Citation: 2021 TMOB 222

Date of Decision: 2021-10-04

IN THE MATTER OF A SECTION 45 PROCEEDING

	Gowling WLG (Canada) LLP	Requesting Party
and
	Armfoam Inc.	Registered Owner
	TMA609,857 for ARMFOAM	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. TMA609,857 for the trademark ARMFOAM (the Mark), owned by Armfoam 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:

Équipements protecteurs utilisés dans la fabrication d'équipements sportifs, d'équipements pour les corps policiers et d'équipements militaires, nommément casques, jambières, protecteurs de poitrine, protecteur de dos, protecteurs de bras et d'avant-bras et protecteurs de l'aine.

 

[Trademarks Journal Translation: Protective equipment used in the manufacture of sports equipment, police and military equipment, namely helmets, leg guards, chest protectors, back protectors, arm and forearm guards and groin protectors]

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

The Proceedings

[5] At the request of Gowling WLG (Canada) LLP (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on June 15, 2020 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 June 15, 2017 to June 15, 2020 (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 Rodrigue McDuff sworn on September 11, 2020 to which were attached Exhibits A to E.

[10] No party submitted written representations and no hearing was held.

The Evidence

[11] Mr. McDuff currently holds the position of Research and Development Director of the Owner since March 2019 and prior to that he held the position of President, Director and Officer of the Owner [para 1]. Mr. McDuff explains that the Owner is located in the province of Quebec and has been manufacturing and selling its protective products since as early as 2001 to organizations that use the Owner’s products to manufacture their own sports, police and military products [paras 4, 5 and 6].

[12] In his affidavit, Mr. McDuff refers to various sales by the Owner in Canada during the Relevant Period for helmet liner protectors and bladder protectors [paras 7, 9 and 10].

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

· Exhibit A: Copies of invoices bearing the Mark from the Owner to customers in Canada during the Relevant Period for the following products: helmet liner and bladder [para 6].

· Exhibit D: Undated pictures of a helmet liner protector and its plastic packaging bearing the Mark [para 9].

· Exhibit E: Undated pictures of a part of a bladder protector with a label bearing the Mark affixed to it [para 10].

Analysis and Reasons for Decision

[14] Given that no written representations were submitted, the only question to determine is whether or not the evidence described above establishes that there has been use of the Mark in Canada during the Relevant Period in association with each of the registered goods within the meaning of section 4(1) of the Act.

[15] Throughout his affidavit and attached exhibits, the affiant only refers specifically to the following two products: “helmet liner protector” and “bladder protector ”. The invoices bearing the Mark provided in Exhibit A show the sale of these two products in Canada by the Owner during the Relevant Period [para 6].

[16] I accept that “helmet liner” found on invoices corresponds to the registered goods “Équipements protecteurs utilisés dans la fabrication d’équipements sportifs, d’équipements pour les corps policiers et d’équipements militaires, nommément casques” [Translation: Protective equipment used in the manufacture of sports equipment, police and military equipment, namely helmets]. Furthermore, I am satisfied that the pictures of the helmet liner and its packaging bearing the Mark [Exhibit D,] although undated, depict how the product was sent by the Owner to clients in Canada [para 9] during the Relevant Period.

[17] For the second product “bladder”, absent a clear statement of the affiant as to which products are manufactured using a “bladder” and the incomplete picture of the “bladder protector” shown in Exhibit E, I am unable to correlate this product with any of the registered goods.

[18] Moreover, having exercised the Registrar’s discretion to take judicial notice of dictionary definitions [see Tradall SA v Devil’s Martini Inc, 2011 TMOB 65], I was unable to find a definition for “bladder protector” and the relevant definitions of “bladder” from the online dictionary at www.merriam-webster.com are as follows:

Bladder 1: a membranous sac in animals that serves as the receptacle of a liquid or contains gas

Bladder 2: something (such as the rubber bag inside a football) resembling a bladder

 

[19] Even after considering the definitions above, I am still unable to correlate the “bladder” with any of the registered goods.

 

[20] In view of the foregoing, I am only satisfied that the Owner has shown use of the Mark in association with “Équipements protecteurs utilisés dans la fabrication d’équipements sportifs, d’équipements pour les corps policiers et d’équipements militaires, nommément casques” [Translation: Protective equipment used in the manufacture of sports equipment, police and military equipment, namely helmets] 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 leg guards, chest protectors, back protectors, arm and forearm guards and groin protectors, I conclude that these goods ought to be deleted from the registration.

Disposition

[21] 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 “jambières, protecteurs de poitrine, protecteur de dos, protecteurs de bras et d'avant-bras et protecteurs de l'aine”.

[22] Accordingly, the statement of goods will read as follows:

Équipements protecteurs utilisés dans la fabrication d’équipements sportifs, d’équipements pour les corps policiers et d’équipements militaires, nommément casques.

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

Morency, S.E.N.C.R.L.	For the Registered Owner
Gowling WLG (Canada) LLP	For the Requesting Party