Citation: 2021 TMOB 186

Date of Decision: 2021-08-23

IN THE MATTER OF A SECTION 45 PROCEEDING

	Ridout & Maybee LLP	Requesting Party
and
	Nau International, Inc.	Registered Owner
	TMA826,880 for NAU	Registration

Introduction

[1] This is a decision involving a summary expungement proceeding with respect to registration No. TMA826,880 for the trademark NAU (the Mark).

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

Goods

Non-collegiate luggage, handbags, backpacks, briefcases, duffel bags, purses, single strap packs, courier bags, all purpose carrying bags, tote bags, traveling bags, shoulder bags, clutch purses, all-purpose athletic bags, wallets, coin purses and cosmetic bags sold empty, billfolds, attaché cases, key cases, passport cases, business and credit card cases, technology cases namely computer carrying cases, carrying cases and covers for portable music players, MP3 players, cell phones, and personal digital assistants; non-collegiate tote bags, padded bags and other protective bags and covers for sporting goods and electronics namely, bags, cases and covers for cameras and photographic equipment, binoculars, video cameras, sunglasses and ski goggles; non-collegiate men’s, women’s and children’s apparel, namely, shirts, pants, shorts, dresses, skirts, sweaters, rashguards, tops, blouses, blazers, jackets, parkas, insulated jackets, insulated vests, rainwear, vests, coats, jeans, jumpsuits, capris, culottes, skorts, suits, anoraks, sleepwear, bras, foundation garments, underwear, hosiery, leotards, tights, swim wear, belts, hats.

Services

Non-collegiate retail store services via a global computer network, all featuring men’s, women’s and children’s clothing, luggage and carrying bags, and charitable services; accepting and administering monetary charitable contributions for non-collegiate purposes; non-collegiate philanthropic services concerning monetary donations; non-collegiate charitable fund-raising services; non-collegiate eleemosynary services, namely fundraising and profit sharing with other philanthropic and non-profit agencies and service providers.

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

The proceeding

[4] At the request of Ridout & Maybee 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 Nau International, Inc. (the Owner) on February 16, 2018.

[5] The notice required the Owner to show whether the Mark was 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.

[6] The relevant definitions of “use” 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] In this case, the relevant period for showing use is between February 16, 2015 and February 16, 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.

[8] In response to the Registrar’s notice, the Owner submitted the affidavit of Jung Joon Park, Vice President of the Owner, sworn on September 10, 2018.

[9] Both parties filed written representations and attended an oral hearing.

Analysis and reasons for decision

Use of the Mark in association with retail store services

[10] In his affidavit, Mr. Park states that, during the relevant period, the Owner offered its “non-collegiate retail store services via a global computer network, all featuring men’s, women’s and children’s clothing, luggage and carrying bags” in Canada. He further states that NAU clothing, carrying bags and cases, and accessory products were sold in Canada during the relevant period through its website, and that such website sales exceeded $23,000.

[11] In support, Mr. Park provides representative “pairs of invoices” (Exhibit 9), namely the invoice issued at the time of the website order and the invoice issued internally after the product was shipped to the customer. The exhibited invoice pairs were issued by the Owner to customers in Canada and are dated during the relevant period. I note that the invoiced goods are all men’s and women’s clothing items (identified with either the letter M or W), with the exception of one product described by the Owner as “luggage” and identified in the invoice as “Fluent Traveler – Dark Earth”.

[12] Mr. Park also provides printouts of archived webpages from the Owner’s website during the relevant period (Exhibit 10), which he indicates are representative of how it appeared during the relevant period. The website displays four tabs: MEN, WOMEN, ACCESSORIES, and DISCOVER NAU. The exhibited screenshots show the product categories for those tabs, such as Bags & Packs, Hats & Scarves, and Hard Goods for the Accessories tab, and Jackets, Hard Shells, Soft Shells, and Rain Jackets for the Men and Women tabs.

