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Citation: 2022 TMOB 149 Date of Decision: 2022-08-09
IN THE MATTER OF A SECTION 45 PROCEEDING
| Guangzhou Wanglaoji Grand Health
Co., Ltd.
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Requesting Party
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| Multi Access Limited
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Registered Owner
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TMA927,934 for WONG LO KAT
Vertical Chinese Characters Design
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Registration
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Introduction
[1] This decision involves a summary expungement proceeding under section 45 of the TrademarksAct,RSC1985,cT-13(theAct)with respecttoregistrationNo.TMA927,934for the trademark WONG LO KAT Vertical Chinese Characters Design (the Mark), reproduced below:
[2] The Mark is registered for use in association with a variety of medicinal, food, and beveragegoods,aslistedinScheduleA.ThetranslationoftheChinesecharacterisOLDMAN NAMED WONG GIVES YOU LUCK and the transliteration is WONG LO KAT.
[3] For the reasons that follow, I conclude that the registrations ought to be amended.
Proceeding
[4] At the request of Guangzhou Wanglaoji Grand Health Co., Ltd. (the Requesting Party), theRegistrarofTrademarksissuedanoticeundersection45oftheActonOctober30,2019,to Multi Access Limited (the Owner), the registered owner of the Mark.
[5] The notice required the Owner to show whether the Mark was used in Canada, in association with each of the registered goods, 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 andthereasonfortheabsenceofsuchusesincethatdate.Therelevantperiodforshowinguseis October 30, 2016, to October 30, 2019.
[6] Therelevantdefinitionofuseinthiscaseissetoutinsection4(1)oftheAct,asfollows: 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] Intheabsenceofuse,pursuanttosection45(3)oftheAct,theregistrationisliabletobe expunged, unless the absence of use is due to special circumstances that excuse the absence of use.
[8] InresponsetotheRegistrar’snotice,theOwnerfurnishedanaffidavitofChanHungTo, sworn on May 27, 2020.
[9] Both parties submitted written representations and were represented at a hearing. The hearingwasheldjointlywithrespecttothesummarycancellationproceedingforregistrations No. TMA892,774 for the trademark Chinese Character Design, No. TMA410,076 for the
trademark CHARACTERS-CHINESE DESIGN, No. TMA910,422 for the trademark Red, Black and Brown Colour Arrangement Design, No. TMA910,437 for the trademark Colour Arrangement and Chinese Characters Design, No. TMA879,263 for the trademark WANG JAO LI, No. TMA879,265 for the trademark WONG LO KAT, and No. TMA879,259 for the trademark Chinese Character Design. Separate decisions will be issued with respect to these proceedings.
Evidence
[10] Mr. Chan is the Director of the Owner. He gives an overview of the history of the Owner’sproducts, stating that they were first sold in the 19th century as an effective prevention against and a remedy to different illnesses, such as influenza. He states that, during the relevant period,theOwner’steaandherbalteawereconsideredaneffectivepreventionagainstinfluenza [para 6].
[11] He explains that the Owner has licensed JDB Hangzhou Limited (the Licensee) to “overseetheproductionofthe[Owner]’sTeaandHerbalTeabearingthe[Mark]”,statingthat the Owner maintains “direct or indirect control over the character and quality of the Tea and Herbal Tea bearing the [Mark]” [para 12].
[12] AccordingtoMr.Chan, duringtherelevantperiod,theOwner’steasandherbalteas were produced in Malaysia, and then exported from Malaysia to Canada by Wing Tung Drinks (Malaysia) SDN BHD [Wing Tung], which sold and shipped these products to the Owner’s Canadian distributor, Every Green International Inc. (Every Green) [paras 13-14]. Attached tohis affidavit are representative invoices issued by Wing Tung to Every Green for “the purchase and sale in Canada of the [Owner]’s Tea and Herbal Tea bearing the [Mark] during the Relevant Period”[para16,ExhibitC].Theproductssoldontheseinvoicesaredescribedas“WongLoKat Herbal Drink”. Also attached to his affidavit as part of Exhibit C are representative bills of
lading issued by Wing Tung to Every Green for “the shipment to Canada of the [Owner]’s Tea and Herbal Tea bearing the [Mark] during the Relevant Period” [para 16].
