. Indeed, the date stamp on each receipt, namely June 21, 2018, postdates the notice and corresponds to the “print date” indicated on each invoice. I therefore find it reasonable that the merchant be identified on these receipts by its name at the time the records were retrieved, rather than when the invoices were issued.

[21] Third, with respect to the invoice being issued by the previous owner of the Mark after its assignment to the Owner, I note that it is possible that the Owner may simply not have amended its forms immediately after the assignment [for a similar conclusion, see Marks & Clerk v Coppley Apparel Group Ltd (2003), 27 CPR (4th) 347 (TMOB) at para 11]. In any event, the sale evidenced by this invoice relates to goods which were also sold by the previous owner, PhotoMedex, Inc., before the assignment, as shown by the invoice dated July 5, 2016.

Did the evidenced transfers occur in Canada?

[22] The Requesting Party submits that there is no evidence showing that the invoiced goods were ever received in Canada, and that the invoices contain indications that the goods were in reality only made available to purchasers at a location in the United States. For instance, the invoices are in US dollars. In addition, they provide details regarding shipment, namely that goods are to be shipped using the customer’s FedEx account and indicate that the goods are to be collected at an address in Holstville, New York. Lastly, some of the invoices specify the particular incoterm applicable to the transaction (EXW) which, according to the Requesting Party, is consistent with the seller making the goods available at its location and the purchaser being responsible for shipping the goods.

[23] In other words, the Requesting Party is asking me to find that any transfer of property or possession of the invoiced goods occurred in the United States, rather than in Canada. I am not prepared to do so. Rather, based on a fair reading of Mr. Dekel’s affidavit as a whole, I find that the transfer of goods occurring in New York was merely a step in the Owner’s normal chain of distribution, leading to the delivery of the invoiced goods to the distributor, and ultimately to customers, in Canada. I reach this conclusion based on the following:

· Mr. Dekel states that during the relevant period, the Owner sold its products in Canada through its distributor BeautyNext Group, and that the Owner would “ship the orders to the Canadian distributor for distribution to the customer is [sic] Canada”,

· Mr. Dekel states that the invoices are “representative samples of paid invoices for sales occurring in Canada during the Relevant Period”, and

· each of the invoices identifies the recipient of the goods as the Owner’s distributor BeautyNext Group, with a shipping address in Toronto.

[24] In coming to that conclusion, I am also mindful of the Federal Court’s interpretation of section 4 of the Act in Manhattan Industries Inc v Princeton Manufacturing Ltd (1971), 4 CPR (2d) 6 (FCTD), where the word “possession” was given its ordinary meaning. In particular, the Court held that in the context of section 4, “possession” means actual, physical possession and does not include constructive possession. In simpler terms, for the purposes of summary expungement proceedings, transfer of possession occurs when and where goods are actually received by their purchasers. While Manhattan Industries dealt with a different incoterm, in my view, the same reasoning applies to the case before me.

Has the Owner used the Mark in association with all the Goods?

[25] Neither party has submitted arguments regarding the specific goods referenced in the invoices provided by the Owner. Nevertheless, the exhibited invoices evidence sales of “cremes” and “lotions”. In the invoices, these products are associated with the part type Neova Cu3.

[26] The photographs provided as Exhibit D show the Mark on product packaging for such goods. However, as the Requesting Party correctly points out, Mr. Dekel does not specify that the products photographed in Exhibit D are representative of those sold during the relevant period. In this regard, it is well-established that the evidence as a whole must be considered [Kvas Miller Everitt v Compute (Bridgend) Ltd (2005), 47 CPR (4th) 209 (TMOB)] and reasonable inferences can be made from the evidence provided [Eclipse International Fashions Canada Inc v Shapiro Cohen (2005), 48 CPR (4th) 223 (FCA)]. In this case, the undated Exhibit D must be understood together with Mr. Dekel’s statement that the Mark “always appears” on NEOVA skincare products. He also later adds that the Mark was displayed on Goods during the relevant period and provides a catalogue dated 2018 showing containers of the NEOVA product line bearing the Mark in a manner similar to that shown in Exhibit D. Considering the evidence as a whole, I am prepared to infer that the Mark appeared on this product line during the relevant period.

