Citation: 2022 TMOB 082

Date of Decision: 2022-04-26

IN THE MATTER OF A SECTION 45 PROCEEDING

	Smart & Biggar	Requesting Party
and
	JTEKT Corporation	Registered Owner
	TMA825,081 for JTEKT	Registration

[1] At the request of Smart & Biggar (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 May 22, 2019, to JTEKT Corporation (the Owner), the registered owner of registration No. TMA825,081 for the trademark JTEKT (the Mark).

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

Metalworking machines and tools, namely, lathes, rolling mills, tubing mills, mechanical presses, manual presses, hydraulic presses, oil hydraulic presses, pneumatic drills, pneumatic hammers, grinders, sanders, electric drills, electric hammers, screwdrivers, nut runners, buffers, polishers, gear cutters, taps, thread chasers, drill bits, thread milling cutters, turning point tools, broaches, namely, a series of progressively taller chisel points mounted on a single piece of steal, milling cutters, reamers, cemented carbide tools, namely, cutting tools, anti-corrosive tools and anti-abrasive tools made of cemented carbide, diamond cutting tools, moulds and dies for metal-forming, forging moulds, press dies for metal forming; loading-unloading machines and apparatus, namely, cranes, conveyors, hoisting or winding gears, winches, windlasses, capstans (not for ships or boots), chain blocks, hoists, escalators, elevators, power jacks, unloading hoppers, automatic warehousing systems, namely, automated storage and retrieval systems for goods; parts for non-electric prime movers for land vehicles; pneumatic or hydraulic machines and instruments, namely, pumps, vacuum pumps, blowers, compressors; shafts, axles or spindles (not for land vehicles); bearings (machine elements not for land vehicles); shaft couplings or connectors (machine elements not for land vehicles); bearings (machine elements not for land vehicles); power transmissions and gearing for machines (not for land vehicles); valves (machine elements not for land vehicles); waste compacting machines and apparatus, namely, grinding sludge compressor; measuring or testing machines and instruments, namely, temperature indicators, gasometers, thermometers, water meters, balances, tape measures, volume metric measurers, planimeters, rulers, pressure gauges, level indicators, acoustic meters, tachometers, accelerometers, refractometers, luminoflux meters, photometers, altimeters, hydrometers, illuminometers, vibration meters, noisemeters, logs for recording journey data, speed indicators, calorimeters, viscosimeters, concentration meters, gravimeters, densimeters, dynamometers, flowmeters, angle gauges, spherometers, inclinometers, interferometers, profile projectors, graduation checkers, length measuring gauges, comparators for comparing products to standards, alidades for angular measurements, base plates, clinometers, tripods, magnetic compasses, surveying compass needles, gyrocompasses, magnetic gyrocompasses, precision theodolites, rod-floats, surveying chains, targets, transits, levelling rods, sextants, meridian transits, astronomical spectrographs, zenith telescopes, charts for identifying hiding-power of paint, thermosensitive temperature indicator strips, test pieces for rust formation testing; power distribution or control machines and apparatus, namely, electric switches, electric relays, circuit breakers, power controllers, current rectifiers, electric connectors, electric circuit closers, electric capacitors, electric resistors, local switches, power distributing boxes, plugboards, fuses, lightning arresters, electric transformers, induction voltage regulators, electric reactors; rotary converters; telecommunication machines and apparatus, namely, intercoms, telephone sets, teletypewriters, television receivers, television transmitters, radio receivers, radio transmitters, radio direction finders, public-access systems and instruments, compact disc players, juke boxes, tape recorders, electric phonographs, record players, video cameras, videodisc players, videotape records, antennas, cabinets, coils, magnetic tape erasers, magnetic tape cleaners, magnetic head erasers, magnetic head cleaners, loudspeakers, connectors, stands and racks, dials, electric capacitors, fuses, electric resistors, blank magnetic tapes for tape recorders, change-over switches, plugboards, pickups, blank video tapes, indicator lights, electrical phonomotors, headphones, electrical transformers, protectors, microphones, blank record disks, sprays for phonograph records; electronic machines, apparatus and their parts, namely, geiger counters, high frequency welders, cyclotrons, industrial betatrons, magnetic object detectors, shield cases for magnetic disks, echo sounders, ultrasonic flaw detectors, ultrasonic sensors, electronic door closing systems, computers, electron microscopes, electronic desk calculators, word processors, electron tubes, semi-conductor elements, electronic circuits, computer programs for controlling machine tools and vehicles; heat exchangers (for chemical processing); industrial furnaces; shafts, axles or spindles (for land vehicles); bearings (for land vehicles); shaft couplings or connectors (for land vehicles); bearings (for land vehicles); power transmissions and gearings (for land vehicles); AC motors or DC motors for land vehicles (not including 'their parts'); vessels, namely, boats and ships and parts and fittings therefor; aircraft and their parts and fittings; railway rolling stock and their parts and fittings; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings.

