Citation: 2022 TMOB 005

Date of Decision: 2022-01-24

IN THE MATTER OF A SECTION 45 PROCEEDING

	Marks & Clerk	Requesting Party
and
	PB Brands, LLC	Registered Owner
	TMA567,764 for PATEL BROTHERS	Registration

Introduction

[1] At the request of Marks & Clerk (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) on October 23, 2018 to PB Brands, LLC (the Owner), the owner of registration No. TMA567,764 for the trademark PATEL BROTHERS (the Mark). The Mark is registered in association with the following services: “Retail and wholesale grocery store services” (the Services).

[2] The notice required the Owner to furnish evidence showing that it had used the Mark in Canada, at any time between October 23, 2015 and October 23, 2018 (the Relevant Period), in association with the Services. If the Mark had not been so used, the Owner was required to furnish evidence providing the date when the Mark was last in use and the reasons for the absence of use since that date.

[3] The relevant definition of use is set out in section 4(2) of the Act as follows:

4(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.

[4] It is well established that mere assertions of 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 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 services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. It is open to the Registrar, as the finder of fact, to draw reasonable inferences from the facts stated in the affidavit or statutory declaration [BCF SENCRL v Spirits International BV, 2012 FCA 131 at para. 8].

[5] In response to the Registrar’s notice, the Owner furnished the affidavit of Rakesh Patel sworn January 18, 2019 (the Patel Affidavit).

[6] I note that after the Owner was served with the Requesting Party’s written representations, the Owner on October 11, 2019 requested a retroactive extension of time under section 47(2) of the Act in which to file a supplemental affidavit also in the name of Rakesh Patel sworn October 9, 2019 (the Supplemental Patel Affidavit). By ruling of the Registrar dated November 7, 2019, that request for a retroactive extension of time was denied. Consequently, the Supplemental Patel Affidavit is not of record in this proceeding and was not considered in the analysis below. The only evidence considered is the Patel Affidavit.

[7] Both parties submitted written representations. A hearing was held in which only the Owner participated.

Overview of the Owner’s Evidence

[8] The Patel Affidavit can be summarized as follows:

a) Mr. Patel is the Managing Member of the Owner. He attaches as Exhibit “A” to his affidavit a copy of the particulars of registration No. TMA567,764 for the Mark.

b) Mr. Patel states that the Owner is incorporated in the state of New York and describes the Owner as an industry leader in the Indian grocery store and food business, operating directly and through several licensees, a chain of Indian grocery stores under the Mark.

c) Mr. Patel states that the Owner has used the Mark in association with retail and wholesale grocery store services in Canada since September 1999, including during the Relevant Period. Mr. Patel states that the Owner, through its licensee, used the Mark during the Relevant Period in Canada as the name of stores in the following four locations in Canada:

i. Patel Brothers, Scarborough; 2141 Ellesmere Road, Scarborough, M1G 3M6, Ontario, Canada;

ii. Patel Brother, Etobicoke: 3-45 Woodbines Down Blvd, Etobicoke, M9W 6N5, Ontario, Canada;

iii. Patel Brothers, Mississauga: 169 Dundas Street, E, Unit 1-4, Mississauga, L5A 1W8, Ontario, Canada; and

iv. Patel Brothers, Brampton: 8814 The Gore Road, Unit 4-8, Brampton, L6P 0B1, Ontario, Canada.

d) Mr. Patel states that the Mark appeared on signage throughout the stores, including appearing on the storefronts themselves. In this regard, attached as Exhibit “B” to the Patel Affidavit are photographs of the Patel Brothers store locations in Mississauga and Scarborough. The photographs depict the Mark prominently displayed on storefront signage. Mr. Patel states that the photos depict the signage of the storefronts during the Relevant Period and show use of the Mark in association with retail and wholesale grocery store services.

e) Mr. Patel states that the Owner also used the Mark during the Relevant Period in Canada on its Canadian website. Attached as Exhibit “C” to his affidavit are extracts from the Patel Brothers Canadian website (www.patelbrothers.ca) which were captured during the Relevant Period on November 1, 2015 and May 8, 2016. The website extracts from each of those dates includes the following statement on the home page: “We are both proud and humbled to say Patel Brothers has 52 locations in USA and 4 locations in Canada.” On the “Contact Us” page of the website on each of those dates, four Patel Brothers locations in Canada are listed at the addresses in Scarborough, Etobicoke, Mississauga, and Brampton discussed above.

Analysis

[9] The Requesting Party’s arguments fall into two general categories: (1) the Requesting Party argues that the Owner has not demonstrated use of the Mark in association with the Services in accordance with section 4(2) of the Act, and (2) even if such use was demonstrated, it was not use which enured to the Owner pursuant to section 50(1) of the Act. I will address these arguments in turn.

