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CIPO
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| LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADEMARKS
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Citation: 2021 TMOB 243
Date of Decision: 2021-11-02
IN THE MATTER OF A SECTION 45 PROCEEDING
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William B. Vass (Cognitive Intellectual Property Law)
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Requesting Party
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Leef Inc.
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Registered Owner
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TMA769,494 for Leef & design
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Registration
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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. TMA769,494 for the trademark Leef & design (the Mark). The Mark is depicted below:
[2] The Mark is registered for use in association with the following:
Goods
Services
[3] For the reasons that follow, I conclude that the registration ought to be maintained in part.
The Proceedings
[4] At the request of William B. Vass (Cognitive Intellectual Property Law) (the Requesting Party), the Registrar of Trade-marks issued a notice under section 45 of the Act on June 15, 2020 to Leef Inc. (the Owner), the registered owner of registration No. TMA769,494.
[5] The section 45 notice required the Owner to show whether the trademark was used in Canada in association with each of the goods and services 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).
[6] The relevant definitions of use are set out in section 4 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.
4(2) A trade-mark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[7] It is well established that bare statements that a trademark was 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 and services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. With respect to services, the display of a trade-mark on advertising is sufficient to meet the requirements of section 4(2) of the Act when the trademark owner is offering and prepared to perform those services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)].
[8] In the absence of use pursuant to section 45(3) of the Act, the registration of a trademark is liable to be expunged, unless the absence of use is due to special circumstances.
[9] In response to the Registrar’s notice, the Owner furnished an affidavit of Elaine Allen-Milne, sworn on September 15, 2020 in Toronto.
[10] Neither party submitted written representations and no oral hearing was held.
The Evidence
[11] Ms. Allen-Milne is a manager with the Owner and its licensee. She attests that the Owner has been manufacturing and designing furniture for residential and commercial spaces, such as movable office partitions, mobile privacy screens, and space dividers (para 4). Eventscape, the Owner’s licensee, provides goods and services that are identical to those of the Owner, the character and quality of which are under the control of the Owner (paras 5 & 6). Ms. Allen-Milne explains that their customers “are often large institutions and corporations, architects and designers purchasing a quantity of identical furniture for locations such as airports, office spaces, hotel lobbies, conference rooms, reception desks, etc” (para 10).
[12] Ms. Allen-Milne attests that, due to their customized nature, the Mark is not placed on the Goods themselves (para 10) but is placed on invoices for the sale of the Goods (para 12) and on materials shown to customers during the “multi-step” sales process (para 13). In support, the following exhibits are attached to Ms. Allen-Milne’s affidavit:
a.
Exhibit B consists of two invoices dated April 30, 2020 and June 4, 2020, respectively, both within the Relevant Period. Both invoices are from the Owner to Eventscape, albeit with a third-party customer identified in the “ship to” field. The April invoice documents a sale of “mobile partition screens” and the June invoice documents a sale of “mobile healthcare screens”, which Ms. Allen-Milne correlates to the registered goods “…furniture partitions” and “furniture screens”.
b.
Exhibit C is a photograph of a fabric swatch that Ms. Allen-Milne attests was shown to purchasers of freestanding divider screens during the Relevant Period.
c.
Exhibit D consists of a digital advertising brochure that Ms. Allen-Milne attests was distributed by Eventscape during the Relevant Period. The brochure describes the specifications, features and dimensions of modular dividers and mobile screens, including desktop divider screens, standing partition screens and transaction screens.
d.
Exhibit E consists of a copy of a digital advertising brochure accessible on the Owner’s website from 2008 until April 2020. This brochure is a screens catalog which depicts sample screens from different genres, specifically modern screens, classical/traditional screens, natural screens and limited edition/custom branded screens. The screens are available in different finishes, for example, leather, suede, high tech finishes and dry erase surfaces.
e.
Exhibit F consists of photographs of what appear to be two promotional postcards, advertising the Owner’s design and manufacturing services, that Ms. Allen-Milne attests was distributed by the Owner to customers and potential customers during the Relevant Period. The postcards advertise what are described as custom screen solutions for retail, hospitality, office and medical applications.
f.
Exhibit G consists of a printout from an email newsletter distributed by Eventscape in March 2020 to approximately 11,000 newsletter subscribers. The newsletter describes mobile screens, partitions and dividers, including desk dividers, that are available with different material options such as a cleanable solid surface, an anti-microbial fabric and acrylic.
g.
Exhibit H consists of a copy of an April 2020 email blast sent by Eventscape to customers of the brand Willis. Ms. Allen-Milne explains that Willis provides certain materials used in the construction of the Owner’s products.
h.
Exhibit I is a copy of the Eventscape digital brochure that is referenced in the Exhibit H email blast. This e brochure references space partitions and divider screens.
i.
Exhibit J consists of a screenshot from the Owner’s website that references custom dividers and mobile screens.
Analysis and Reasons for Decision
Use of the Mark in association with the Goods
[13] In this case, the evidence of use appears limited to furniture partitions and screens. In particular, I accept that the Exhibit B invoices show transfers of goods correlating with “movable office furniture partitions” and “furniture screens”.
[14] While Ms. Allen-Milne acknowledges that the Mark is not placed on the Goods themselves, it is prominently featured on the invoices and on materials that Ms. Allen-Milne attests are typically shown to customers at the time of purchase. In this case, I accept that the evidenced display of the Mark constitutes use “in any other manner” within the meaning of section 4(1) of the Act. I therefore find that the Owner has shown use of the Mark in association with “movable office furniture partitions” and “furniture screens” within the meaning of sections 4 and 45 of the Act. However, there is no evidence of use of the Mark in association with the remaining registered goods. As there is no evidence of special circumstances before me, the registration will be amended accordingly.
Use of the Mark in association with the Services
[15] Throughout her affidavit, Ms. Allen-Milne refers to the Owner’s design and manufacture of “furniture partitions, movable office partitions, and furniture screens” (see, for example, para 16). She provides various brochures and other materials displaying the Mark (or acceptable colour variations thereof) which she attests were used by customers during the relevant period in Canada and, as noted above, evidences two sales of the Owner’s goods in this respect. Accordingly, I accept that the Owner has evidenced use of the Mark in association with the services “Design and custom manufacturing of . . . furniture partitions, movable office partitions . . . [and] furniture screens” within the meaning of sections 4 and 45 of the Act.
[16] Again, however, there is no evidence of use with respect to any of the other furniture products identified in the statement of services. As there is no evidence of special circumstances before me, the registration will be amended accordingly.
Disposition
[17] Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended to delete the following from the goods and services in compliance with the provisions of section 45 of the Act:
Goods: . . . furniture of metal, furniture for displaying goods, display stands, display boards, seats, seating furniture.
Services: . . . residential and commercial furniture, . . . furniture of metal, furniture for displaying goods, furniture, namely sales and display units, . . . and seating furniture, custom store fixtures, point of purchase displays, custom enclosed structures for use as reception area, training structure or lounge incorporating audio visuals, scents, sounds and projection or custom graphics and standoffs for custom display, namely a portable structure clad with fabric, plastic, wood or metal on metal frames.
[18] The amended statement of goods and services will read as follows:
Goods:
Residential and commercial furniture, namely: movable office furniture partitions, furniture screens.
Services:
Design and custom manufacturing of furniture partitions, movable office partitions and furniture screens.
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| Jane Steinberg
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| Member
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| Trademarks Opposition Board
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| Canadian Intellectual Property Office
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TRADEMARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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HEARING
No Hearing Held
AGENTS OF RECORD
| No agent appointed
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For the Registered Owner
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| William B. Vass
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For the Requesting Party
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