[3] 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 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 May 22, 2016 to May 22, 2019.

[4] The relevant definition of use 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.

[5] 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 goods specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].

[6] In the absence of use, pursuant to section 45(3) of the Act, the registration is liable to be expunged, unless the absence of use is due to special circumstances.

[7] In response to the Registrar’s notice, the Owner furnished the affidavit of Yasunori Sasatani, sworn on December 20, 2019 in Japan.

[8] Both parties submitted written representations. Only the Owner was represented at an oral hearing. The hearing was held jointly with respect to the summary cancellation proceeding for registration No. TMA920,041 for the trademark JTEKT & DESIGN. As the evidence and representations differ, a separate decision will be issued with respect to that proceeding.

The Evidence

[9] Mr. Sasatani is the General Manager of the Owner’s Intellectual Property Legal Division. In his affidavit, he states that the Owner is an engineering and manufacturing company that sells its “suite of carrier solutions” to motor carrier companies in Canada [para 7].

[10] Mr. Sasatani explains that a licence agreement exists and did exist during the relevant period such that the Owner had direct control over the quality and character of goods sold in association with the Mark by its affiliate and Canadian distributor, Koyo Canada, Inc., and its affiliate and American distributor, JTEKT Toyoda Americas Corp. [paras 8 to 11, Exhibit C].

[11] With respect to use of the Mark, Mr. Sasatani concedes that the evidence does not show use of the Mark in association with all of the registered goods. More particularly, he states that “The registered goods not shown to be used in association with the [Mark] were either (i) used and [the Owner] was unable to locate the evidence in time or (ii) have special circumstances that explain the reason for non-use” [para 47]. In this respect, Mr. Sasatani attests that, inter alia, the specialized nature of the registered goods justifies non-use of the Mark in Canada during the relevant period [para 48]. However, I note that the Sasatani Affidavit does provide the date of last use for any of the registered goods for which evidence of use was not furnished.

[12] Nevertheless, Mr. Sasatani asserts that “[The Owner’s] Goods were sold in association with [the Owner’s] Mark to motor carrier companies in Canada during the Relevant Period” [para 7]. In particular, his affidavit focuses on the following products:

· “Bearings” [paras 15 to 20, Exhibits D through F];

· “Machining centers” [paras 21 to 29, Exhibits G through M];

· “Grinder” [paras 30 to 33, Exhibits N and O];

· “Gear skiving center” [paras 34 to 37, Exhibits P and Q];

· “Compact programmable controller” [paras 38 to 41, Exhibits R and S]; and

· “Programmable logic controller/central processing unit” [paras 42 to 45, Exhibits T and U].

[13] One of the issues in this proceeding is that, to varying degrees, Mr. Sasatani does not clearly correlate these products to specific registered goods. Rather, Mr. Sasatani tends to list numerous registered goods as being “associated” with each product. Nevertheless, I will begin by summarizing the evidence as it is described in the Sasatani Affidavit, and then discuss further below the correlations proffered by the Owner in its representations.

[14] Exhibits D through F relate to the product “Bearings”. Exhibit D includes photographs of a box labelled “Bearings”, which Mr. Sasatani identifies as the Owner’s “Bearing Box for bearings (for land vehicles”; the Mark appears on the depicted box. Mr. Sasatani confirms that “Bearing Boxes identical to those shown” in the exhibit were sold during the relevant period [para 16]. He also states that “bearings (machine elements not for land vehicles) were sold in the same manner as shown” in the exhibit during the relevant period [para 17]. Exhibit E is an invoice showing sales of six products from the Owner to a customer in Ontario. I note that the Mark is displayed at the top of the invoice with two other trademarks next to the Owner’s Canadian distributor’s full name. The six invoiced products are all identified by the same product code, which Mr. Sasatani correlates to an “Angular Contact Ball Bearings” product shown in the Owner’s “Bearings Catalogue Online”. Exhibit F is a printout from that catalogue, showing the specifications for an “Angular Contact Ball Bearings” product. The catalogue page appears to display links to over a dozen categories of bearings in the catalogue, such as “Deep Groove Ball Bearings” and “Skateboard Bearings”. I note that none of the Bearing products or categories are identified in the catalogue as “Bearings (for land vehicles)” or “Bearings (machine elements not for land vehicles)” per se.