Use in association with the Services

[10] The Requesting Party argues that the Patel Affidavit does not demonstrate use of the Mark in association with the Services, because the affidavit does not demonstrate that the Owner was willing and able to perform the Services in Canada during the Relevant Period. The Requesting Party notes that the Owner has not provided any invoices, promotional material or purchase orders that might demonstrate use of the mark during the Relevant Period. Instead the Requesting Party argues that the Patel Affidavit constitutes no more than a bare statement of use of the Mark which is insufficient for the purposes of a section 45 proceeding.

[11] However, I agree with the Owner that it has provided specific evidence of use. At paragraphs 5 and 6 of the Patel Affidavit, the affiant states that the Owner has used the Mark during the Relevant Period as part of its operation of stores at four locations in Canada, and exterior signage bearing the Mark for two of those store locations is shown in Exhibit “B”. Mr. Patel expressly states “Such photos depict the signage of the applicable storefronts during the Relevant Period”.

[12] The Requesting Party argues that the two photographs in Exhibit “B” are insufficient because in the first photo (the Mississauga location) the store windows appear to be covered from the inside (either by blinds or paper), and in the second photo (the Scarborough location) the Requesting Party notes that there is additional signage saying “Patel Brothers Opening Soon”. The Requesting Party argues that these aspects of the photos indicate that the stores were not open and that the Owner was not able to provide the Services. I do not consider these arguments persuasive. First, I do not consider either photo to suggest the store was not operating; indeed, in the photograph of the Scarborough location there appears to be a line of people waiting to enter the store. Further, I agree with the Owner that the photographs demonstrate the display of the Mark on store signage and that, coupled with the statements in the affidavit that the Mark was displayed on store signage during the Relevant Period as part of the operation of the stores, is sufficient to demonstrate use of the Mark in association with the Services.

[13] In addition, in Exhibit “C”, the Owner has demonstrated the display of the Mark on its Canadian website during the Relevant Period, advertising the four store locations within Canada. I consider this to be advertising displaying the Mark which also constitutes use of the Mark for the purposes of section 4(2) of the Act, given that the evidence indicates that the Owner was willing and able to perform the Services during the Relevant Period.

[14] In view of the above, I am satisfied that the Mark was used in Canada during the Relevant Period in association with the Services, in accordance with section 4(2) of the Act. The question of whether that use constituted use of the Mark by the Owner is addressed below.

Use which enures to the Owner

[15] At paragraph 6 of the Patel Affidavit, the affiant states that “[the Owner], through its licensee, used the Trademark during the Relevant Period in Canada as the name of stores in the following four locations in Canada [...]”. As noted by the Requesting Party, the affidavit does not include a discussion of the specific licensing terms, a copy of any license agreement, nor is there an express statement in the affidavit that the Owner has direct or indirect control of over the character and quality of the Services offered in association with the Mark. The Requesting Party argues that these circumstances give rise to an ambiguity in the evidence which must be interpreted against the Owner, namely, the Requesting Party submits that the Owner has not demonstrated the requisite control over the character and quality of the Services for any use of the Mark to enure to the Owner pursuant to section 50(1) of the Act.

[16] While the Patel Affidavit certainly lacks detail on this issue, when the affidavit is considered as a whole, I am not persuaded that it contains an ambiguity that must be read against the Owner with respect to section 50(1) of the Act. In particular, I do not consider there to be any evidence in the Patel Affidavit which suggests an absence of the requisite control, and I agree with the Owner that a reasonable inference that such control exists can be drawn from the facts in the affidavit [see Valhalla Pure Outfitters Inc v Pure Licensing Limited, 2017 TMOB 86, 149 CPR (4th) 326 at paras 26-29 and GMAX World Realty Inc v RE/MAX, LLC, 2015 TMOB 169 at paras 27-28, where the Registrar found section 50(1) satisfied despite the absence of express statements of control]. For example, at paragraph 3 of the Patel Affidavit, the affiant describes that it is the Owner that is “operating directly, and through several licensees, a chain of Indian grocery stores under the Trademark”. At paragraphs 4 and 5 of the Patel Affidavit, the use of the Mark in association with the Services in each case is characterized as the Owner’s use. Further, paragraph 7 and Exhibit “C” to the Patel Affidavit demonstrate the Owner’s use of the Mark on its Canadian website during the Relevant Period, advertising the four Canadian store locations as part of its own operations. I consider all of these facts to be consistent with a circumstance in which the Owner had control over the character and quality of the Services being provided.

[17] In view of the above, the Owner has satisfied me that the use of the Mark in association with the Services, as set out in the Patel Affidavit, is use of the Mark which enures to the Owner in accordance with section 50(1) of the Act.

Disposition

[18] Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be maintained in compliance with the provisions of section 45 of the Act.

Timothy Stevenson

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE 2021-09-23

APPEARANCES

Madeleine Hodgson	For the Registered Owner
No one appearing	For the Requesting Party

AGENTS OF RECORD

Norton Rose Fulbright Canada LLP	For the Registered Owner
Marks & Clerk	For the Requesting Party