[13] In this regard, I note that the exhibited webpages nowhere reference clothing for children. In fact, aside from Mr. Park’s statement regarding the retail store services, there is nothing in the evidence to suggest that the Owner offers clothing for children. The clothing items depicted in the evidence and featured in the invoices correspond only to men’s and women’s apparel.

[14] In view of the above, I agree with the Requesting Party that the Owner has shown use of the Mark within the meaning of sections 4 and 45 of the Act in association with the retail store services asserted by Mr. Park, but only insofar as they relate to men and women’s clothing, luggage and carrying bags. Accordingly, the services “non-collegiate retail store services via a global computer network, all featuring men’s, women’s clothing, luggage and carrying bags” will be maintained.

[15] As there is no evidence of special circumstances before me which could excuse non-use of the Mark, the term “and children’s” will be deleted.

Use of the Mark in association with charitable and philanthropic services

[16] The Owner submits that the evidence provides facts from which a logical inference can be drawn that the Mark was used in association with all of the registered services, including the charitable and philanthropic-related services, namely:

· “non-collegiate retail store services via a global computer network, all featuring… and charitable services”,

· “accepting and administering monetary charitable contributions for non-collegiate purposes”,

· “non-collegiate philanthropic services concerning monetary donations”,

· “non‑collegiate charitable fund-raising services”, and

· “non-collegiate eleemosynary services, namely fundraising and profit sharing with other philanthropic and non-profit agencies and service providers”,

(collectively, the Philanthropic Services).

[17] In particular, the Owner points to exhibited “dealer books” which reference a Partners for Change program and argues that its “activities in respect of the … Partners for Change program constitute [the Philanthropic Services]”.

[18] The dealer books are identified by Mr. Park as Fall/Winter 2015, Spring/Summer 2016 and Fall/Winter 2018 (attached as Exhibits 4, 5 and 6 to Mr. Park’s affidavit, respectively) and are essentially catalogues presenting the Owner’s men’s and women’s clothing collections. According to Mr. Park, the Owner has “promoted its products to its [Canadian] distributor and wholesale customers through, inter alia, distribution of its dealer books”.

[19] In its written representations, the Owner identifies a total of five references to the Partners for Change program in the exhibited dealer books. For instance, a section on Sustainability of the Spring/Summer 2016 edition states: “In every aspect of our business model, the way we develop out fabrics, source our products, engage with our customers and support our Partners for Change, we choose the never-ending quest towards better.” The Fall/Winter 2018 edition explains that through this program the Owner donates 2% of its sales to organizations “working to create a better world for future generations” and identifies three such organizations. The 2018 edition also offers a product entitled “Nau Table Sign”, which is signage presenting information about the Partners for Change program together with the Mark, presumably to be displayed at a physical store location.

[20] I note that Mr. Park does not reference the Partners for Change program in his affidavit. In fact, Mr. Park provides no particulars regarding the Philanthropic Services, aside from his bare statement that “the Owner provides charitable services, including, fundraising and profit sharing with other philanthropic and non-profit agencies and service providers”. Importantly, Mr. Park’s statement regarding the Owner’s retail store services, discussed above, does not include the “and charitable services” element of the services as registered.

[21] As such, I agree with the Requesting Party that, at a minimum, the evidence is insufficient to conclude that the Mark was displayed in any performance of the Philanthropic Services.

[22] The remaining question is therefore whether the evidence shows that the Mark was at least displayed in the advertisement of such services. Although Mr. Park provides no statement in this regard, he does state that the exhibited dealer books were distributed to the Owner’s Canadian distributor and wholesale customers for promotional purposes. As such, to the extent that such dealer books constitute advertising, I am prepared to accept that it was directed to Canadians.

[23] That being said, I note that the Mark is displayed in the Exhibit 4 and 5 dealer books, though never on the same page as references to the Partners for Change program. In the Exhibit 6 Fall/Winter 2018 dealer book, the Mark is displayed on the same page as the presentation of the program, as well as on the Partners for Change table sign. However, it is not clear from the evidence that this dealer book was distributed before the end of the relevant period in February 2018 and Mr. Park provides no information in this regard.