[15] Exhibits G through M relate to the product “Machining centers”. Exhibit G is a printout of the product page for a particular model of machining center labelled “Horizontal spindle machining center”, taken from the Owner’s website. The Mark is displayed at the top of the page next to the website’s search bar. However, an image of the product shows that the trademark TOYODA is displayed on the product itself, along with the model number. The TOYODA trademark is also displayed at the top of the product page. Exhibit H consists of an invoice and related shipping documents for the sale of that model of machining center from “JTEKT Toyoda Americas Corp” to a Canadian customer during the relevant period. Exhibit I includes a photograph of that model of machining center, which Mr. Sasatani identifies as representative of the machining centers sold in Canada by the Owner during the relevant period. While the TOYODA trademark is visible, I note the Mark is not visible on the depicted machining center. Exhibits J to M consist of similar invoices, shipping documents and photographs relating to the sale of two different models of “‘Toyoda’ Horizontal Machining Center” to customers in Canada during the relevant period. Again, the Mark does not appear on the depicted machining centers.

[16] As indicated above, Mr. Sasatani appears to correlate these machining centers with approximately 30 of the registered goods – he states that “Said machining centers that were sold in Canada during the Relevant Period were associated with the following registered goods” – including “machining tools”, “metalworking machines and tools”, “diamond cutting tools”, “electric relays”, and “computer programs for controlling machine tools” [para 22]. However, as further discussed below, Mr. Sasatani does not elaborate on these apparent correlations or what is meant by “were associated”, nor do the exhibited product pages list or identify any of the referenced registered goods per se.

[17] Exhibits N and O relate to “Grinder[s]”. Exhibit N is a printout of the product page for “CBN Small Crankshaft Grinders”. Exhibit O consists of photographs of such product and its identification plate, which Mr. Sasatani identifies as representative of the grinders sold in Canada by the Owner during the relevant period. The Owner’s name, “JTEKT CORPORATION” appears on the identification plate. However, Mr. Sasatani provides no invoices or other evidence of transfers of any grinder products.

[18] Exhibits P and Q relate to “Gear skiving center[s]”. Exhibit P is a printout of the product page for “Gear skiving centers”. Exhibit Q consists of photographs of such product and its identification plate, which Mr. Sasatani identifies as representative of the gear skiving centers sold in Canada by the Owner during the relevant period. Again, while I note that the Owner’s name appears on the identification plate, Mr. Sasatani furnishes no invoices or other evidence of transfers for this product.

[19] Exhibits R and S relate to “Compact programmable controller[s]”. Exhibit R is a printout of the product page for the “TOYOPUC-PC10G series” of compact programmable controllers. Exhibit S consists of photographs of a particular product of the series and its identification plate, which Mr. Sasatani identifies as representative of the product sold in Canada by the Owner during the relevant period. Once again, while the Owner’s name is visible on the depicted identification plate, the evidence includes no invoices or any other evidence of transfers with respect to such controllers.

[20] Exhibits T and U relate to “Programmable logic controller/central processing unit[s]”. Exhibit T is a printout of the product page for safety software circuits labelled “TOYOPUC-PCS”. Exhibit U consists of photographs of such product and its identification plate, which Mr. Sasatani identifies as representative of the product sold in Canada by the Owner during the relevant period. While the Owner’s name is visible on the depicted identification plate, the evidence includes no invoices or other evidence of transfers of these products.

[21] For Grinders, Gear skiving centers, Compact programmable controllers and Programmable logic controller/central processing units, Mr. Sasatani also appears to correlate each of these products with a broad spectrum of registered goods [paras 31, 35, 39 and 43]. Again, however, he does not elaborate on these apparent correlations.

[22] Finally, Mr. Sasatani provides screenshots from the Owner’s website, www.jtekt.co.jp, including a printout of the Owner’s company profile page [paras 12 and 13, Exhibits B and C].

Analysis and Reasons for Decision

Bearings

[23] In its representations, the Requesting Party does not appear to take issue with Mr. Sasatani’s correlation of the Owner’s “Bearings” product with the registered goods “Bearings (for land vehicles)”. However, the Requesting Party submits that the Exhibit E invoice “does not permit the Registrar to conclude that [the Mark] was associated with the goods ‘bearings (for land vehicles)’ at the time of sale in Canada” [Requesting Party written representations at para 24]. The Requesting Party also argues that the language in the affidavit is ambiguous as to whether the depicted bearing boxes were actually sold in Canada, submitting that such ambiguity should be interpreted against the Owner [para 25].

