Citation: 2022 TMOB 135
Date of Decision: 2022-07-20
IN THE MATTER OF A SECTION 45 PROCEEDING
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Requesting Party
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Registered Owner
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TMA307,197 for HUSKY; DESIGN
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Registration
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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. TMA307,197 for the trademark HUSKY; DESIGN (the Mark), shown below:
[2] The Mark is registered for use in association with “Boots and shoes” (the Goods).
[3] For the reasons that follow, I conclude that the registration ought to be maintained only in association with the boots.
The Proceeding
[4] On August 6, 2020, at the request of Mark Sumbulian (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act to 3074153 Canada Inc. (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 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 August 6, 2017 to August 6, 2020.
[6] The relevant definition of use in this 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.
[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. 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]. Nevertheless, sufficient facts must still be provided to allow the Registrar to conclude that the mark was used in association with the goods.
[8] In the absence of use as defined above, pursuant to section 45(3) of the Act, a trademark is liable to be expunged, unless the absence of use is due to special circumstances.
[10] Both parties submitted written representations and were both represented at the hearing that was held.
The Evidence
[11] Mr. Bergeron states that he is the president of the Owner and of Chaussures Régence inc. (Régence), a company in the footwear industry [paras 1 and 4].
[12] Mr. Bergeron states that Régence is a subsidiary of the Owner [para 4]. Régence is also the Licensee of the Owner [para 6]. Mr. Bergeron further confirms that the Owner [translation] “controlled, both directly and indirectly, the characteristics and quality of the Goods sold by Régence under the Licence throughout the relevant period” [para 6].
[13] With respect to the normal course of trade, Mr. Bergeron states that [translation] “the sale in Canada of Régence’s Goods in association with the Mark is done through Régence’s sales to licenced retailers, which in Canada resell the Goods bearing the Mark to businesses and individuals” [para 9].
[14] Mr. Bergeron attached as Exhibit AB-1 to his affidavit [translation] “photographs of packaging and packaging boxes for the Goods” and states that these photographs are representative of the packaging and packaging boxes that were used for the sale of the Goods by Régence in Canada during the relevant period [para 10].
[15] For Exhibit AB-2, Mr. Bergeron attached [translation] “photographs of three types of hangtags” and states that these photographs are representative of the labels that were attached to the Goods when sold by Régence in Canada during the relevant period [para 11].
[16] For Exhibit AB-3, Mr. Bergeron attached [translation] “a photograph of the label bearing the Mark, sewn on the tongue of the boots and shoes constituting the Goods sold” and states that this photograph is representative of the labels sewn onto the Goods when sold by Régence in Canada during the relevant period [para 12].
[17] As shown below and as discussed in greater detail below, it is apparent from Exhibits AB-1, AB-2 and AB-3 that the trademark appearing on packaging, packaging boxes, and labels consists of a variation of the Mark:
[18] Lastly, for Exhibit AB-4, Mr. Bergeron attached to his affidavit [translation] “a sampling of invoices” [para 13]. Exhibit AB-4 consists of three invoices issued by Régence to purchasers in Canada during the relevant period. On the left side of the header of each of these invoices are three logos each incorporating the words “RÉGENCE”, “Acton Canada” and “STC”. The Mark does not appear on these invoices. In his affidavit, Mr. Bergeron identifies three product codes that appear on said invoices and indicates that these codes attest to the sale of the Goods in Canada during the relevant period [para 13]. The product codes identified by Mr. Bergeron correspond to the products described as “H105 men work boots CSA”, “Willow boots men” and [translation] “H800 men’s winter boots”. I note that two of these codes, “Willow boots men” and “H105 men work boots CSA”, appear on two hangtags produced as Exhibit AB-2.
Analysis and Reasons for Decision
[19] In its written representations, the Requesting Party raised numerous issues with respect to Mr. Bergeron’s affidavit and the accompanying exhibits. Its arguments are essentially as follows:
· The evidence only relates to boots;
· The evidence does not relate to the Mark as registered, but to another trademark;
· The submitted specimens of use do not constitute sufficient evidence to establish the required notice of association.
The evidence provided only relates to boots
[20] The Requesting Party asserts, quite rightly, that [translation] “since Exhibit AB-4 does not include any invoices for the sale of shoes, no proof of sale or transfer in connection with these products was provided by the Owner”.
[21] At the hearing, the Owner admitted that the evidence does not demonstrate the use of the Mark in association with “shoes” during the relevant period.
[22] As the Owner has not provided evidence of special circumstances that would excuse non-use of the Mark in association with “shoes” within the meaning of sections 4 and 45 of the Act, I conclude that these goods ought to be deleted from the registration.
The variation of the Mark
[23] The Requesting Party submits that [translation] “it is impossible to conclude from the evidence provided that the Owner used the Mark as registered”.
[24] Based on a comparison of the Mark as registered and the trademark as used and reproduced above, the Requesting Party notes that [translation] “the design for which the Owner alleges use significantly modifies the Mark as registered”, particularly with respect to the substantial modification of the image of the dog, the change in typeface in the text portion of the word “Husky” and the addition of the words “by acton”.
[25] The Requesting Party submits that [translation] “due to these modifications, the dominant features of the Mark as registered, namely the image of the dog and the characteristics of the dog in relation to the word ‘Husky’, were not preserved in the design submitted by the Owner, such that any use of this design caused the Mark to lose its identity, rendering the Mark unrecognizable”.