[24] Considering the evidence as a whole, I am not satisfied that the Mark was displayed in the Owner’s advertisement of its Philanthropic Services during the relevant period, even if I were to accept that such services were available to be performed by the Owner. As there is no evidence of special circumstances before me which could excuse non-use of the Mark, these services will be deleted.

Use of the Mark in association with the registered goods

[25] In his affidavit, Mr. Park asserts that the Owner used the Mark in Canada during the relevant period in association with the following goods:

shirts, pants, shorts, dresses, skirts, sweaters, tops, blouses, blazers, jackets, parkas, insulated jackets, vests, insulated vests, rainwear, coats, jeans, anoraks, capris, culottes, underwear, tights, swimwear, belts, hats, wallets, billfolds, passport cases, business and credit card cases, technology cases namely computer carrying cases, carrying cases and covers for portable music players, MP3 players, cell phones, and personal digital assistants, non‑collegiate tote bags, tote bags, handbags, backpacks, duffel bags, purses, single strap packs, courier bags, all-purpose carrying bags, traveling bags, shoulder bags and coin purses,

(collectively, the Asserted Goods).

[26] Mr. Park states that the Owner (and its predecessor in title) has, since at least 2012, continuously sold clothing products, carrying bags and cases, and accessories under the Mark in Canada. Mr. Park explains that the Owner’s predecessor in title entered into a distribution agreement with Standard Apparel Company (Standard Apparel) to market and sell NAU products in Canada and that Standard Apparel marketed and sold such products to wholesale customers in Canada throughout the relevant period. He attests that, during the relevant period, the Owner’s cumulative sales figures for such goods were in excess of $800,000 in Canada.

[27] In support of his assertion, Mr. Park provides photographs “evidencing use of [the Mark] in connection with each of [the Asserted Goods]” which he attests “were sold in Canada during the relevant period” (Exhibit 7). The Mark is displayed on each of the goods depicted therein. However, as discussed below, some of the depicted goods are identified Mr. Park as correlating with multiple registered goods, in particular with respect to the luggage, bags and cases category of goods.

[28] Mr. Park also provides representative invoices issued by the Owner to customers in Canada, including Standard Apparel (Exhibit 8). Mr. Park asserts that these invoices evidence sales of the Asserted Goods in Canada during the relevant period and that the term “Legacy Item” on the invoices refers to “one or more of the [Asserted Goods]”. I note that certain invoices are in fact dated prior to the relevant period, including those evidencing sales of items identified as “Legacy Item”.

[29] Finally, Mr. Park attests that NAU products were also sold on third-party websites in Canada during the relevant period. Mr. Park provides screenshots of webpages from these websites (Exhibit 2), taken after the relevant period. The types of clothing items offered for sale on these third-party websites correlate with the Exhibit 8 invoices.

Clothing apparel

[30] As conceded by the Requesting Party, the Exhibit 8 invoices evidence the sale of the following goods: “shirts, pants, shorts, dresses, skirts, sweaters”, “tops, blouses, blazers, jackets, parkas, insulated jackets, insulated vests, rainwear” and “coats”.

[31] Although not conceded by the Requesting Party, I note that the exhibited invoices also evidence sales of a product identified as stretch tight. This product is described in the Exhibit 4 dealer book as a “go-anywhere, do-anything tight” and therefore most readily corresponds to the registered goods, “tights”. Similarly, the invoices reference a pullover, which – based on its appearance and description in the dealer book – most readily corresponds to the goods registered as “anoraks”.

[32] In view of the Exhibit 7 photographs showing how the Mark was displayed on various types of clothing apparel, I am therefore satisfied that the Owner has shown use of the Mark in association with all of the apparel items for which an invoice was provided, namely “shirts, pants, shorts, dresses, skirts, sweaters”, “tops, blouses, blazers, jackets, parkas, insulated jackets, insulated vests, rainwear”, “coats”, “anoraks” and “tights”, within the meaning of sections 4 and 45 of the Act.

