OPIC CIPO
LE REGISTRAIRE DES MARQUES DE COMMERCE THE REGISTRAR OF TRADEMARKS
Citation: 2021 TMOB 221 Date of Decision: 2021-10-04
IN THE MATTER OF A SECTION 45 PROCEEDING
WITMART INC. Requesting Party
and
SHANGHAI OLD-TOWN TEMPLE RESTAURANT GROUP CO., LTD. Registered Owner
TMA932,376 for NANXIANG Design 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. TMA932,376 forthetrademarkNANXIANGDesign(theMark),currentlyownedbyShanghaiOld-TownTempleRestaurant (Group) Co., Ltd. (the Owner).
[2] The Mark is depicted below:
[3] All references are to theAct as amended June 17, 2019 (theAct), unless otherwise noted.
[4] TheMarkisregisteredforuseinassociationwiththefollowing:
Accommodation bureaus services, namely, providing hotel services and boarding house services; food and drink catering services; cafe services; cafeteria services; canteen services; boarding house services; hotel services; restaurant services; boarding house bookings; self-service restaurants; snack-bar services; bar services; holiday camp lodging services; motel services; teahouse services (the Services).
[5] Forthereasonsthatfollow,Iconcludethattheregistrationoughttobemaintainedinpart.
THE PROCEEDINGS
[6] AttherequestofWitmartInc.(theRequestingParty),theRegistrarofTrademarksissuedanotice under section 45of theAct onApril8, 2019, to theOwner.
[7] The notice required the Owner to show whether the Mark had been used in Canada inassociation with each of the Services 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 April 8, 2016 to April 8, 2019 (the Relevant Period).
[8] Therelevantdefinitionofuseinthepresentcaseis setoutinsection4(2)oftheActasfollows:
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.
[9] 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 [PerformanceApparelCorpvUvexTokoCanadaLtd,2004FC448atpara68]and“evidentiaryoverkill”isnotrequired[seeUnionElectricSupply CovCanada(RegistrarofTrade 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 services.
[10] Intheabsenceofuseasdefinedabove,pursuanttosection45(3)oftheAct,atrademarkis liable to be expunged, unless the absence of use is due to special circumstances.
[11] InresponsetotheRegistrar’snotice,theOwnerfurnishedtheaffidavitofMr.WanWeiHoow,sworn onNovember 5,2019, towhich wasattached Exhibits “A”to “K”.
[12] Neither party filed written representations. No oral hearing was held.
THE EVIDENCE
[13] The Owner’s affiant, Mr. Wan Wei Hoow, is a Director of the Owner and has held thatpositionsinceJuly,2019.Mr.Hoowstatesthatheeitherhaspersonalknowledgeofthematterssetout in his affidavitor else has obtainedsuch knowledge from the businessrecords of the
Owner.
[14] Mr. Hoow states that during the Relevant Period the Mark was used in Canada by theOwner’slicensee,MennieCanada,whooperatedtheYuGardenrestaurantinRichmondHill,
Ontario, in accordance with standards set by the Owner [Hoow Affidavit, paras. 6 & 7].
According to Mr. Hoow, since September, 2015, the Yu Garden restaurant has offered food and drink catering services, café services, restaurant services and bar services in association with the Mark.
[15] Mr.HoowstatesthatthesalesofthesefoodandbeverageservicesinCanadain2016exceeded $50,000 (CAD), in 2017 exceeded $25,000 (CAD) and in 2018 up to April 8, 2019exceeded $25,000 (CAD).
[16] Tofurthersupporthisallegationsofuse,Mr.Hoowattachedtohisaffidavitthefollowingexhibits:
(a) Exhibit “A”: an English language translation of the agreement between theOwneranditslicensee,MennieCanada,pertainingtotheoperationoftheYuGarden restaurant in Richmond Hill, Ontario;
(b) Exhibit“B”:photographsoftheYuGardenrestaurantwhichprominentlydepictthe Mark and which are stated to be representative depictions of the manner ofuse of the Mark in the normal course of trade during the Relevant Period; these photographs depict the exterior front of the restaurant as well as the interior seating areas of the restaurant;
(c) Exhibit “C”: includes a Yu Garden menu which prominently depicts the Mark.According to para. 11 of the affidavit, “the restaurant’s decor and the use of theMark”, which I infer includes the menu, has been consistent since the restaurantopened in 2015;
(d) Exhibit “C” also includes an invoice dated October 27, 2019 which is nothelpful as it is outside the Relevant Period and in any event does not depict theMark; and
(e) Exhibits “D” - “J”: extracts of third party websites containing reviews of the
YU Garden restaurant which in turn contain pictures of the restaurant; the Mark appears on some of the pictures.
ANALYSIS AND REASONS FOR DECISION
Interpretation of the registration
[17] It is a well-established principle that when interpreting a statement of goods or services ina section 45 proceeding, one is not to be “astutely meticulous when dealing with [the] languageused”[see Aird & Berlis LLPv Levi Strauss &Co, 2006 FC 654 at para 17].
[18] Indeed, it has been held that a specification should be granted a reasonable interpretation[ConAgraFoods,IncvFetherstonhaugh&Co.2002FCT1257]andreasonableinferencesmaybedrawn fromthe evidenceprovided [EclipseInternational FashionsCanada Incv Shapiro
Cohen, 2005 FCA 64].
[19] In the absence of written representations from the Requesting Party and applying a reasonable interpretation to both the registration and the evidence, I am prepared to conclude that the Mark was in use in Canada during the Relevant Period in
association with restaurant services.
[20] However, there is no evidence from which I may conclude that the Mark was used in
association with the remaining services covered by the registration. The Owner claims to have used the Mark in association with food and drink catering services, café services and bar
services, but the evidence provided only shows use in association with restaurant services.
[21] Reference is made in the evidence to the delivery of Yu Garden’s food, but delivery is to be distinguished from catering services. Further, as the registration separately lists restaurant
services, catering services, café services and bar services, the Owner must have considered these services to be unique and distinguishable from one another. I therefore find that use within the
Relevant Period has been shown only with respect to restaurant services.
[22] As for the other services, there are no allegations of fact that could constitute special circumstances justifyingnon-use of the Mark within the meaning of s.45 of theAct..
DISPOSITION
[23] Pursuanttotheauthoritydelegatedtomeundersection63(3)oftheAct,the registration will be amended to delete all but restaurant services.
[24] The amended statement of services shall now read:
● restaurant services
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
Perrier + Currier For the Registered Owner
No agent appointed For the Requesting Party