Citation: 2021 TMOB 223

Date of Decision: 2021-10-04

IN THE MATTER OF A SECTION 45 PROCEEDING

	Beruzi Holdings Inc.	Requesting Party
and
	DTF Assets, LLC	Registered Owner
	TMA920,568 for DIN TAI FUNG & Design	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. TMA920,568 for the trademark DIN TAI FUNG & Design (the Mark), as shown below, currently owned by DTF Assets, LLC (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 (the Goods):

Chinese food products, namely pork dumplings, dumplings, buns pork, buns, rice, noodles, beef noodles, pork chop noodles, pork rice buns, red bean buns, pastries, Chinese style pastries, desserts, biscuits, cookies, cakes, mooncakes, pies, meat pies, bread rolls, ravioli, porridge, meal, namely meal entrees and prepared meals, bean meals, oatmeal.

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

The Proceedings

[5] At the request of Beruzi Holdings Inc. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on July 29, 2019, to Fairy Rise Development Limited, the registered owner of the Mark as of that date (Fairy Rise).

[6] The notice required Fairy Rise to show whether the Mark 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 July 29, 2016 to July 29, 2019 (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 the goods listed in the registration.

[9] In the absence of use as defined above, pursuant to section 45(3) of the Act, a trademark is liable to be expunged, unless the absence of use is due to special circumstances.

[10] In response to the Registrar’s notice, the Owner furnished an affidavit of Chi Hua Yang, sworn on February 27, 2020, to which were attached Exhibits A to G.

[11] On June 8, 2020, the Registrar recorded the assignment of the Mark from Fairy Rise to the Owner effective January 31, 2020.

[12] Only the Owner submitted written representations. No hearing was held.

The Evidence

[13] Mr. Yang is the President of Fairy Rise and has held that position since March 5, 2009.

[14] Mr. Yang states that, prior to January 31, 2020, Fairy Rise was responsible for the manufacture and distribution of Chinese food products in association with the Mark sold to retail outlets in Canada. He states that Fairy Rise exercised direct and indirect control over the character and quality of the Chinese food products sold in Canada in association with the Mark during the Relevant Period [para 5].

[15] Mr. Yang states that the Chinese food products were exported to Canada through a Taiwan-based trade agent, Scholar Enterprises Co., Ltd., and sold to a Canadian grocery chain, T&T Supermarket, for resale to Canadian consumers. Total sales to Canada of Chinese food products bearing the Mark in the Relevant Period were in excess of CA$5,000,000 [first paras 6 and 7].

[16] Attached as Exhibit A to the Yang affidavit are examples of Purchase Orders from Scholar Enterprises Co., Ltd. to Din Tai Fung Co. Ltd dated within the Relevant Period for sale of Chinese food products to T&T Supermarket in Canada, together with examples of Export Customs Clearance Forms for the shipment of Chinese food products from Scholar Enterprises Co., Ltd to T&T Supermarket in Canada. Because the documents are primarily in Chinese, notarized translations into English have been provided as part of the Exhibit. The translations are supported by affidavits of Chengyan (Anne) Zeng and Wenhai Gao, both sworn February 25, 2020 [second para 6].

[17] The Purchase Orders and Export Customs Clearance Forms evidence transactions involving the sale by the Owner of four products in association with the Mark to a Canadian buyer during the Relevant Period: pineapple cake, dried longan cake, frozen rice cake-assorted flavor, and frozen rice dumpling-red bean paste [Exhibit A].

[18] Attached as Exhibits B to E are samples of packaging which demonstrate how the Mark was displayed on packaging for the following Chinese food products sold in Canada during the Relevant Period: pineapple cake, longan cake, red bean rice dumplings and sticky rice red bean wraps [paras 8, 9, 10 and 11].

[19] Exhibit F is an undated photograph showing how pineapple cake bearing the Mark are displayed on shelves at T&T supermarkets in Canada [para 12].

[20] Exhibit G are samples of promotional flyers distributed in Canada during the Relevant Period by T&T advertising Frozen Red Bean Rice Dumplings and Longan Cake bearing the Mark [para 13].

Analysis and Reasons for Decision

[21] The Owner, in its written representations, notes thirteen trademark registrations where the goods are described as: “traditional food namely traditional Chinese food”, “prepared Chinese food”, “fresh and frozen prepared Chinese food dishes”, “Chinese food and sauce”, and “Chinese food”. The Owner argues that, because “Chinese food” is acceptable, “this must be considered a general term and the use of the mark in association with any of the narrowly specified items should preserve the registration in full” [para 40]. I disagree.

[22] Even if “Chinese food” is an acceptable general term, the Owner has provided a specific listing of Chinese food in the registration which differentiates this case from Empresa Cubana Del Tabaco Trading v Shapiro Cohen, 2011 FC 102 which was relied upon by the Owner.

[23] Section 45 clearly indicates that use is to be shown “with respect to each of the goods or services specified in the registration”. The summary nature of proceedings under section 45 of the Act and consequent concerns over evidentiary overkill suggest that in some instances it is not necessary to show use for every registered good and service to prevent removal from the register [see Saks & Co v Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FCTD), Ridout & Maybee LLP v Omega SA, 2005 FCA 306 and Gowling Lafleur Henderson LLP v Neutrogena Corporation (2009), 74 CPR (4th) 153 (TMOB)]. This concept is appropriately applied to cases where there is a long list of goods and where the statement of goods is organized such that demonstration of use for a number of goods within a category can be sufficient to show use for the entire category, which is not the case in this proceeding.