[33] That being said, the invoiced “vests” all appear to be described more particularly as “down vests”, which I have accepted as corresponding to the registered goods “insulated vests”. While such goods would otherwise correspond to “vests” more generally, I note that where use in association with a specific good could potentially support two goods in a registration, the more specific good will be maintained over the more general [Sharp Kabushiki Kaisha v 88766 Canada Inc (1997), 72 CPR (3d) 195 (FCTD) at paras 14-16]. As such, insofar as the evidenced down vests correspond to the registered goods “insulated vests”, they cannot also support use of the Mark in association with the broader term “vests” in this case. As the Owner chose to list these goods separately in the registration, the implication is that the latter term refers to vests which are not insulated. I am unable to identify any vests in the evidence which are not insulated and which might therefore fall within the ambit of the more general registered good. I also note that the Owner’s written representations are silent in respect of invoiced goods which would correspond to “vests”. As there is no evidence of special circumstances before me which could excuse non-use of the Mark, “vests” will be deleted from the registration.

[34] Although the registered goods jeans, capris, and culottes do not appear in the exhibited invoices, they are included in the Asserted Goods identified by Mr. Park and depicted in Exhibit 7. Having regard to the representative nature of the invoices, I am prepared to accept at face value Mr. Park’s statement that the goods depicted in Exhibit 7 were sold in Canada during the relevant period. Indeed, the Requesting Party concedes use of the Mark with respect to such goods. Similarly, Exhibit 7 depicts other Asserted Goods, namely underwear, swim wear, belts and hats. As such, I am satisfied that the Owner has shown use of the Mark in association with “jeans”, “capris, culottes”, “underwear” and “swim wear, belts, hats” within the meaning of sections 4 and 45 of the Act.

[35] With respect to the remaining apparel-related goods, for which use has not been specifically shown, the Owner submits that it is possible to infer use of the Mark. The Owner relies on principles purportedly set out in Saks & Co v Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FCTD), among other cases, to support its argument that invoices are not required for each registered good and that “it is not strictly necessary for the purposes of section 45 to show use for every registered good in cases where the registration covers a long list of goods and the goods are logically and properly categorized”. It further argues that it has provided evidence relating to “most registered goods” and that the registered goods are logically and properly categorized into two categories: i) clothing apparel, and ii) luggage, bags and cases, such that use shown in association with certain goods from each of these categories is sufficient to infer that the Mark was used in association with all of the registered goods in each of the two categories.

[36] While I agree that there is no requirement that direct or documentary proof be furnished with respect to each and every good listed in a registration, it is well established that sufficient evidence must still be provided to permit the Registrar to form an opinion or logically infer use within the meaning of section 4 of the Act [see Guido Berlucchi & C Srl v Brouillette Kosie Prince, 2007 FC 245 at para 18].

[37] In this case, there is nothing in the evidence that would lead me to conclude that the evidenced use of the Mark extends to the remaining apparel-related goods: rashguards, jumpsuits, skorts, suits, sleepwear, bras, foundation garments, hosiery and leotards. These goods are not shown in the dealer books or elsewhere. Moreover, while Mr. Park makes statements with respect to “clothing products” generally, he makes no mention of any of these remaining goods in his affidavit. Importantly, the Asserted Goods identified by Mr. Park do not include these registered goods.

[38] Accordingly, I am not satisfied that the Owner has shown use of the Mark in association with “rashguards”, “jumpsuits”, “skorts, suits”, “sleepwear, bras, foundation garments”, and “hosiery, leotards” within the meaning of sections 4 and 45 of the Act. As there is no evidence of special circumstances before me, these goods will be deleted from the registration.

[39] Finally, as discussed above with respect to the registered retail store services, the evidence only relates to men’s and women’s apparel. As there is no evidence of special circumstances before me, the term “and children’s” will also be deleted from the statement of goods.