[13] Mr.ChanatteststhattheOwner’steaandherbalteaaresoldinCanadain packaging displayingtheMark.AttachedtohisaffidavitasExhibitBare“representativeimagesofthe
[Owner]’s Tea and Herbal Tea, which were exported to, and distributed and sold in Canada […] during the relevant period” [para 15]. The images depict what appears to be two versions of a can of “herbal tea” from various angles. The label on the first version indicates that the product is
manufactured by “Pokka Ace (M) Sdn. Bhd.” and that manufacturing is supervised by the Licensee. It also identifies Every Green as the Exclusive Distributor of Canada and that “Herbal drink not for medical purposes”. The second version does not indicate which entity manufactured the product, but indicates it was supervised by “Hung To (Holdings)”. Both versions are reproduced below:
[14] AttachedtoMr.Chan’saffidavitasExhibitDisatableprovidingyearlybreakdownsof quantities and dollar values of the Owner’s “Wong Lo Kat Herbal Tea” imported, then distributed and sold in Canada between 2009 and 2019. Mr. Chan confirms that the products depictedintheExhibit Bimagesarerepresentative oftheproductssoldinCanada,asshownin the table [para 17].
Analysis and Reasons for Decision
Hearsay
[15] The Requesting Party objects to portions of Mr. Chan’s affidavit as constituting hearsay. In particular, the Requesting Party submits that the Exhibit C invoices and bills of lading are issuedbytheLicensee, whichdonothavea corporaterelationshipwiththe Owner. ItcitesBrick BrewingCovLakeportBrewingCorp(2003),35CPR(4th)70(TMOB),forthepropositionthat business records of third-party companies constitute inadmissible hearsay.
[16] TheOwner submits that it is reasonable to infer that a witness who has full knowledge of all areas of the Owner’s operations, such as Mr. Chan, the Owner’s director, would be knowledgeable of the activities of parties in its chain of distribution. It adds that the information containedintheChanaffidavitisknowntoMr.Chanpersonallyorcontainedin businessrecords oftheOwnerand,becausetheOwnermonitorstheactivitiesofitsexportersanddistributors,that it is reasonable to conclude that invoices and bills of lading would be maintained in thoserecords.
[17] IagreewiththeOwnerthat Mr.Chan,byvirtueofhisposition,wouldbeknowledgeable oftheactivitiesofpartiesintheOwner’schainofdistribution.Inviewofthisandthesupporting statements in his affidavit, I accept that the entirety of the affidavit is admissible.
Use by the Owner
[18] The Requesting Party submits that the Owner has not established licensed use of the Markinaccordancewithsection50oftheAct.Itsubmitsthattheevidencesuggeststhatatleast fiveentitieshave aroleinthemanufacture,export,anddistributionofthegoodsand,exceptfor the Licensee, the Owner has not provided evidence that these entities have been licensed to use the Mark.
[19] TheOwnersubmitsthatthereisnoobligationto“license”eachmemberofitssupply chain, as long as the Owner initiated the first link in the chain of transactions. Given that
Mr. Chan establishes that the Owner exerts the necessary control over the Licensee and that the
Owner is the first link in the chain of manufacture, export, and distribution to Canada, the Owner submits that any transfer by its Licensee or distributor enures to the benefit of the Owner.
[20] Itiswellestablishedthatatrademarkowner’sordinarycourseoftradewillofteninvolve distributors, wholesalers and/or retailers, and that distribution and sale of the owner’s goods through such entities can constitute trademark use that enures to the owner’s benefit [see Manhattan Industries Inc v Princeton Manufacturing Ltd (1971), 4 CPR (2d) 6 (FCTD); Lin Trading Co v CBM Kabushiki Kaisha (1988), 21 CPR (3d) 417 (FCA)].
[21] Moreover, Mr. Chan states that the Owner exerted the requisite control and that is sufficient to establish that any use of the Mark by the Licensee enures to the benefit of the Owner [per Empresa Cubana Del Tobaco Trading v Shapiro Cohen, 2011 FC 102 at para 84]. As noted by the Owner, it does not have to demonstrate a licence granted to all of the entities involved, as the Owner initiated the first link in the chain of distribution by way of its Licensee.
Normal Course of Trade
[22] The Requesting Party also submits that the Owner failed to establish its normal course of trade.Itsubmitsthattheevidenceindicatesthattheproductionoftheteaandherbalteapackaged in the second version of the packaging in the relevant period was supervised by Hung To (Holdings).
[23] In response, the Owner submits that the product labelling in Exhibit B and the invoices and bills of lading in Exhibit C support Mr. Chan’s statements establishing that i) theOwner has aLicenseewhosupervisedtheproductionoftheOwner’steagoods,andii)WingTungexported suchgoodsfromMalaysiabysellingthemtotheOwner’sexclusivedistributorinCanada,Every Green.
