Citation: 2021 TMOB 139

Date of Decision: 2021-06-30

IN THE MATTER OF A SECTION 45 PROCEEDING

	Norton Rose Fulbright Canada LLP/S.E.N.C.R.L.,s.r.l.	Requesting Party
and
	Royal Board Shop Inc.	Registered Owner
	TMA783,479 for ROYAL BOARD SHOP - LOGO	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. TMA783,479, owned by Royal Board Shop Inc. (the Owner), for the trademark ROYAL BOARD SHOP - LOGO (the Mark), shown below:

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

The Proceeding

[3] At the request of Norton Rose Fulbright Canada LLP/S.E.N.C.R.L.,s.r.l. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on June 14, 2018, to the Owner.

[4] The notice required the Registrant to show whether the Mark had been used in Canada in association with each of the goods and services 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 June 14, 2015, to June 14, 2018.

[5] The Mark is registered for use in association with the following goods and services:

GOODS

(1) Sports equipment, namely, skateboards, snowboards and surfboards; Skateboard, snowboard and surfboard components, namely, decks, wheels, decals, paints, bindings and fins; Skateboard, snowboard and surfboard care preparations, namely, waxes, varnishes, stains, polishes, paints and sandpapers for resurfacing.

(2) Clothing, namely, sport clothing for skateboarding, snowboarding and surfing, casual, children's, swimwear, ski-wear and outdoor winter; Footwear, namely, skate shoes, sandals, snowboard boots, swim shoes, casual and children's; Headwear, namely, protective helmets, namely snowboard, skateboard, longboard and surf helmets; hats, toques and caps.

(3) Sporting accessories, namely, ski and swim goggles, snorkels, flippers and sunglasses; Fashion accessories, namely, jewellery, wallets, watches, sports bags and gloves.

(4) Printed instructional and educational materials, namely, handbooks, books, workbooks, magazines, newsletters, bulletins, brochures, pamphlets, reports and manuals.

(5) Printed matter, namely, posters, signs, calendars, postcards and directories; Stationery, namely, letterhead, note pads, labels, business cards, binders and folders.

(6) Promotional items, namely, hats, stickers, bumper stickers, mouse pads, key chains, novelty flags, banners, balloons, novelty buttons, greeting cards, note cards, writing pencils, pens, coffee mugs and fridge magnets.

SERVICES

(1) Wholesale, retail and online sale of sports equipment, namely, skateboards, snowboards and surfboards, skateboard, snowboard and surfboard components, namely, decks, wheels, decals, paints, bindings and fins, skateboard, snowboard and surfboard care preparations, namely, waxes, varnishes, stains, polishes, paints and sandpapers for resurfacing, clothing, namely, sport clothing for skateboarding, snowboarding and surfing, casual, children's, swimwear, ski-wear and outdoor winter, footwear, namely, skate shoes, sandals, snowboard boots, swim shoes, casual and children's, headwear, namely, protective helmets, hats, toques and caps, sporting accessories, namely, ski and swim goggles, snorkels, flippers and sunglasses and fashion accessories, namely, jewellery, wallets, watches, sports bags and gloves.

(2) Operating a website providing information in the field of sports, namely, skateboarding, snowboarding and surfing, and sporting equipment.

(3) Educational services, namely, classes and training sessions in the field of sports, namely, skateboarding, snowboarding and surfing and skateboard, snowboard and surfboard care.

[6] The relevant definitions of use in the present case are 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.

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 bare statements that a trademark is in 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 goods and services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].

[8] In response to the Registrar’s notice, the Registrant furnished the statutory declaration of Ryan Robertson, President and CEO of the Owner, declared on August 14, 2018. Only the Requesting Party submitted written representations and was represented at an oral hearing.

The Evidence

[9] The statutory declaration is brief, consisting of the following substantive paragraphs:

2. Royal Board Shop has been and continues to be an active retail business both online and on location at 814 Edmonton Trail N.E. Calgary, Alberta.

3. Royal Board Shop continues to use the trade-marked logo for all goods and services identified in the original trade-mark application.

4. As evidence of use of the trade-marked logo I would like to refer you to our active retail website: royalboardshop.com in which you will find the trade-marked logo used in reference to each of the goods and services specified in the registration.

5. As evidence of use of the trade-marked logo I have attached to my declaration as Exhibit “A” true copies of photographs of examples of recent use of the trade-marked logo in reference to specific goods and services specified in the registration.

[10] Exhibit A includes three undated images: a photograph of a storefront displaying the Mark, which is identified as the location referenced in paragraph 2 of the declaration; a website screenshot from www.royalboardshop.com displaying the logo, subheadings for “E-SKATES”, “LONGBOARDS”, “SKATEBOARDS”, “PENNYBOARDS”, “SNOWBOARDS”, and “SNOWMOBILES” along with a reference to Canadian dollars; and photos of a shirt, cap, and skateboard displaying the Mark.

Reasons for Decision

[11] As a preliminary matter, I note that pursuant to sections 45(1) and (2) of the Act, I cannot consider evidence beyond what is contained in or attached to the Owner’s statutory declaration. As such, despite Mr. Robertson’s invitation for the Registrar to visit the Owner’s website, I cannot consider the contents of the website as evidence in this proceeding beyond the screenshot attached as Exhibit A.

[12] As noted by the Requesting Party, Mr. Robertson’s declaration makes no mention of any transfers of the registered goods, or performance or advertisement of any of the registered services, within the relevant period or otherwise. While Mr. Robertson states that “continues to use the trade-marked logo for all goods and services”, this statement does not refer to the relevant period, and in any event, mere statements that a trademark has been in use are insufficient; a trademark owner must provide evidence demonstrating that the trademark has been used in association with each of the registered goods and services during the relevant period. Such evidence will often be in the form of invoices, sales reports, or clear sworn statements regarding volumes of sales, dollar value of sales, or equivalent factual particulars.

[13] With respect to the images attached as Exhibit A, I note that the photographs and website screenshot are undated and Mr. Robertson does not confirm that they are representative of how the Mark was displayed during the relevant period. Instead, he states only that they are examples of “recent use”; however, without further information, it would be speculative for me to conclude that such “recent use” includes the relevant period. Similarly, while Mr. Robertson states that the website is “active”; there is nothing in evidence confirming that the website was active during the relevant period. Finally, there is no evidence that the shirt, cap, skateboard, or items listed on the website were transferred in the normal course of trade during the relevant period. Accordingly, the Owner has not provided evidence demonstrating that any of the registered goods were transferred in the normal course of trade, or that any of the services were performed or advertised, during the relevant period.

Disposition

[14] As such, I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered goods or services within the meaning of sections 4 and 45 of the Act. Further, Mr. Robertson has referred to no special circumstances excusing non-use. Accordingly, 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.

G.M. Melchin

Hearing Officer

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-06-17

APPEARANCES

No one appearing	For the Registered Owner
Mathew Brechtel	For the Requesting Party

AGENTS OF RECORD

No Agent Appointed	For the Registered Owner
Norton Rose Fulbright Canada LLP/S.E.N.C.R.L.,s.r.l.	For the Requesting Party