Luggage, bags and cases

[40] With the exception of one Exhibit 9 invoice for a product identified as a Fluent Traveler which the Owner submits corresponds to luggage, the Owner has provided no evidence showing transfers of luggage, bags or cases.

[41] Nevertheless, as previously noted, Mr. Park states that items depicted in Exhibit 7 were sold in Canada during the relevant period. He also identifies the depicted items with a title below each photograph:

· a backpack, titled “Backpacks”,

· a single-strapped bag, titled “Single Strap”,

· a courier bag, titled “Courier Bags”,

· two bags with handles, titled “All Purpose Carrying Bags”,

· bags with shoulder straps, “Shoulder Bags”, and

· a grey pouch with a zippered closure on the front, titled “Coin Purses”.

[42] The above-listed items are included in the Asserted Goods identified by Mr. Park. Moreover, I note that one of the webpages included in Exhibit 10 displays a promotional photograph of a man carrying a shoulder bag and the Exhibit 10 website screenshots show a tab for Bags & Packs.

[43] Having regard to the evidence as a whole, I am satisfied that the Owner has demonstrated use of the Mark in association with “Non-collegiate luggage”, “backpacks”, “single strap packs, courier bags, all purpose carrying bags”, “shoulder bags” and “coin purses” within the meaning of sections 4 and 45 of the Act.

[44] Other bags and cases are also depicted in Exhibit 7 photographs. However, the titles associated with those photographs attempt to correlate one item with multiple registered goods. For instance, the photograph titled “Handbags and purses” depicts a single item which is a zippered pouch, similar though not identical to the photographed coin purse. In this regard, it is well established that use evidenced with respect to one specific good cannot serve to maintain multiple goods in a registration. Having distinguished particular goods in the registration, the Owner was obligated to furnish evidence with respect to each of the registered goods [per John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].

[45] As such, while I am prepared to accept Mr. Park’s statement that items depicted in the Exhibit 7 photographs were sold, each item must be correlated to a single registered good. As this was not done – and in the absence of representations of assistance on this point – in the case of the aforementioned zippered pouch, given its resemblance to a coin purse, I find that this item most readily corresponds with the registered goods “purses”.

[46] Similarly, the photograph titled “Wallets and Billfolds” depicts a single item which is pocket-sized flat case containing credit cards, coins and bank notes. Based on its appearance, I find that this item most readily corresponds with the registered goods “wallets”.

[47] Exhibit 7 also includes a page showing multiple photographs of what appears to be the same type of duffel bag. Given the title of this page, namely “Duffle bags and traveling bags”, I find that this item most readily corresponds with the registered goods “duffel bags”.

[48] As for the registered “technology cases” goods, Exhibit 7 includes the photographs of a protective felt case containing a tablet, a passport and cards, titled “Passport, cases, business and credit card cases”, as well as a mesh case containing earphones and a charging cable, titled “Technology cases, including computer carrying cases, carrying cases and covers for portable music players, MP3 players, cellphones and personal digital assistants”. I am satisfied that these items correspond to the registered goods “technology cases namely computer carrying cases, carrying cases and covers for portable music players, MP3 players, cell phones, and personal digital assistants”.

[49] Lastly, I am also satisfied that the two depicted tote bags, one of which has a buckle, corresponds to the registered goods identified in the title of that page, namely “tote bags” and “non-collegiate tote bags”.

[50] In view of the above, I am satisfied that the Owner has shown use of the Mark in association with certain other types of bags and cases depicted in Exhibit 7, namely “purses”, “wallets”, “duffel bags”, “technology cases namely computer carrying cases, carrying cases and covers for portable music players, MP3 players, cell phones, and personal digital assistants”, “tote bags” and “non-collegiate tote bags” within the meaning of sections 4 and 45 of the Act.