[24] In the present case, Mr. Chan described most of the chain of transactions, and his statementsareconsistentwiththeexhibitsfiled.Thereisnoparticulartypeofevidencethatmust beprovidedtoshowthenormalcourseoftradein asection45proceeding andtheevidenceneed not be perfect [see Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD].
[25] Assection45proceedingsaremeanttobesimple,summary,andexpeditious,itwasnot necessary for Mr. Chan to identify and explain every entity in the chain of distribution for the Owner’s products; the facts provided in the affidavit and exhibits are sufficient to establish the Owner’s normal course of trade.
Transfers in Canada
[26] TheRequestingPartysubmitsthattheevidencedoesnotestablishthequantitiesofherbal tea distributed and sold to consumers in Canada beyond a bald assertion that Every Green distributes and sells “Tea and Herbal Tea” in Canada.
[27] In response, the Owner submits that it filed representative invoices and bills of lading showing the transfer of the goods from the Owner’s exporter to its Canadian distributor in Canada,andprovidedthequantitiesandvaluesofherbalteasoldinCanada eachyearduringthe relevant period. It adds that any transfer in Canada, even to a distributor, would be sufficient to demonstrate a transfer pursuant to the Act.
[28] Withrespecttotheissueoftransfersgenerally,IacceptthattheExhibitCinvoicesand billsofladingaresufficienttodemonstratetransfersof theproductdescribedasWongLoKat Herbal Tea in Canada, by the Owner, during the relevant period.
Use in association with the registered goods
[29] Finally,theRequestingPartysubmitsthat theevidenceisdirectedto,atmost,thegoods “herbal tea” in goods (2), but not “tea” and “herbal tea for food purposes”.
[30] Inturn,theOwnersubmitsthatuseof“HerbalDrink”and“HerbalTea”oninvoicesand packaging, supported by the sworn statements of Mr. Chan describing the Owner’s sales of its “Tea andHerbalTea”in Canada,aresufficienttoshowuseof theMarkinassociationwithboth “tea” and “herbal tea”.
[31] Notwithstandingtheparties’submissions,Inotethatthesecondcategoryofgoodsinthe registration is actually “(2) Tea and herbal tea based food products, namely, […] herbal tea for foodpurposes,tea[…]”. GiventhattheproductsdepictedthroughouttheExhibits aredescribed
as “herbal tea” and “herbal drink”, I find that it falls within the scope of the registered goods “herbal tea for food purposes”.
[32] Takingintoaccountalloftheabove,IamsatisfiedthattheOwnerhasdemonstrateduse of the Mark only in association with “herbal tea for food purposes” within the meaning of sections 4 and 45 of the Act. As there is no evidence of special circumstances before me, the registration will be amended accordingly.
Disposition
[33] 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 deletealloftheregisteredgoods,except“Teaandherbalteabasedfoodproducts,namely (…) herbal tea for food purposes” from goods (2).
[34] Thestatementofgoodswillnowreadasfollows:Teaandherbalteabasedfoodproducts, namely herbal tea for food purposes.
AnnLaure
Brouillette, AnnLaure 2022.08.09 08:55:
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Brouillette,
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| Ann-Laure Brouillette
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| Member
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| Trademarks Opposition Board
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| Canadian Intellectual Property Office
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SCHEDULE A
(1) Chinese medicine, namely herbal tea for medicinal purposes and Chinese herbal-based preparations for the treatment of fever, influenza, coughs, colds, pain, namely headaches, migraines, back pain, joint pain, muscle pain, painful burns, neuropathic pain, abnormal heart beat, sleep hyperhidrosis, insomnia, high blood pressure, headaches, throat infections, ear infections, urinary tract infections, allergies, indigestion, heart burn, alcohol use disorders, anxiety, bone and skeletal diseases and disorders, blood diseases and disorders, cancer, cardiovascular diseases, central nervous system diseases and disorders namely central nervous system infection, brain diseases, central nervous system movement disorders, ocular motility disorders, spinal cord diseases, encephalitis, epilepsy, Alzheimer's, cerebral palsy and Parkinson's disease, diabetes, diabetic neuropathy, endocrine diseases and disorders, namely diabetes osteoporosis, polycystic ovaries syndrome, hypothyroidism, hyperthyroidism, gigantism, acromegaly, growth hormone deficiency, Cushing's syndrome, Addison's disease and menopause, gastrointestinal disease and disorders, inflammation and inflammatory diseases, namely inflammatory bowel diseases, inflammatory connective tissue diseases, inflammatory