[24] However, at least with respect to the registered goods “bearings (for land vehicles)”, Mr. Sasatani states that the Mark was displayed on the Owner’s bearing boxes, and he provides representative examples of how the Mark was displayed on such boxes during the relevant period [Exhibit D]. Furthermore, he provides a representative invoice demonstrating sales of such bearings during that period to a customer in Ontario[Exhibit E].

[25] As such, considering the evidence as a whole, I am satisfied that the Owner has demonstrated use of the Mark in association with “bearings (for land vehicles)” within the meaning of sections 4 and 45 of the Act.

[26] On the other hand, with respect to the registered goods “Bearings (machine elements not for land vehicles)”, I agree with the Requesting Party that Mr. Sasatani’s assertion of “sales” with respect to these goods amounts to a bare assertion. In this regard, as noted by the Requesting Party, Mr. Sasatani only correlates the invoiced products shown in the Exhibit E invoice with “bearings (for land vehicles)” [Requesting Party written representations at para 28].

[27] Indeed, only one product code appears on the invoice, and Mr. Sasatani merely states that “bearings (machine elements not for land vehicles)” were sold “in the same manner” [para 17]. However, there is no evidence of transfers of other types of bearings. Even if the bearings sold were actually for general purpose, namely, both for and not for land vehicles, Mr. Sasatani correlated the product evidenced to have been sold and transferred with the former.

[28] Having accepted the Exhibit E invoice as demonstrating evidence of transfers for “bearings for land vehicles”, the Owner was obligated to furnish separate evidence with respect to “bearings (machines elements not for land vehicles)” [per John Labatt, supra]. As expressed by the Federal Court, a registered owner who chooses to provide evidence of a single sale is “playing with fire in the sense that he must provide sufficient information about the context of the sale to avoid creating doubts in the mind of the Registrar or the Court that could be construed against him” [Guido Berlucchi & C Srl v Brouillette Kosie Prince, 2007 FC 245, 56 CPR (4th) 401 at para 20]. Although originally expressed more specifically in the context of questions regarding a trademark owner’s normal course of trade, I consider the observation applicable in the circumstances of this case as well.

[29] As discussed above, the evidence in this case is consistent with, at best, transfers of “bearings (for land vehicles)”. Accordingly, absent further particulars, there is insufficient evidence from which to conclude that the registered goods “bearings (machine elements not for land vehicles)” were also transferred during the relevant period.

[30] As such, I am not satisfied that the Owner has demonstrated use of the Mark in association with “bearings (machine elements not for land vehicles)” within the meaning of sections 4 and 45 of the Act.

Machining Centers

[31] As noted above, Mr. Sasatani appears to correlate “Machining centers” with approximately 30 of the registered goods. With respect to transfers, the Sasatani affidavit provides evidence of sales of three machining centers [Exhibits H, J, K, L and M]. The exhibited invoices identify these machining centers as either “‘Toyoda’ Horizontal Machining Center” or “‘Toyoda’ Horizontal Spindle Machining Center”. However, these identifications do not clearly correlate to any specific registered good.

[32] In its written representations, the Owner submits that, “at face value and with common sense understanding and referring to the dictionary, machining centers are by nature metal working machines and tools and cutting tools … Therefore, machining centers should not be precluded as evidence to show [the Mark] was used in association with metal working machines and tools and cutting tools in Canada during the Relevant Period [at para 59].

[33] However, it is well established that, although reasonable inferences may be drawn from the evidence provided, it is not for the Registrar to speculate as to the nature of the registered goods. It is the responsibility of the registered owner to show the connection between the registered goods and those included in the evidence [see, for example, Fraser Milner Casgrain LLP v Fabric Life Ltd, 2014 TMOB 135; and Wrangler Apparel Corp v Pacific Rim Sportswear Co, 2000 CarswellNat 3686 (TMOB)].

[34] To the extent that these machining centers can reasonably be considered to be “metalworking machines” or “tools”, I note that these terms are further specified in the statement of goods as, for example, “metalworking machines and tools, namely … diamond cutting tools”. However, the specific nature of the invoiced machining center products is not clear from Mr. Sasatani’s statements or the exhibited materials. As such, one is left to speculate as to their nature and which, if any, of the approximately 30 “associated” registered goods correlate in fact to the machining centers actually transferred in Canada.