[24] However, while there is no need for evidentiary overkill in a section 45 proceeding, a registered owner is nevertheless obligated to provide evidence to the extent that the Registrar is able to form an opinion on the “use” within the meaning of the Act [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448]. In these circumstances, an affidavit must contain a clear statement of use within the relevant period in association with each of the goods and must provide sufficient facts to permit the Registrar to conclude that the trademark is in use in association with each good.

[25] I accept that the Purchase Orders and Export Customs Clearance Forms, coupled with the product photographs in Exhibits B, C and E, demonstrate the sale by the Owner of pineapple cake, dried longan cake, frozen rice cake-assorted flavor, and frozen rice dumpling-red bean paste (also referred to as “red bean rice dumplings”), in association with the Mark to a Canadian buyer during the Relevant Period.

[26] With respect to the product photograph in Exhibit D, for sticky rice red bean wraps, there is no corresponding Purchase Order or Export Customs Clearance Form provided in Exhibit A. However, based on the statement by Mr. Yang that Exhibit D shows how the Mark was used by Fairy Rice in Canada during the Relevant Period in association with sticky rice red bean wraps [para 10], I am satisfied that the Owner has established a prima facie case of use of the Mark in Canada in association that with sticky rice red bean wraps during the Relevant Period.

[27] The question that remains to be answered is whether the products sold cover all the registered goods.

[28] In his affidavit, Mr. Yang does not correlate the goods listed in the registration with the items listed in the Exhibit A. However, the Owner provided some correlations between the registered goods and Exhibit A in its written representations.

[29] The Owner also suggests that one item, for example pineapple cakes, may support several items specified in the registration such as buns, pastries, desserts and cakes. I disagree. In considering this issue, I have kept in mind the decision of the Federal Court of Appeal in John Labatt Ltd v Rainier Brewing Co. (1984), 80 CPR (2d) 228 (FCA) in which it was held that the owner’s evidence of use of its trademark in association with the product “Rainer Lager Beer” could only maintain the registration for the good “beer”. The Court of Appeal held:

Specification of the wares other than beer suggest[s], in the absence of proof to the contrary, that each is indeed different in some degree from the others and from “beer” itself, as otherwise the words “ale, porter, stout, malt beverages, malt syrup and malt extracts” are superfluous [at para 13];

and that,

The fact that the other wares specified fall within a group of wares that are in some way related to beer is not sufficient, in my view, to preserve the registration intact. That could only be done if the respondent had also shown that the trademark is in use in Canada with respect to each of these other wares [at para 14].

[30] While it is not for the Registrar to speculate as to the nature of the registered goods [Fraser Milner Casgrain LLP v Fabric Life Ltd, 2014 TMOB 135 at para 13; Wrangler Apparel Corp v Pacific Rim Sportswear Co (2000), 10 CPR (4th) 568 at para 12 (TMOB)], reasonable inferences can be made from the evidence provided [Eclipse International Fashions Canada Inc v Shapiro Cohen (2005), 48 CPR (4th) 223 (FCA)]. Thus, in my view, while correlation would have been helpful, sufficient information can be gleaned from the evidence and Owner’s written representation to correlate the products noted above with the registered goods, as shown in the table below. In making such correlations, I am mindful of the principle that 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]:

Registered goods	Corresponding goods from the Evidence
Chinese food products, namely
pork dumplings
dumplings	frozen rice dumpling-red bean paste (also referred to as “red bean rice dumplings”)
buns pork
buns
rice
noodles
beef noodles
pork chop noodles
pork rice buns
red bean buns
pastries
Chinese style pastries	dried longan cake
desserts	pineapple cake
biscuits
cookies
cakes	frozen rice cake-assorted flavor
mooncakes
pies
meat pies
bread rolls
ravioli
porridge
meal, namely
meal entrees and prepared meals
bean meals	sticky rice red bean wraps
oatmeal

[31] As shown in the table above, the Owner’s evidence does not demonstrate use with respect to each of the registered goods. There is no clear evidence that would enable me to conclude that there was use of the Mark, or special circumstances to excuse non-use of the Mark, in Canada during the Relevant Period in association with “pork dumplings, buns pork, buns, rice, noodles, beef noodles, pork chop noodles, pork rice buns, red bean buns, pastries, biscuits, cookies, mooncakes, pies, meat pies, bread rolls, ravioli, porridge, meal entrees and prepared meals, oatmeal”. The registration will be amended accordingly.

Disposition

[32] Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended to delete the following goods in compliance with the provisions of section 45 of the Act:

pork dumplings, buns pork, buns, rice, noodles, beef noodles, pork chop noodles, pork rice buns, red bean buns, pastries, biscuits, cookies, mooncakes, pies, meat pies, bread rolls, ravioli, porridge, meal entrees and prepared meals, and oatmeal.

[33] The amended statement of goods will read as follow:

Chinese food products, namely dumplings, Chinese style pastries, desserts, cakes, meal, namely bean meals.

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

Perley-Robertson, Hill & McDougall LLP	For the Registered Owner
Cameron IP	For the Requesting Party