[26] In support of its view, the Requesting Party cites the following leading cases in this matter: Canada (Registraire des marques de commerce) v Cie internationale pour l’informatique CII Honeywell Bull, SA (1985), 4 CPR (3d) 523 (FCA), Promafil Canada Ltée v. Munsingwear Inc (1992), 1992 CanLII 12831 (FCA), 44 CPR (3d) 59 (FCA), as well as the Registrar’s decision in Dallevigne S.P.A. and Maison des Futailles SEC, 2017 TMOB 32.
[27] Relying on Honeywell Bull, above, Promafil, above, and the decisions cited in paragraph 30 below, the Owner argues instead that the mark as presented in the evidence corresponds to the Mark as registered.
[28] The Owner argues that the dominant features of the Mark are the design representing the top of the head of a Husky dog and the word “Husky”. It points out that these two factors are found in both the Mark as registered and the mark as used and in both cases are presented in the same manner, that is, with the dog’s head design in the upper part and the word “Husky” in the lower part.
[29] Lastly, the Owner contends that the addition of the words “by acton” do not cause the Mark to lose its identity, given the small typeface and the position of the words thus added in relation to the word “Husky”, further adding that the “Acton” mark is itself another trademark as appears on the invoices attached as Exhibit AB-4.
[30] In support of its position, the Owner cites the following decisions:
· Bereskin & Parr LLP v Sing-Lin Foods Corporation, 2013 TMOB 33, in which the use of the following two designs was deemed to constitute a use of the registered mark WOMAN & CHILD DESIGN despite the inclusion of the word “WU-MU” to said designs:
Registered mark:
Designs used:
· W&L Giraffebaby Group Ltd v Sophie la Girafe S.A.S., une société anonyme, 2020 TMOB 12, in which the use of various designs, as illustrated below, was deemed to constitute use of the registered mark SOPHIE LA GIRAFE, despite the changes in the typeface and the positioning of the words “SOPHIE LA GIRAFE”:
Registered mark:
· Hoa Pin Wei Biotech & Food Co., Ltd. v Hai Pa Wang International Group Corp, 2020 TMOB 79, in which the use of the design shown below was deemed to constitute use of the registered mark HAI PA WANG DESIGN, despite the addition of words in Chinese characters inside the logo that makes up said mark:
Registered mark:
Design used:
[31] I generally agree with the Owner.
[32] As set out in the leading cases mentioned above, to determine whether a registered trademark was used in such a way that it retained its identity and remained recognizable despite the differences between the form in which it was registered and the form in which it was used, it is necessary to consider whether the “dominant features” of the trademark were preserved [see Promafil, above]. Determining the elements that constitute the dominant features and the question of whether the variation is sufficiently minor to be able to conclude use of the trademark as it is registered are questions of fact that must be decided based on the specific facts of each case. Lastly, use of a mark in combination with additional material constitutes use of the mark per se as a trademark if the public, as a matter of first impression, would perceive the mark per se as being used as a trademark [see Nightingale Interloc Ltd v. Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)].
[33] In this case, I agree with the Owner that the design representing the top of the Husky’s head and the word “Husky” constitute the dominant features of the Mark. The variations in the stylized design of the dog’s head and the typeface for the word “Husky” do not cause the Mark to lose its identity.
[34] Similarly, the addition of the words “by acton” in the trademark as it is used is secondary and does not prevent the Mark as such from being perceived as the registered trademark. Given the different size and positioning of the words “by acton”, I agree with the Owner that they would not necessarily be perceived as part of the trademark itself. In fact, the words “by acton” may instead be perceived as a separate trademark or as referring to a separate trademark. In this regard, it is well established that there is nothing preventing the use of two trademarks simultaneously in association with the same goods [see AW Allen Ltd. v. Warner-Lambert Canada Inc. (1985), 6 CPR (3d) 270 (FCTD)].
[35] In summary, I find that the Mark has not lost its identity and is recognizable in the form in which it was presented in the evidence.
The notice of association provided by the specimens of use
[37] I do not intend to discuss each of these arguments at length.
[38] It is important to recall first that the evidence must be examined as a whole and that reasonable conclusions can be drawn from the evidence provided [Eclipse International Fashions Canada Inc v. Shapiro Cohen, 2005 FCA 64].
[39] In this case, even if the invoices do not bear the Mark as such, I find that they support Mr. Bergeron’s assertions regarding the sale of “Boots” in Canada during the Relevant Period in association with the Mark when the product codes referenced on these invoices are paired with those appearing on the specimens of packages and labels entered into evidence.
[40] In this regard, Mr. Bergeron states that the packages and boxes illustrated in the AB-1 photographs are the same as those used for the sale of the Goods by Régence in Canada during the relevant period. He also states that the AB-2 photographs are representative of the labels attached to the Goods during their sale by Régence in Canada during the relevant period [paras 10 and 11].
[41] I see no reason to distrust Mr. Bergeron’s assertions. On the contrary, I find that these assertions and their supporting exhibits form a coherent whole.
[42] Consequently, I find that the submitted specimens of use constitute sufficient evidence to establish the required notice of association.
Disposition
[43] In view of all of the foregoing, 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 “shoes”.
[44] Accordingly, the registration will be maintained in association with the following goods only:
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(1) Boots.
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| Yves Cozien Papa Tchofou
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| Hearing Officer
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| Trademarks Opposition Board
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| Canadian Intellectual Property Office
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Certified translation
Tony Santin
The English is WCAG compliant
TRADEMARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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HEARING DATE: 2022-05-24
APPEARANCES
| Barry Gamache
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For the Registered Owner
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| Mark Sumbulian
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For the Requesting Party
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AGENTS OF RECORD
| ROBIC
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For the Registered Owner
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| Mark Sumbulian
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For the Requesting Party
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