OPIC CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADEMARKS
Citation: 2021 TMOB 208 Date of Decision: 2021-09-21
IN THE MATTER OF A SECTION 45 PROCEEDING
88766 CANADA INC. Requesting Party and
THE THYMES, LLC Registered Owner TMA607,416 for GOLDLEAF Registration
INTRODUCTION
[1] This is a decision involving a summary expungement proceeding under section 45 of theTrademarks Act, RSC 1985, c T-13 (the Act) with respect to registration No. TMA607,416 forthe trademark GOLDLEAF (the Mark), currently owned byTheThymes, LLC.
[2] All references are to theAct as amended June 17, 2019 (theAct), unless otherwise noted.
[3] The Mark is registered for use in association with the following: aerosol roomdeodorizing/scenting sprays; candles; skin soap; hair and body shampoo; non-medicated bathpreparations,namely,liquidsoap,bathtablets,bathconditioner,gels,saltsandscrubs;body
creme; body powder; body oil; body lotion; sachets; perfume; and eau de toilette (the Goods).
[4] Forthereasonsthatfollow,Iconcludethattheregistrationoughttobemaintainedinpart.
THE PROCEEDINGS
[5] At the request of 88766 CANADA INC. (the Requesting Party), the Registrar ofTrademarks issuedanoticeundersection 45oftheActon June7,2019,toTheThymes,LLC,the registered owner of the Mark (the Owner).
[6] The notice required the Owner to show whether the trademark had been used in Canadain association with each of the Goods at any time within the three-year period immediatelypreceding the date of the notice and, if not, the date when it was last in use and the reason for theabsence of such use since that date. In this case, the relevant period for showing use is June 7,2016 to June 6, 2019 (the Relevant Period).
[7] Therelevantdefinitionofuseinthepresentcaseis setoutinsection4(1)oftheActasfollows:
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] Itiswellestablishedthatthepurposeandscope ofsection45oftheActis toprovideasimple, summary, and expeditious procedure for removing “deadwood” from the register. Assuch, 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] Intheabsenceofuseasdefinedabove,pursuanttosection45(3)oftheAct,atrademarkis liable to be expunged, unless the absence of use is due to special circumstances.
[10] Inresponse to theRegistrar’s notice,theOwnerfurnishedtheaffidavitofAnneWard,sworn on December 30, 2019, to which was attached Exhibits “A” to “D”.
[11] Only the Owner submitted written representations. No oral hearing was held.
THE EVIDENCE
[12] The Owner’s affiant, Anne Ward, is the Chief Executive Officer of the Owner and hasheld that position for more than seven years. Ms. Ward states that she provides overall leadershipfortheOwnerandeitherhaspersonalknowledgeofthematterssetoutinheraffidavitorelsehasobtained such knowledge from documents and records maintained by the Owner in its normal
course of business and to which she has access. [Ward Affidavit, para. 1]
[13] Ms.WardstatesthatduringtheRelevantPeriodtheMarkwasusedextensivelyand
continuously in Canada in association with all of the Goods with the exception of “body oil” and “sachets”. [Ward Affidavit, para. 3] As there has been no allegation of special circumstances excusing non use of the Mark, the registration will be amended accordingly.
