| OPIC
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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 236
Date of Decision: 2021-10-26
IN THE MATTER OF A SECTION 45 PROCEEDING
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Jensen & Company
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Requesting Party
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NSE Products, Inc. (a Delaware corporation)
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Registered Owner
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TMA397,727 for APPEAL
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Registration
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introduction
[1]
This is a decision involving a summary expungement proceeding with respect to registration No. TMA397,727 for the trademark APPEAL (the Mark).
[2]
The Mark is registered for use in association with the following goods (the Goods):
(1) Nutritional dietary supplements, namely a food concentrate which may be made into a beverage.
(2) Nutritional dietary supplements, namely snack bars.
[3]
For the reasons that follow, I conclude that the registration ought to be amended to delete “Nutritional dietary supplements, namely snack bars”.
the proceeding
[4]
On November 5, 2018, at the request of Jensen & Company (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act, RSC 1985, c T‑13 (the Act) to NSE Products, Inc. (the Owner). The notice required the Owner to show whether the Mark was used in Canada in association with each of the Goods specified in the registration at any time between November 5, 2015 and November 5, 2018 (the relevant period). If the Mark had not been so used, the Owner was required to provide the date when it was last in use and the reason for the absence of such use since that date.
[5]
The relevant definition of “use” in this case, is 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.
[6]
In response to the Registrar’s notice, the Owner submitted the affidavit of Jim Boyle, sworn on January 22, 2019.
[7]
Both parties filed written representations. Only the Owner was represented at an oral hearing.
overview of the Owner’s evidence
[8]
In his affidavit, Mr. Boyle states that he is the Director of Operations at Nu Skin Canada, Inc. (Nu Skin Canada ). According to Mr. Boyle, the “Nu Skin group of companies” (Nu Skin) is formed by the Owner, as well as his company Nu Skin Canada, together with subsidiaries, parent companies, and affiliates. He explains that Nu Skin’s Canadian facilities are operated by Nu Skin Canada, which assists in carrying out Nu Skin’s business in Canada, namely “distribution, marketing and sales of Nu Skin’s various nutrition and personal care products”.
[9]
With respect to display and notice of association of the Mark, Mr. Boyle attests that, during the relevant period, the Mark was featured directly on packaging for the Goods sold in Canada. In support, he provides photographs of packaging for a product he refers to as “powdered food concentrates which may be made into a beverage” (Exhibit 2), as well as the image of a label proof for the same product (Exhibit 3). The Mark is prominently displayed on the packaging for this product, which is identified on the label as a “Chocolate Truffle”-flavored “Meal Replacement Drink Mix”. Mr. Boyle confirms that the product packaging shown in Exhibits 2 and 3 is representative of how the Mark appeared on the Goods sold in Canada during the relevant period.
[10]
As for transfers in Canada, Mr. Boyle states that Goods sold in association with the Mark are manufactured by the Owner and sold to Nu Skin Canada for distribution in Canada to Canadian end consumers. In support, he provides representative invoices dated within the relevant period and issued by the Owner to Nu Skin Canada, located in Mississauga, Ontario (Exhibit 5). The bodies of these invoices are redacted in part, but show sales of products identified as “Appeal Vanilla Canister” and “Appeal Chocolate Canister”. Mr. Boyle explains that “references to ‘APPEAL canister’ on such invoices refer to the beverage mix Goods of the type shown at Exhibit 2-3” and attests that such invoices accompanied the Goods at the time of transfer.
[11]
Regarding other channels of trade in Canada, Mr. Boyle explains that the Goods are also sold through Nu Skin’s website located at www.nuskin.com and provides printouts from this website (Exhibits 1 and 4). Although there is no direct evidence of website sales, I note that the exhibited printouts show the “Chocolate Truffle” drink mix depicted in Exhibit 2, as well as a “French Vanilla” drink mix bearing the Mark in the same manner as the chocolate version.
[12]
In his affidavit, Mr. Boyle also provides “conservative estimates” of annual wholesale sales revenue and sales volume figures. These figures correspond to the Owner’s yearly sales of “Goods sold in association with [the Mark] through all channels in Canada during the relevant period”; however, these figures are not broken down by item.
