Citation: 2021 TMOB 232

Date of Decision: 2021-10-18

IN THE MATTER OF A SECTION 45 PROCEEDING

	Urbanek Intellectual Property Law	Requesting Party
And
	Foremost International Limited	Registered Owner
	TMA909,246 for CALI	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. TMA909246 for the trademark CALI (the Mark), currently owned by Foremost International Limited.

[2] The Mark is registered for use in association with the following: bathroom furniture, namely, vanities, linen cabinets, medicine cabinets, wall cabinets; toilets, bathtubs and sinks; laundry furniture (the Goods).

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

The Proceedings

[4] The Section 45 notice required the Owner to show whether the trademark had 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 February 20, 2017 to February 20, 2020 (the Relevant Period).

[5] 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.

[6] It is well established that bare statements that a trademark is in use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in these proceedings is low [Woods Canada Ltd v Lang Michener (1996), 71 CPR (3d) 477 (FCTD)], and evidentiary overkill is not required [Union Electric Supply Co Ltd v Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the trademark in association with each of the goods specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].

[7] In response to the Registrar’s notice, the Owner furnished an affidavit of Jennifer Earl, sworn on August 6, 2020, to which were attached Exhibits 1, 2 and 3.

[8] Only the Requesting Party submitted written representations. No oral hearing was held.

The Evidence

[9] The affidavit of Ms. Earl sets out the following:

(a) The Owner “designs, advertises, distributes and sells bathroom furniture, including toilets” (para 2);

(b) This furniture is manufactured by a third party in China and then shipped to the Owner’s warehouse in Mississauga, Ontario (para 3);

(c) During the Relevant Period, the Owner sold in excess of 23,600 items of furniture bearing the Mark to Canada-based builders, plumbers and wholesale suppliers (paras 4 & 9);

(d) Exhibit 1 consists of photographs of packaging for Goods sold to Canada-based purchasers. The packaging is representative of packaging during the Relevant Period (paras 6 & 10). The Exhibit 1 photographs depict packaging for toilets and the packaging displays the Mark (para 6 & Exhibit 1);

(e) Exhibit 2 to the Earl affidavit is stated to be an excerpt from the website https://contrac.ca which is operated by the Owner; this exhibit depicts the specifications of the “CALI ONE PIECE TOILET” sold by the Owner (para 7 & Exhibit 2); and

(f) Exhibit 3 to the Earl affidavit is described as excerpts from invoices evidencing the Owner’s “sale of Goods in association with the Mark during the Relevant Period” (para 8 & Exhibit 3). The invoices display the Mark CALI and document the sale of CALI-branded toilets to purchasers in Mississauga, ON, Quebec, QC, and Bathhurst, NB during the Relevant Period. The invoices are stated to have “accompanied the Goods listed in the invoices in packaging bearing the Mark when the Goods were delivered to the Purchaser” (para 8 & Exhibit 3).

Analysis and Reasons for Decision

[10] The Requesting Party submits that:

· If the evidence filed by the Owner is sufficient to demonstrate any use of the Mark by the Owner in Canada during the Relevant Period, such use is confined solely to “toilets”; and

· The Owner’s evidence is silent as to when the Mark was last used by the Owner in Canada in association with any of the other goods recited in the registration and no special circumstances excusing non-use of the Mark in association with the remaining goods listed in the registration are provided.

[11] Since the photographs demonstrate how the Mark was displayed on the packaging of the Goods during the Relevant Period and the invoices provide evidence of sales in the normal course of trade during that period, I am satisfied that the Owner has shown use of the Mark in association with the registered goods represented in Exhibit 1 pursuant to sections 4(1) and 45 of the Act, namely, toilets.

[12] In a section 45 proceeding, the burden of proof is on the registered owner of the trademark to demonstrate “use” in order to maintain the registration of the mark. While it is clear from the jurisprudence that this burden is not a stringent one, the owner must nevertheless establish a prima facie case of use within the meaning of section 4 of the Act [Brouillete Kosie Prince v Orange Cove-Sanger Citrus Association, 2007 FC 1229].

[13] While evidentiary overkill is not required and representative evidence can be furnished in section 45 proceedings [Saks & Co v Canada (Registrar of Trade Marks) (1989), 24 CPR (3d) 49 (FCTD)], the registered owner must still establish a prima facie case of use of the trademark in association with each of the goods specified in the registration [John Labatt; see also Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184]. In other words, the Registrar must be able to “rely on an inference from proven facts rather than on speculation” to satisfy every element required by the Act [Diamant Elinor at para 11; see also Smart & Biggar v Curb, 2009 FC 47].

[14] No special circumstances excusing non-use in relation to the remaining goods covered by the registration have been alleged.

[15] I note that the Exhibit 3 invoices show sales by “FOREMOST International, Ltd.” (with a comma between “International” and “Ltd.”) as opposed to “Foremost International Limited”(no comma between “International” and “Limited”) as the Owner’s name is shown on the registration. However, I do not consider this to be a material difference that might suggest different entities and in any event, no issue has been made of this distinction by the Requesting Party. I also note that issues such as distinctiveness are not matters to be decided during a section 45 proceeding [United Grain Growers Ltd v Lang Michener, 2001 FCA 66].

 

Conclusion

[16] Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended to delete the following in compliance with the provisions of section 45 of the Act: “bathroom furniture, namely, vanities, linen cabinets, medicine cabinets, wall cabinets; bathtubs and sinks; laundry furniture”.

[17] The amended statement of goods will read as follows: “toilets”.

Jane Steinberg

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

No Agent Appointed	For the Registered Owner
Urbanek Intellectual Property Law	For the Requesting Party