[35] In any event, I also note that, while the trademark TOYODA appears on the depicted machining centers, it is not clear from the evidence whether the Mark also appeared on such products and it is otherwise not clear from the evidence whether the Mark was associated with such machining centers at the time of transfer.

[36] In view of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with any machining center products within the meaning of sections 4 and 45 of the Act.

Grinders, Gear skiving centers, Compact programmable controllers and Programmable logic controller/central processing units

[37] With respect to “Grinder[s]”, although Mr. Sasatani appears to correlate this product with a lengthy list of registered goods and does not explain these apparent correlations, in its representations, the Owner submitted that such product correlates to the registered goods “Metalworking machines and tools, namely … grinders”. Notwithstanding the absence of direct documentary evidence of transfers in the evidence, the Owner further submitted that Mr. Sasatani’s statement that grinders were sold in Canada, together with photographs showing how the Mark was displayed on such goods, is sufficient to maintain the registration with respect to “grinders”.

[38] Although invoices are not mandatory in order to satisfactorily reply to a section 45 notice [Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)], some evidence of transfer in the normal course of trade in Canada is necessary [John Labatt, supra]. Such evidence can be in the form of documentation like invoices or sales reports, but can also be through clear sworn statements regarding volumes of sales, dollar value of sales, or equivalent factual particulars [see, for example, 1471706 Ontario Inc v Momo Design srl, 2014 TMOB 79].

[39] In this case, even in the context of the evidence as a whole, I consider the mere statement that grinders were “sold” in Canada to be insufficient. In this regard, as noted above, while Mr. Sasatani states that it was difficult to locate evidence, he also states that there were special circumstances excusing non-use. Therefore, it is not clear whether Mr. Sasatani was unable to locate invoices for such grinder products, or whether such products were available for sale but ultimately were not sold or transferred to Canadians during the relevant period due to purported special circumstances or other reasons. If the former, it was incumbent on Mr. Sasatani to otherwise provide sufficient particulars such as clear statements regarding volume of sales of grinders to Canadian customers. In the absence of further particulars, Mr. Sasatani’s statements amount to a mere assertion of use only, rather than statements of fact showing use of the Mark.

[40] Accordingly, I am not satisfied that the Owner has demonstrated use of the Mark in association with “grinders” within the meaning of sections 4 and 45 of the Act.

[41] Likewise, for the other remaining products, aside from Mr. Sasatani’s general assertion that such goods were “sold” in Canada, the Owner furnished no evidence of sales or transfers of such goods per se. For the same reasons above with respect to grinders, I am not satisfied that the Owner has demonstrated use of the Mark in association with any of the other remaining products within the meaning of sections 4 and 45 of the Act.

Remaining Registered Goods

[42] With respect to the remaining registered goods not specifically addressed in Mr. Sasatani’s affidavit, in view of my findings above, I am not satisfied that the Owner has demonstrated use of the Mark with any of the remaining registered goods within the meaning of sections 4 and 45 of the Act.

[43] In summary, I am satisfied that the Owner has demonstrated use of the Mark only in association with “bearings (for land vehicles)”. In the absence of evidence of use of the Mark in association with the remaining registered goods, the issue is whether, pursuant to section 45(3) of the Act, special circumstances existed to excuse such non‑use.

Special Circumstances

[44] The general rule is that absence of use should result in expungement, but there may be an exception where the absence of use is due to special circumstances [Smart & Biggar v Scott Paper Ltd, 2008 FCA 129]. To determine whether special circumstances have been demonstrated, the Registrar must first determine, in light of the evidence, why in fact the trademark was not used during the relevant period. Second, the Registrar must determine whether these reasons for non-use constitute special circumstances [Registrar of Trade Marks v Harris Knitting Mills Ltd (1985), 4 CPR (3d) 488 (FCA)]. The Federal Court has held that special circumstances mean circumstances or reasons that are “unusual, uncommon, or exceptional” [John Labatt Ltd v Cotton Club Bottling Co (1976), 25 CPR (2d) 115 (FCTD)].

[45] If the Registrar determines that the reasons for non-use constitute special circumstances, the Registrar must still decide whether such circumstances excuse the period of non-use. This involves the consideration of three criteria: (i) the length of time during which the trademark has not been in use; (ii) whether the reasons for non-use were beyond the control of the registered owner; and (iii) whether there exists a serious intention to shortly resume use [Harris Knitting Mills, supra].