[13]
Finally, Mr. Boyle discusses the advertising and promotion of Goods sold in association with the Mark in Canada. In this context, he provides printouts from the website located at www.nuskin.com (Exhibit 6), and product catalogues for the years 2017 and 2018 (Exhibits 7 and 8, respectively). Although the aforementioned vanilla-flavored and chocolate-flavoured drink mixes are displayed in these materials, “snack bars” are nowhere shown or referenced.
analysis
[14]
The arguments of the Requesting Party can be summarized as follows: (i) the affidavit employs the term “Nu Skin” to collectively reference multiple entities and purposely introduce ambiguities in the evidence; (ii) there is no evidence of sales to consumers in Canada; (iii) there is no evidence showing an association of the Mark and the Goods with the Owner and consumers “would not know or would be confused as to which entity is the source of the products and the owner of [the Mark]”; and (iv) there is no evidence relating to snack bars.
[15]
I will address these in turn below.
[16]
First, although I agree that the term “Nu Skin” refers to a group of related companies, I see no ambiguity with respect to the entities referenced in the affidavit. In this regard, Mr. Boyle specifically identifies the Owner as the manufacturer of the Goods sold in association with the Mark and clearly states the Owner sells such Goods to its Canadian distributor, Nu Skin Canada. Mr. Boyle also provides direct evidence of such sales in the form of the exhibited invoices.
[17]
Second, evidence of sales to consumers is unnecessary in this case; sales by the Owner to Nu Skin Canada are sufficient to show transfers in Canada within the meaning of section 4 of the Act.
[18]
Third, contrary to the submissions of the Requesting Party, there is no requirement in the Act that a trademark owner provide evidence of use of its trademark along with its name [see Novopharm Ltd v Monsanto Canada Inc (1998), 80 CPR (3d) 287 (TMOB); and Smart & Biggar v Canadian Tire Corporation, Limited, 2017 TMOB 153 at para 19]. As recently noted by the Federal Court, “whether the owner discloses its identity on product packaging, or in some other manner in association with its goods (or services), is voluntary in so far as the Trademarks Act is concerned” [Michaels v Unitop Spolka Z Organiczona Odpowiedzialnoscia, 2020 FC 937 at para 12].
[19]
To summarize, in the present case, the exhibited invoices show sales of “Appeal Vanilla Canister” and “Appeal Chocolate Canister” products by the Owner to its distributor in Canada during the relevant period. I am satisfied that those invoiced products correspond to goods (1), namely “Nutritional dietary supplements, namely a food concentrate which may be made into a beverage” and, consequently, I am also satisfied that the Owner has demonstrated use of the Mark in association with such Goods within the meaning of sections 4 and 45 the Act.
[21]
It is well established that, while the evidentiary threshold is low in section 45 proceedings, the registered owner must still provide sufficient facts 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); see also Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184].
[22]
Without evidence relating specifically to snack bars, I am not prepared to infer that Mr. Boyle’s references to “Goods” also includes snack bars and I do not accept that use of the Mark in association with food concentrates is sufficient to also maintain the registration in association with snack bars [per John Labatt].
[23]
Consequently, I am not satisfied that the Owner has demonstrated use of the Mark in association with goods (2), namely “Nutritional dietary supplements, namely snack bars”, within the meaning of sections 4 and 45 of the Act. As there is no evidence of special circumstances which could excuse non-use of the Mark, these goods will be deleted.
disposition
[24]
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 “Nutritional dietary supplements, namely snack bars”.
[25]
The statement of goods will now read as follows:
(1) Nutritional dietary supplements, namely a food concentrate which may be made into a beverage.
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| Eve Heafey
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| Hearing Officer
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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 DATE October 12, 2021
APPEARANCES
| James Green
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For the Registered Owner
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| No one appearing
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For the Requesting Party
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AGENTS OF RECORD
| Gowling WLG (Canada ) LLP
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For the Registered Owner
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| Heidi Jensen (Jensen IP)
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For the Requesting Party
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