[51] Otherwise, although Mr. Park’s statement of use with respect to the Asserted Goods includes handbags, traveling bags, billfolds, passport cases, business and credit card cases, the only supporting evidence he provides in relation to those goods are the Exhibit 7 photographs which each depict one item but are improperly titled as correlating with multiple registered goods. I have found that these photographs more readily correspond with purses, wallets, duffel bags and technology cases. I am therefore not prepared to accept Mr. Park’s general statement regarding Exhibit 7 as evidence of sales of the other goods identified in the titles, namely “handbags”, “traveling bags”, “billfolds”, “passport cases, business and credit card cases”. As such, I am not satisfied that the Owner has demonstrated use of the Mark with respect to such goods and, as there is no evidence of special circumstances before me, the registration will be amended accordingly.

[52] This leaves the remaining goods, namely “briefcases”, “clutch purses, all-purpose athletic bags”, “and cosmetic bags sold empty”, “attaché cases, key cases” and “padded bags and other protective bags and covers for sporting goods and electronics namely, bags, cases and covers for cameras and photographic equipment, binoculars, video cameras, sunglasses and ski goggles”. These goods are not part of the Asserted Goods listed by Mr. Park, are not specifically referenced by him, and are nowhere found in the supporting evidence. As such, I am not satisfied that the Owner has shown use of the Mark in association with these goods within the meaning of sections 4 and 45 of the Act.

[53] As there is no evidence of special circumstances before me, these remaining goods will also be deleted from the registration.

Disposition

[54] In view of the foregoing, 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 the goods and services shown in strikethrough font in Schedule A.

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

Non-collegiate luggage, backpacks, duffel bags, purses, single strap packs, courier bags, all purpose carrying bags, tote bags, shoulder bags, wallets, coin purses, technology cases namely computer carrying cases, carrying cases and covers for portable music players, MP3 players, cell phones, and personal digital assistants; non-collegiate tote bags; non-collegiate men’s, women’s apparel, namely, shirts, pants, shorts, dresses, skirts, sweaters, tops, blouses, blazers, jackets, parkas, insulated jackets, insulated vests, rainwear, coats, jeans, capris, culottes, anoraks, underwear, tights, swim wear, belts, hats.

[56] The statement of services will read as follows:

Non-collegiate retail store services via a global computer network, all featuring men’s, women’s clothing, luggage and carrying bags.

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 June 15, 2021

APPEARANCES

David Takagawa	For the Registered Owner
Meika Ellis	For the Requesting Party

AGENTS OF RECORD

Oyen Wiggs Green & Mutala LLP	For the Registered Owner
Ridout & Maybee LLP	For the Requesting Party

 

 

Schedule A

Goods

(1) Non-collegiate luggage, handbags, backpacks, briefcases, duffel bags, purses, single strap packs, courier bags, all purpose carrying bags, tote bags, traveling bags, shoulder bags, clutch purses, all-purpose athletic bags, wallets, coin purses and cosmetic bags sold empty, billfolds, attaché cases, key cases, passport cases, business and credit card cases, technology cases namely computer carrying cases, carrying cases and covers for portable music players, MP3 players, cell phones, and personal digital assistants; non-collegiate tote bags, padded bags and other protective bags and covers for sporting goods and electronics namely, bags, cases and covers for cameras and photographic equipment, binoculars, video cameras, sunglasses and ski goggles; non-collegiate men’s, women’s and children’s apparel, namely, shirts, pants, shorts, dresses, skirts, sweaters, rashguards, tops, blouses, blazers, jackets, parkas, insulated jackets, insulated vests, rainwear, vests, coats, jeans, jumpsuits, capris, culottes, skorts, suits, anoraks, sleepwear, bras, foundation garments, underwear, hosiery, leotards, tights, swim wear, belts, hats.

Services

(1) Non-collegiate retail store services via a global computer network, all featuring men’s, women’s and children’s clothing, luggage and carrying bags, and charitable services; accepting and administering monetary charitable contributions for non-collegiate purposes; non-collegiate philanthropic services concerning monetary donations; non-collegiate charitable fund-raising services; non-collegiate eleemosynary services, namely fundraising and profit sharing with other philanthropic and non-profit agencies and service providers.