[46] The intention to shortly resume use must be substantiated by “a sufficient factual basis” [NTD Apparel Inc v Ryan, 2003 FCT 780; see also Arrowhead Spring Water Ltd v Arrowhead Water Corp (1993), 47 CPR (3d) 217 (FCTD)].

[47] All three criteria are relevant, but satisfying the second criterion is essential for a finding of special circumstances excusing non-use [Scott Paper, supra].

Reasons for Non-use

[48] In his affidavit, Mr. Sasatani submits that the reasons why the Mark was not used during the relevant period are that: (i) the Owner’s goods are mainly long-life products of high quality, generally designed to have a life span longer than three years; (ii) it is not unusual for the Owner’s goods to be purchased in periods outside the relevant period; (iii) the Owner’s goods are directed to purchasers that may not need to purchase the Owner’s goods until replacement or additional goods are required; (iv) the Owner’s goods are generally directed to purchasers in specific industries, not readily available to the general public; and (v) the Owner still offers for sale all of the Owner’s goods in Canada [para 48].

[49] In response, the Requesting Party submits that the Owner made a business decision to offer products of this nature and direct them to specific consumers. It contends that the reasons provided for non-use are either business decisions made by the Owner, and/or are common challenges that are faced by businesses in all industries, and are therefore not “unusual, uncommon or exceptional” [Requesting Party written representations at para 57].

[50] First, to the extent that Mr. Sasatani is vague as to which goods or products his stated reasons apply, one is left to speculate as to which reason applies to any particular registered good. For example, it is not clear to what extent “it is not unusual” for the registered goods “bicycles” to be purchased “in periods outside the Relevant Period”.

[51] In any event, in the absence of particulars regarding patterns of sales and efforts to market the Owner’s products in Canada, it is not clear that the stated reasons account for the lack of sales during the relevant period. For example, it is not clear whether the lack of sales of the other registered goods simply resulted from a voluntary business decision to prioritize other markets or certain products, such as bearings.

[52] Even taking Mr. Sasatani’s stated reasons at face value, in view of the foregoing, I am not satisfied that such reasons constitute special circumstances.

Would the Circumstances Excuse Non-use?

[53] Even if I were to accept that the stated reasons could be considered “unusual, uncommon or exceptional” constituting special circumstances, I am not satisfied that they excuse the period of non-use in the present case. In this respect, I would not be satisfied that the Owner has satisfied the criteria set out in Harris Knitting Mills.

Length of non-use

[54] In cases such as this, where the registered owner has not provided a date of last use, the registration date is considered the relevant date for purposes of the first criterion [see, for example, Oyen Wiggs Green & Mutala LLP v Rath, 2010 TMOB 34]. In this case, the Mark was registered in May 2012 and therefore the period of non-use is approaching a lengthy ten years.

Whether reasons for non-use were beyond the control of the owner

[55] As suggested above, the difficulty with alleging, for example, the specialized nature of the goods as special circumstances excusing non-use without further explanation, is that the Owner generally has control over certain aspects of its business, such that it cannot be said that the reasons for non-use were beyond its control. It is well established that factors such as sales processes are generally within a trademark owner’s control [see, for example, IPC - Intellectual Property Centre v Nada Fashion Designs Inc, 2010 TMOB 109]. As such, it is at best not clear whether the stated reasons for non-use were in fact beyond the Owner’s control. In any event, as noted above, Mr. Sasatani is vague as to which particular products or registered goods such reasons apply.

Does a serious intention to shortly resume use exist?

[56] With respect to the third criterion, as noted above, although Mr. Sasatani states that the Owner ‘still offers’ all of the registered goods for sale in Canada, one is left in the dark regarding how long the duration of non-use will persist. Given that Mr. Sasatani does not indicate any date of last use and notwithstanding the purported specialized or expensive nature of the Owner’s products, one is unable to infer any patterns of sales such that a resumption of use can be reasonably predicted.

[57] In view of all of the foregoing, I am not satisfied that the Owner has demonstrated special circumstances excusing non-use of the Mark within the meaning of section 45(3) of the Act in association with any of the registered goods.

Disposition

[58] Accordingly, 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 all of the registered goods except for the two instances of “bearings (for land vehicles)”. 

[59] The amended statement of goods shall now read as follows:

(1) Bearings (for land vehicles); bearings (for land vehicles).

Andrew Bene

Member

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE: 2022-01-24

APPEARANCES

Marta Cheng	For the Registered Owner
No one appearing	For the Requesting Party

AGENTS OF RECORD

Finlayson & Singlehurst	For the Registered Owner
Smart & Biggar LLP	For the Requesting Party