Citation: 2021 TMOB 226

Date of Decision: 2021-10-12

IN THE MATTER OF A SECTION 45 PROCEEDING

	Miller Thomson LLP	Requesting Party
and
	1329471 Ontario Ltd.	Registered Owner
	TMA909,285 for ON TREND	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. TMA909,285 for the trademark ON TREND (the Mark), currently registered to 1329471 Ontario Ltd (the Owner).

[2] All references are to the Act as amended June 17, 2019 (the Act), unless otherwise noted.

[3] The Mark is registered for use in association with the following goods:

particle board; plastic laminate sheets and panels for the manufacture of flooring, countertops and tabletops; fireboard; hardboard; slotwall; perfwall; textured and untextured melamines; polyvinyl chloride (PVC), acrylontitrile butadiene styrene (ABS), and acrylic edges for the manufacture of cabinetry, flooring and countertops; sheets of wood coated with foil, vinyl, paint, polyethylene terephthalate, lacquer, acrylic and leather; plywood; adhesive sealants; adhesive cements; mouldings; lumber and wood veneers.

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

The Proceedings

[5] At the request of Miller Thomson LLP (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on March 15, 2019, to the Owner.

[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 March 15, 2016 to March 15, 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. The evidence in a section 45 proceeding need not be perfect; indeed, a registered owner need only establish a prima facie case of use within the meaning of sections 4 and 45 of the Act [see Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184]. This burden of proof is light; evidence must only supply facts from which a conclusion of use may follow as a logical inference [per Diamant at para 9].

[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 Rocco Panza, sworn on November 20, 2020, to which were attached Exhibits “A” through “Q”.

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

The Evidence

[12] Mr. Rocco Panza describes himself as a Director of 1329471 Ontario Ltd. (Mercury Wood Products), the Owner of the Mark. He describes the company as a “leading supplier of quality wood products and decorative surfaces to kitchen, furniture and commercial woodworking manufacturers”.

[13] The affiant has grouped within his statement, the many products within the line bearing the Mark, ten categories including one or more of the products, as part of the Goods. The different categories contain related goods.

[14] In paragraph 7 of his affidavit, and as an introductory statement before each and every exhibit attached as an illustration of one or more of the products within the line of products being discussed, Mr. Panza states “Within the Three Year Period, and indeed to date, Mercury Wood has used the [the Mark] to identify and advertise…”. However, the word “use” is a legal term as mentioned above. The Registrar must determine if the evidence filed leads to a conclusion of use of the Mark in Canada in association with each of the Goods.

[15] In support, the following relevant exhibits are attached:

· Exhibit “A” consists of a Business Names Report identifying the corporation’s business name as ‘Mercury Wood Products’.

· Exhibit “B” consists of the Master Business Licence for Mercury Wood Products.

· Exhibit “E” pertains to the category of particle board, fibreboard and hardboard and consists of one photograph (photo) of a stack of boards displaying the Mark, and labelled as being ¾” thick and 5 X 9 feet in dimension. The labelling that is large enough to be legible, bears the date March 20, 2019, just days after the end of the Relevant Period.

Mr. Panza acknowledges the date on the photo in this exhibit falls just five days after the receipt of the s. 45 Notice but swears the Mark was equally displayed in the same manner on the same products within the Relevant Period. The affiant also explains the product ‘fibreboard’ is misspelled in the registered list of goods as ‘fireboard’. The affiant states that fibreboard and hardboard are types of dense particle board.

· Exhibit “F” consists of seven photos showing the Mark and the Owner’s name displayed on samples of plastic laminate sheets and panels in various colours.

· Exhibit “G” consists of one photo of facing catalogue pages showing various finishes and colours, of what the affiant identifies as slotwall and perfwall; other types of particle board. The pages bear the Mark and the company moniker; ‘by Mercury’.

· Exhibit “H” consists of nine photos in black and white, of what the affiant identifies as textured and un-textured melamines in sample form. The photos contain dark pictures of samples, each labelled with black writing. The only consistently identifiable wording is the Mark and the company name.

· Exhibit “I” consists of 6 photos of what the affiant identifies as examples of the company’s PVC, ABS and acrylic edges that are used in conjunction with other products in the construction of cabinetry. The edging displays the Mark and the company name as well as the identity of the colour and the finish of each edging.