[14] The normal course of trade for the Goods is described by Ms. Ward. The Goods aremanufacturedandpackagedbytheOwnerintheUnitedStates.TheGoodsarethenimportedbydistributorsinCanadawhointurnselltoendconsumersthroughlargeretailersandindependentspecialtystores. [WardAffidavit,para. 5]
[15] Ms.WardstatesthattheOwnersoldmorethan$500,000(CAD)oftheGoodsinCanadaduringthe RelevantPeriod. [WardAffidavit, para.6]
[16] She also states that the Goods sold were clearly marked with the GOLDLEAF Mark.[WardAffidavit, para. 7]
[17] Tosupporttheseallegations,Ms.Wardattachedtoheraffidavitthefollowingexhibits:
(a) Exhibit “B”: representative invoices documenting the sales of the Goods inCanada during the Relevant Period;
(b) Exhibit“C”:printoutsofscreenshotsoftheOwner’swebsitedisplayingtheGoods available to Canadians in Canada; and
(c) Exhibit“D”:copyoftheOwner’sSpring2017cataloguedepictingtheGoods. [WardAffidavit, paras. 8,9 and 10]
[18] Finally, Ms. Ward states that the depictions of the Goods contained in Exhibits “C” and“D”arerepresentativeoftheGoodssoldinCanadaduringtheRelevantPeriod.[WardAffidavit,para.11]
ANALYSIS AND REASONS FOR DECISION
Interpretation of the registration
[19] ThegoodsasdescribedintheWardaffidavitandexhibitsdonotcompletelymatchtheGoodsasdescribedin theregistration.However, itisa well-establishedprinciplethat when
interpreting a statement of goods or services in a section 45 proceeding, one is not to be “astutely meticulous when dealing with [the] language used” [see Aird & Berlis LLP v Levi Strauss & Co, 2006 FC 654 at para 17].
[20] Indeed, it has been held that a statement of goods should be granted a reasonableinterpretation[ConAgraFoods,IncvFetherstonhaugh&Co.2002FCT1257]andreasonableinferences may be drawn from the evidence provided [Eclipse International Fashions CanadaIncv Shapiro Cohen, 2005 FCA64].
[21] Applying a reasonable interpretation to both the registration and the evidence, I amprepared to draw the following inferences:
● the“barsoap”referencedintheinvoicesdatedOctober3,2017andApril25,2019 qualifies as the sale of “skin soap” as set out in the registration;
● the“handwash”referencedintheinvoicedatedJuly11,2019qualifiesasthesaleof “liquid soap” as set out in the registration;
● the “bubble bath” referenced in the invoices dated November 1, 2018, April 25,2019andJuly11,2019qualifiesasthesaleof“bathconditioner”assetoutintheregistration;
● the“handlotion”referencedintheinvoicesdatedNovember1,2018andJuly11,2019 qualifies as the sale of “body lotion” as set out in the registration;
● the sale of“body wash” qualifies as the sale of “hair and body shampoo” as setout in the registration;
● asa“foamingbathenvelope”isdepictedintheWardaffidavit,Exhibit“C”,Iinfer that there has been use of the Mark in Canada in association with “bathsalts” as set out in the registration; and
● asa“candle”isdepictedintheWardaffidavit,Exhibit“C”,Iinferthattherehasbeen use of the Mark in Canada in association with “candles” as set out in theregistration.
[22] However, the Ward affidavit and exhibits do not provide any evidence from which I mayconclude that the Mark was used in association with the following: bath tablets, gels and scrubs, bodypowder.
[23] The Requesting Party has submitted no representations. Based on the evidence filed by theOwner, as described above, I have concluded that use in Canada has been shown, and theregistration should be maintained, in respect of aerosol room deodorizing/scenting sprays;
candles; skin soap; hair and body shampoo; non-medicated bath preparations, namely, liquid
soap, salts and bath conditioner; body creme; body lotion; perfume; and eau de toilette. It will be amended to delete body oil, sachets, bath tablets, gels and scrubs, and body powder.
DISPOSITION
[24] Pursuanttotheauthoritydelegatedtomeundersection63(3)oftheAct,theregistrationwill be amended to delete the following goods:
● body oil, sachets, bath tablets, gels and scrubs and body powder
[25] The amended statement of goods shall now read:
● aerosol room deodorizing/scenting sprays; candles; skin soap; hair and body shampoo;non-medicated bath preparations, namely, liquid soap, bath conditioner, body creme;body lotion; perfume; and eau de toilette
Jean Carrière Member
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
Borden Ladner Gervais LLP For the Registered Owner
No Agent Appointed For the Requesting Party