pelvic diseases, liver diseases and disorders, kidney diseases and disorders, neurodegenerative diseases and disorders, namely multiple sclerosis, dementia, autistic spectrum disorders, epilepsy, Parkinson's disease and Alzheimer's disease, neurological diseases and disorders, namely brain injury, spinal cord injury, seizure diseases and Huntington's disease, obesity, ophthalmic conditions and diseases, namely detached retina, dry eye syndrome, photophobia, sties, conjunctivitis, diabetic retinopathy, glaucoma, macular degeneration and cataracts, peripheral nervous system diseases and disorders, namely muscle weakness, paralysis, sensory dysfunction, diabetic neuropathy, Guillain-Barre syndrome, leprosy, reproductive diseases and disorders, sexual dysfunction, neurological disorders, sleep disorders, migraines, metabolic diseases and disorders namely growth and thyroid diseases, mood disorders, depression, vascular disorders, skin disorders, rheumatic disorders, namely ankylosing spondylitis, tendinitis, capsulitis, osteoarthritis, rheumatic fever and rheumatoid arthritis, arthritis, respiratory conditions namely asthma, whooping cough, bronchitis, emphysema, croup, mountain sickness, pleurisy, sarcoidosis, tuberculosis, sinusitis, hayfever, sleep apnea, snoring, laryngitis, pneumonia, mineral deficiencies, autoimmune deficiencies and for assistance of smoking cessation and promoting weight loss; herbal teas for medicinal use; food for babies; medical plasters, medical and surgical dressings; material for stopping teeth, dental wax; all-purpose disinfectants; preparations for destroying vermin; fungicides, herbicides.
(2) Tea and herbal tea products, namely, teacakes, tea essences, tea extracts, tea substitutes, tea flavouring, tea based breads, tea based cakes, tea based pastries, tea based biscuits, tea based confectionary, herbal tea for food purposes, tea, coffee, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, namely, maize, rice, wheat, sorghum, barley, millet and oats; bread, pastry and confectionery, namely caramels, fondants, fruit jellies, liquorice, pastels, peppermints, pralines, coated nuts, lollipops, marshmallows, sherbets, truffles, chocolates, chocolate bars, candy bars, gum balls, jawbreakers, jelly beans, candy canes, rock candy, fudge, toffees, mint for confectionary; ices; honey, treacle; yeast, baking-powder, salt for food, mustard; vinegar, condiments, namely chutney, ketchup, mayonnaise, relish, salad dressing, sweet pickle, horseradish, mint sauce, tartare sauce, Thousand Island dressing, salad cream; spices; ice.
(3) Beverages, namely, soft drinks, energy drinks, and wines, iced-tea, non-alcoholic rice based beverages not being milk substitutes, aperitifs (non-alcoholic), carbonated beverages (non- alcoholic), non-alcoholic fruit extracts, ginger ale, grape must, must, non-alcoholic fruit drinks made from concentrate, non-alcoholic cordials, malt water, seltzer water, soda water, tonic water, vegetable juices, essences used in the preparation of liqueurs, barley waters, fruit squashes, non- alcoholic cordials, sarsaparilla, seltzer water, soda water, tonic water; preparations for making beverages, namely, soft drinks, energy drinks, and wines, iced-tea, non-alcoholic rice based beverages not being milk substitutes, aperitifs (non-alcoholic), carbonated beverages (non- alcoholic), non-alcoholic fruit extracts, ginger ale, grape must, must, non-alcoholic fruit drinks made from concentrate, non-alcoholic cordials, malt water, seltzer water, soda water, tonic water, vegetable juices, essences used in the preparation of liqueurs, barley waters, fruit squashes, non- alcoholic cordials, sarsaparilla, seltzer water, soda water, tonic water; beers; mineral and aerated waters; fruit juices.
(4) Alcoholic beverages namely, wine, champagne, perry, port, sherry, cider, bitters, distilled spiritsofrice,ricealcohol,gin,rum,vodka,whisky,brandy,liqueurs,cocktails,aperitifs,rice wines, rice-based alcoholic beverages, grain-based alcoholic beverages, sake.
TRADEMARKS OPPOSITION BOARD CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
HEARING DATE: April 13, 2022
APPEARANCES
| Noelle Engle-Hardy
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For the Registered Owner
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| Andy Chow
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For the Requesting Party
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AGENTS OF RECORD
| Smart & Biggar LLP
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For the Registered Owner
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| MLT Aikins LLP
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For the Requesting Party
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