· Exhibit “J” consists of what the affiant identifies as examples of Mercury Wood Product’s sheets of wood; each coated with either foil, vinyl, paint, PET, lacquer, acrylic or leather. All examples are labelled with the Mark.

· Exhibit “K” consists of two photos as examples of plywood; advertised, distributed and sold by the Owner, and all displaying the Mark.

· Exhibit “L” consists of five photos showing the Owner’s products identified by the affiant as lumber and wood veneers; all bearing the Mark. A sixth photo displays a catalogue cover entitled ‘Product Catalogue, Custom Cabinet Door Program’, as well as the Mark and the Owner’s business name.

· Exhibit “M” consists of copies of social media content posted by the Owner, displaying the Mark to promote its goods; as well as responses and requests for sample kits.

· Exhibit “Q” consists of two promotional examples; firstly, the use of social media to receive requests for ‘sample kits’ of various lines of their materials as a result of online promotions. Two examples of such requests come from AGO Kitchens and from Trend Kitchens Inc., both Canadian companies. The second inclusion in this exhibit is a 4 page list of the products of Mercury Wood Products, listed by their separate lines including those bearing the Mark. Several trademarks are shown at the bottom of each page, including ON TREND.

[16] Mr. Panza refers in paragraph 26 of his affidavit to one of two elements in the list of registered goods, that are not directly exhibited. The affiant refers to adhesives; both adhesive sealants and cements, used “to join the other materials and surfaces”. He states that “a customer would also end up associating the trademark ‘ON TREND’ with these ancillary goods”. In the product list depicted in Exhibit “Q”, the adhesives are listed under the heading ‘Helmitin Adhesives’ and the name Helmitin appears as one of several trademarks at the bottom of each of the catalogue pages, along with the Mark in issue. The adhesives are not included within the ON TREND line of products.

[17] The second element in the list of registered goods not directly exhibited is “mouldings”. Mr. Panza discusses mouldings in paragraphs 8, 27 and 28 of his affidavit, referring collectively to them as “features that are created in other materials” and “often on demand, after the customer has ordered a size material and colour”. Further, “the samples of materials attached to this affidavit would be the same materials used to fabricate the mouldings, which would be used in the interior design project being undertaken by the customer”.

[18] Mr. Panza concludes his affidavit by stating that the Mark is an important and recognized element used consistently in their business.

Analysis and Reasons for Decision

Use of the Mark in association with goods

[19] An affiant’s statements are to be accepted at face value and must be accorded substantial credibility in a section 45 proceeding [Oyen Wiggs Green & Mutala LLP v Atari Interactive Inc, 2018 TMOB 79 at para 25].

[20] Although invoices are not mandatory in order to satisfactorily reply to a section 45 notice [Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)], some evidence of transfer in the normal course of trade in Canada is necessary [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. Such evidence can be in the form of documentation like invoices, sales reports, but can also be through clear sworn statements regarding volumes of sales, dollar value of sales, or equivalent factual particulars [see, for example, 1471706 Ontario Inc v Momo Design srl, 2014 TMOB 79].

[21] Although the affiant has shown pictures of most of the Goods, with appropriate labelling, and a product list including those bearing the Mark, there is no corroborative evidence of transfer of property of any of the Goods. The emails requesting sample kits are not determinative on their own. There is no evidence of resultant sales, nor any acknowledgement of pre-existing business transactions. We have no information regarding even the delivery or actual purchase of sample kits, or orders of products arising from the receipt of sample kits.

[22] Mr. Panza does not make a clear sworn statement regarding the volumes or particulars of sales, inventory records or any other record of transfer of goods in the normal course of trade in Canada.

[23] Although an invoice may not be necessary, there must be some evidence of transfer. The Owner has not met its burden to prove use of the Mark under sections 4(1) and 45 of the Act. The evidence described above does not enable me to conclude that there has been transfer of property of any of the Goods in Canada during the Relevant Period such that there has been use of the Mark within the meaning of section 4(1) of the Act.

Disposition

[24] Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be expunged in compliance with the provisions of section 45 of the Act.

Jean Carrière

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

No Hearing Held

AGENTS OF RECORD

Goldman Hine LLP	For the Registered Owner
Miller Thomson LLP	For the Requesting Party