Citation: 2021 TMOB 283

Date of Decision: 2021-12-15

IN THE MATTER OF A SECTION 45 PROCEEDING

	Hide-A-Hose Inc.	Requesting Party
and
	Uncle Lory’s Vac Shack Limited	Registered Owner
	TMA432,769 for HIDE-A-VAC	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. TMA432,769 for the trademark HIDE-A-VAC (the Mark), currently owned by Uncle Lory’s Vac Shack Limited (the Owner).

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

Vacuum cleaner systems and accessories; home, office, apartment and condominium central vacuum cleaner systems and accessories.

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

the proceeding

[4] On September 30, 2020, at the request of Hide-A-Hose Inc. (the Requesting Party), the Registrar of Trademarks issued a notice pursuant to section 45 of the Act to the Owner.

[5] 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 within the three-year period immediately preceding the date of the notice and, if not, the date when the Mark 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 between September 30, 2017 and September 30, 2020 (the Relevant Period).

• [6] The relevant definition of use for goods 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.

• [7] 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].

[8] In response to the Registrar’s notice, the Owner submitted the affidavit of John Robert Paravan, the owner of Uncle Lory’s Vac Shack Limited, sworn on December 29, 2020, together with Exhibits A to C.

[9] No party submitted written representations and no oral hearing was held.

the Owner’s evidence

[10] Mr. Paravan explains that the Owner’s business, located in Ottawa, deals with the manufacture, sale, maintenance and repair of vacuum cleaner systems, parts and accessories [para 1].

[11] Mr. Paravan states that the Owner’s products consist of a vacuum cleaner system and accessories consisting of a micro-lined paper bag, filter, hose, motorized belt-driven cleaner head, and cleaning tools, packaged in a tote bag with a carrying handle. The system is portable and can be used in homes, offices, apartments and condominiums, providing a central vacuum suction and a long hose without the messy and costly installation [para 3].

[12] In support, Mr. Paravan attaches the following relevant exhibits to his affidavit:

· Exhibit “A”: Two photographs of a tote bag bearing the Mark. Mr. Paravan explains that the vacuum cleaner system and accessories are packaged and sold in a tote bag bearing the Mark [paras 3 and 4].

· Exhibit “B”: Photograph of a promotional brochure displaying the Mark, providing a description of the products and showing images of a vacuum cleaner as well as accessories identified as “deluxe straight air attachments”, “mini power nozzle”, “micro tool set”, “deluxe duster”, “super latch”, and “30 foot super hose”. Mr. Paravan states that copies of this brochure were distributed to customers during the Relevant Period [para 4].

· Exhibit “C”: Photographs of two handwritten invoices issued by the Owner during the Relevant Period, showing the sale of “Hide-A-Vac”, “Sebo Toolkit”, “Bags”, “Sock” and one other product that I was unable to decipher. I note that clients are identified only by their names, without an address. However, Mr. Paravan attests that these invoices are representative of the sale of vacuum cleaner systems and accessories in the ordinary course of trade to customers in Ottawa on February 7, 2020 and May 22, 2020 [para 6].

[13] Mr. Paravan also adds that the Owner sells vacuum cleaner systems to residential, as well as business customers, such as the Museum of Civilization and Windsor Home Cleaning [para 5].

analysis and reasons for decision

[14] Throughout his affidavit, Mr. Paravan states that the Owner has sold, in the ordinary course of trade, vacuum cleaner systems and accessories to customers located in Ottawa during the Relevant Period [para 6]. He also shows the Mark was displayed on the tote bag used as packaging for the product [Exhibit “A”] and on the Owner’s invoices to customers in Canada during the Relevant Period [Exhibits “C”].

[15] At paragraph 3 of his affidavit, Mr. Paravan compares HIDE-A-VAC vacuum cleaner systems and accessories to a central vacuum system. However, considering the evidence as a whole, I find that Mr. Paravan’s statement is fairly understood to mean that the HIDE-A-VAC system is a non-central vacuum cleaner system, which is “portable” and rivals the suction and convenience of central vacuum systems, but “without the messy and costly installation”. Aside from this statement and the description of the registered goods, there is no reference to central vacuum cleaner systems in the evidence. Consequently, there is nothing from which to conclude that the Owner has used the Mark in association with “home, office, apartment and condominium central vacuum cleaner systems and accessories”.

• [16] In view of the foregoing, I am only satisfied that the Owner has shown use of the Mark in association with “vacuum cleaner systems and accessories”, within the meaning of sections 4 and 45 of the Act. As the Owner has not provided evidence of special circumstances that would excuse the non-use of the Mark in association with “home, office, apartment and condominium central vacuum cleaner systems and accessories”, I conclude that these goods ought to be deleted from the registration.

disposition

• [17] In view of the above, 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 “home, office, apartment and condominium central vacuum cleaner systems and accessories”.

• [18] Accordingly, the registration will now read as follows:

“Vacuum cleaner systems and accessories.”

Martin Béliveau

Chairperson

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

Cassan Maclean IP Agency Inc.	For the Registered Owner
Ridout & Maybee LLP	For the Requesting Party