Citation: 2021 TMOB 274

Date of Decision: 2021-12-07

IN THE MATTER OF A SECTION 45 PROCEEDING

	Sunnylife Health Enterprises Inc.	Requesting Party
And
	Sun River Honey Inc.	Registered Owner
	TMA979,803 for SUN RIVER HONEY	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. TMA979,803 for the trademark SUN RIVER HONEY (the Mark), currently owned by Sun River Honey Inc.

[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: (1) beeswax; (2) beeswax candles; (3) honey; (4) propolis (“the Goods”).

[4] For the reasons that follow, I conclude that the registration ought to be maintained only for the goods “beeswax” and “honey”.

The Proceeding

[5] At the request of Sunnylife Health Enterprises Inc. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on November 18, 2020, to Sun River Honey Inc. (the Owner), the registered owner of the Mark.

[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 November 18, 2017 to November 18, 2020.

[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 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)].

 

[9] In the absence of use as defined above, 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.

[10] In response to the Registrar’s notice, the Owner furnished the affidavit of Aaron Comerford, sworn on February 9, 2021, to which were attached Exhibits A to G.

[11] No written representations were filed and no oral hearing was held.

The Evidence

[12] In his affidavit, Mr. Comerford attests that he has been the President of the Owner since February 1, 2016. The Owner was originally in the business of apiculture which Mr. Comerford explains involves the management and maintenance of bee colonies. However, in 2019, the Owner stopped managing bees and the business moved to the purchase and sale of “products produced by bees such as honey, propolis and beeswax” (para 6).

[13] Mr. Comerford attests that the Owner has sold beeswax continuously since 1998. According to Mr. Comerford, the beeswax is sold in small or bulk blocks that are depicted in Exhibit B. The Exhibit B blocks do not display the Mark.

[14] Exhibit C consists of invoices that Mr. Comerford states show sales in Canada of SUN RIVER HONEY- branded beeswax and/or honey sold during the relevant period. The invoices all depict “SUN RIVER HONEY” in a stylized script at the top of the invoices. The Exhibit C invoices provided are all dated within the relevant period and are as follows:

(a) Invoices dated December 2, 2017, October 22, 2018, November 1, 2019, October 15, 2020 regarding the sale of beeswax to purchasers whose names and addresses have been blacked out.

(b) Invoice dated October 1, 2020 regarding the sale of beeswax to an unnamed purchaser but a Saskatoon, Saskatchewan address is provided.

(c) Invoices dated December 7, 2017 and July 9, 2018 regarding the sale of beeswax and raw honey to unnamed purchasers but a Saskatoon, Saskatchewan address is provided.

[15] Mr. Comerford explains that Exhibit D consists of pictures of a jar and a plastic container of SUN RIVER HONEY honey in raw or crystallized forms.

[16] Exhibit E consists of a printout from the Owner’s website which Mr. Comerford explains shows that SUN RIVER HONEY is available online.

[17] Exhibit F consists of invoices that Mr. Comerford states show sales of honey under the SUN RIVER HONEY mark. The Exhibit F invoices are all within the relevant period. They appear to document the sale of honey to purchasers in Saskatoon, Saskatchewan; Surrey, British Columbia; Scarborough, Ontario; Tustin, California; Michigan; and Shenshen, China.

[18] Mr. Comerford explains in para 13 of his affidavit that propolis is “a resin-like material made by bees from the buds of poplar and cone-bearing trees and is rarely available in its pure form. Propolis must be harvested and is not readily available. The Registrant only sells propolis upon request through emails from customers. Exhibit “G” to Mr. Comerford’s affidavit is a copy of an email relating to an order from one of the Owner’s customers regarding the shipment of propolis”. Exhibit G contains language about propolis options but it does not show any use of the Mark, or any actual transaction in the normal course of trade pertaining to propolis.

Analysis

[19] Given that the Requesting Party has submitted no representations and that the evidence described above clearly shows that the Mark was used in Canada, during the relevant period and within the meaning of sections 4 and 45 of the Act, in association with beeswax and honey, the registration will be maintained for these goods.

[20] However, as the Owner has submitted no evidence of use of the Mark in Canada in association with beeswax candles or propolis, the registration will be expunged with respect to those goods.

 

Disposition

[21] Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended to delete the following goods “beeswax candles” and “propolis” in compliance with the provisions of section 45 of the Act.

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

“beeswax; honey”.

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

MLT AIKINS LLP	For the Registered Owner
OLLIP P.C.	For the Requesting Party