Citation: 2021 TMOB 132

Date of Decision: 2021-06-25

IN THE MATTER OF A SECTION 45 PROCEEDING

	BCF LLP	Requesting Party
and
	Robertson Inc.	Registered Owner
	TMA559,173 for WOOD LOK	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. TMA559,173 for the trademark WOOD LOK (the Mark), currently owned by Robertson Inc. (the Owner).

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

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

Fasteners, namely screws, bolts, nuts and washers (the Goods).

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

The Proceedings

[5] At the request of BCF LLP (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on May 29, 2019 to the Owner of the Mark.

[6] The notice required the Owner to show whether the trademark has been 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. In this case, the relevant period for showing use is May 29, 2016 to May 29, 2019 (the Relevant Period).

[7] The relevant definition of use in the present 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.

[8] It is well established that 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. As such, the evidentiary threshold that the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448 at para 68] and “evidentiary overkill” is not required [see Union Electric Supply Co v Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD) at para 3]. Nevertheless, sufficient facts must still be provided to allow the Registrar to conclude that the mark was used in association with each of the goods.

[9] In response to the Registrar’s notice, the Owner furnished the affidavit of Jeffery M. Bent sworn on August 23, 2019 to which were attached Exhibits A, B and C.

[10] Only the Owner submitted written representations and no hearing was held.

The Evidence

[11] Mr. Bent currently holds the position of President of the Owner and has been associated with the company for more than 23 years. Mr. Bent explains that the Owner has been in the fastener business for over 100 years. In 1908, the Owner began to manufacture screws in Milton Ontario and was granted a patent for the revolutionary screw head in 1909.

[12] Mr. Bent states that the Owner has sold fasteners, namely screws, bolts, nuts and washers in association with the Mark in both Canada and the USA continuously since 2002 [para 5] and that the Mark appeared on the Goods’ labels and containers as well as on invoices during the Relevant Period [para 6 and 9].

[13] In support, Mr. Bent attaches the following exhibits to his affidavit:

· Exhibit A: Copies of two sample labels for “round washers” and “flat 4 lug” displaying “WOODLOK”, and a photograph of a container filled with screws with a label identifying the product as “flat” displaying “WOODLOK”.

· Exhibit B: Information sheet displaying “WOODLOK” and showing an image of a screw. The accompanying text describes the advantages of the product and states “available in flat and round washer.”

· Exhibit C: Copies of 6 invoices displaying ”WOODLOK” alongside each product description (redacted to remove sensitive information), issued by the Owner during the Relevant Period showing sales in Canada of multiple units of several different types, shapes and sizes of “flat 4 lugs” and “round washers” along with other invoices outside the Relevant Period.

Analysis and Reasons for Decision

Deviation from the Mark as registered

[14] Throughout the Owner’s exhibits, the variation “WOODLOK” appears instead of “WOOD LOK”. While comparing the Mark to the variation, the only difference is that the words WOOD and LOK are not separated by a space. I conclude the Mark did not lose its identity and remains recognizable [Canada (Registrar of Trade Marks) v Cie internationale pour l’informatique CII Honeywell Bull SA (1985), 4 CPR (3d) 523 (FCA)].

Use of the Mark

[15] The information sheet in Exhibit B, shows the image of a screw with adjacent text stating that the product is available in both flat and round washer and the invoices from the Relevant Period attached in Exhibit C only include items listed as “round washers” and as “flat 4 log” accompanied by the Mark. In addition, the sample labels and container picture shown in Exhibit A refer to products identified as “flat”, “flat 4 lug” and “round washer.” Based on the above, I conclude that all these terms are used to describe the shape of various types of screws.

[16] Although outside the Relevant Period, I note that none of the other invoices attached in Exhibit C listed bolts or nuts as items sold by the Owner. I also note that in his affidavit, Mr. Bent generally uses the words screws and fasteners to describe his Goods and only use the words bolts, nuts and washers once in a broad statement in paragraph 5.

[17] In view of the foregoing, I am only satisfied that the Owner has shown use of the Mark in association with fasteners, namely screws, within the meaning of sections 4 and 45 of the Act. As the Owner has not provided evidence of special circumstances that would excuse the non-use of the Mark in association with bolts, nuts and washers, I conclude that these goods ought to be deleted from the registration.

Disposition

[18] 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 amended to delete “bolts, nuts and washers,”.

[19] Accordingly, the registration will be maintained in part and it now reads as follow:

Fasteners, namely screws.

 

Martin Béliveau

Chairperson

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE No Hearing Held

AGENTS OF RECORD

Osler, Hoskin & Harcourt LLP	For the Registered Owner
BCF S.E.N.C.R.L./BCF LLP	For the Requesting Party