[27] As such, I am satisfied that the Owner has demonstrated use of the Mark with the meaning of sections 4 and 45 in association with “creams” and “lotions”.

[28] The only other goods referenced in the invoices do not appear to be skin care products. These products are identified as “Tricomin revitalizing shampoo”, “Tricomin Res. Cond.”, “Tricomin restructuring conditioner”, “Tricomin densifying shampoo”, “Tricomin reinforcing conditioner”, “Tricomin follicle energy spray”, “Tricomin spray” and “Iamin At-Home Care Kit (Spray/Cond/Shampoo)”. Mr. Dekel describes those goods as “shampoos”, “conditioner”, “sprays” and “kit (spray/conditioner/shampoo)”. I note that unlike the cremes and lotions which are both associated with the part type Neova Cu3, the invoiced shampoos, conditioners and sprays are associated with either the part type Neova Tricomin or Neova Iamin.

[29] Mr. Dekel does not provide information explaining the Tricomin or Iamin product lines. Nonetheless, it is worth noting that one of the Exhibit B webpages explains that “TRICOMIN Clinical is made by NEOVA SmartSkincare” and that this “range includes hair care products… to address the signs of thinning hair”. Further, Mr. Dekel does not state that the invoiced Iamin “Kit (Spray/Cond/Shampoo)”, Tricomin “follicle energy spray” and Tricomin “spray” are skin care products, nor can I find evidence suggesting as such. Instead, these goods appear related to hair care products, namely shampoos and conditioners. Consequently, and without evidence or representations on this point, I am not prepared to infer that the sprays referenced in the invoices constitute “medicated skin care preparations”.

[30] As a result, the Owner has only provided direct evidence showing sales of creams and lotions. While direct evidence of sales of all the registered Goods is not required, and an overabundance of evidence is not necessary in section 45 proceedings, a trademark owner must nevertheless “provide facts from which the Registrar can form an opinion or can logically infer use within the meaning of section 4” [Guido Berlucchi & C Srl v Brouillette Kosie Prince, 2007 FC 245 at para 18] in association with all of the registered goods [Uvex Toko Canada Ltd v Performance Apparel Corp, 2004 FC 448; and John Labatt Ltd v Rainier Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)].

[31] Given the limited number of registered goods in the present case, providing factual particulars in respect of each registered good would not have been evidentiary overkill. Moreover, I find that Mr. Dekel’s general assertion that the “[Goods]… were sold in Canada throughout the Relevant Period” and the agglomerated annual sales figures for all “NEOVA skin care preparations” are not sufficient to form an opinion or logically infer use in association with all of the Goods.

[32] Consequently, I am not satisfied that the Owner has shown use of the Mark in association with “moisturizers” and “solutions, sprays, ointments and gels” within the meaning of sections 4 and 45 of the Act. As there is no evidence of special circumstances before me which would excuse non-use of the Mark, these goods will be deleted.

Disposition

[33] In view of the foregoing, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended to delete the following goods: “moisturizers” and “solutions, sprays, ointments and gels” in compliance with the provisions of section 45 of the Act.

[34] The statement of goods will read as follows:

(1) Medicated skin care preparations in the form of creams and lotions.

Eve Heafey

Hearing Officer

Trademarks Opposition Board

Canadian Intellectual Property Office

 

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE May 18, 2021

APPEARANCES

No one appearing	For the Registered Owner
Jane Jiaoyu Wu and Marek Nitoslawski	For the Requesting Party

AGENTS OF RECORD

Borden Ladner Gervais LLP	For the Registered Owner
Fasken Martineau DuMoulin LLP	For the Requesting Party