[UNREVISED ENGLISH
CERTIFIED TRANSLATION]
IN THE MATTER OF A SECTION 45 PROCEEDING
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Introduction
False eyelashes, cosmetics for eyelashes, “the Goods.”
[2] For the reasons that follow, I conclude that the registration ought to be amended.
The proceeding
[3] At the request of FAST Fashion Brands GmbH (the Requesting Party), the Registrar of Trademarks gave the notice under section 45 of the Act on January 26, 2021, to B.G. BEAUTÉ INC. (the Owner), the registered owner of the Mark.
[4] 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 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 demonstrating use is between January 26, 2018 and January 26, 2021.
[5] The relevant definition of use in this case is set out in section 4(1) of the Act as follows:
[8] Neither party submitted written representations, and no oral hearing was held.
The evidence
[9] Mr. Benguigui identifies himself as the Owner’s Founder, who has been performing his duties since 2003.
[10] Mr. Benguigui submits that the Owner works in the cosmetics field and owns the website called www.misencil.com, through which the Goods were sold during the relevant period [paragraph 4]. He also submits that the Goods sold bore the Mark displayed on their packaging [paragraph 5].
[11] I note that Mr. Benguigui refers in his affidavit to four exhibits, but only three were attached. I find that the missing exhibit (Exhibit 4) has no bearing on this decision in that this exhibit apparently concerns sales invoices from abroad. Mr. Benguigui described it as invoices showing the sale of goods bearing the Mark in France [paragraph 7].
[12] The three exhibits filed in support of Mr. Benguigui’s affidavit are as follows:
· Exhibit 1: excerpts from the Owner’s website and the archive.org website. I note that a photograph of goods bearing the Mark, identified as “Izia Black Silk Lashes Tray,” appears in the extract of the Owner’s website and that this good is available through this website in different lengths and thicknesses. I also note that the excerpt from the archive.org website is dated during the relevant period and that several goods are listed there, including goods identified as “Izia Black Silk Lashes Tray” and “Izia Black Lashes in Bulk”;
· Exhibit 2: three photos, the first and the third showing a good identified as “Silk Eyelashes” and the second showing the label of that good. I note that the Mark appears on the label displayed on the packaging of the good and within it;
· Exhibit 3: six invoices issued during the relevant period with addresses in Canada. I note that the only items identified in connection with the Mark appearing under the heading “Description” correspond to eyelashes of various length and thickness.
Analysis and reasons for decision
[13] 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. In light of this, the evidentiary threshold that the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448 at para 38] and “evidentiary overkill” is not required [see Union Electric Supply Co Ltd v Registrar of Trademarks (1982), 63 CPR (2d) 56 (FCTD) at para 3]. However, sufficient facts must still be provided to allow the Registrar to find that the mark was used in association with the goods and/or services specified in the registration. In this case, I am of the opinion that the evidence shows that the Mark was used by the Owner during the relevant period in respect of only one of the Goods, namely “false eyelashes.”
[15] This is not the case for “cosmetics for eyelashes” in that none of the general assertions of use of the Mark in association with the Goods made by Mr. Benguigui, are not supported by exhibits relating to this specific type of product. None of the photographs, nor any of the excerpts from the websites in Exhibits 1 and 2, show the use of the Mark in association with cosmetics for eyelashes. Similarly, none of the invoices in Exhibit 3 appear to relate to the sale of such a type of good in association with the Mark. It is trite law 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)].
Decision
[18] The statement of goods will read as follows:
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| Certified translation
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| Daniel Lepine
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CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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HEARING DATE: No hearing held