| OPIC
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CIPO
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| LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADEMARKS
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Citation: 2022 TMOB 148
Date of Decision: 2022-08-09
IN THE MATTER OF TWO SECTION 45 PROCEEDING
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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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TMA910,422 for Red, Black and Brown Colour Arrangement Design and TMA910,437 for Colour Arrangement and Chinese Characters Design
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Registrations
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Introduction
[1] This decision involves summary expungement proceedings under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) with respect to registrations No. TMA910,422 for the trademark Red, Black and Brown Colour Arrangement Design (Colour Design), and No. TMA910,437 for the trademark Colour Arrangement and Chinese Characters Design (Character Design) (collectively, the Marks).
[2] The Colour Design is shown below:
[3] The registration for the Colour Design includes the following colour claim:
Colour is claimed as a feature of the trade-mark. The mark consists of a series of horizontal stripes, namely, from top to bottom, one brown stripe (PANTONE 490C), a narrow red stripe (PANTONE 186C), a narrow black stripe, a thick red stripe (PANTONE 186C), two narrow black stripes separated by a narrow red stripe (PANTONE 186C), and a further thin red stripe (PANTONE 186C). PANTONE is a registered trade-mark.
[4] The Character Design is shown below:
[5] The registration for the Character Design includes the following colour claim:
Colour is claimed as a feature of the trade-mark. The mark consists of a rectangle with the following horizontal stripes in order from top to bottom: a stripe in brown (Pantone 490C); a stripe in red (Pantone 186C); a stripe in black; a stripe in red (Pantone 186C); the three (3) Chinese characters are yellow (Pantone 108C) and the background is red (Pantone 186C); the various sections of the Chinese characters have a black shading; The bottom horizontal stripes consist of a stripe in black; a stripe in red (Pantone 186C); a stripe in black; and a stripe in red (Pantone 186C). PANTONE is a registered trade-mark.
[6] For the reasons that follow, I conclude that the registrations ought to be amended.
Proceedings
[7] At the request of Guangzhou Wanglaoji Grand Health Co., Ltd. (the Requesting Party), the Registrar of Trademarks issued two notices under section 45 of the Act on October 30, 2019, to Multi Access Limited (the Owner), the registered owner of the Marks.
[8] The Marks are both registered for use in association with a variety of medicinal, food, and beverage goods, as listed in Schedule A.
[9] Each notice required the Owner to show whether the respective trademark 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 trademark was last in use and the reason for the absence of such use since that date. In both cases, the relevant period for showing use is October 30, 2016, to October 30, 2019.
[10] The relevant definition of use in these cases 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.
[11] In the absence of use, pursuant to section 45(3) of the Act, the registration of a trademark is liable to be expunged, unless the absence of use is due to special circumstances that excuse the absence of use.
[12] In response to both of the Registrar’s notices, the Owner furnished affidavits of Chan Hung To, sworn on May 27, 2020. I note that the affidavits furnished in response to each notice are substantively identical.
[13] Both parties submitted written representations and were represented at a hearing. The hearing was held jointly with respect to the summary cancellation proceedings for registrations No. TMA410,076 for the trademark CHARACTERS-CHINESE DESIGN, No. TMA892,774 for the trademark Chinese Character Design, No. TMA927,934 for the trademark WONG LO KAT Vertical 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
[14] Mr. Chan is the Director of the Owner. He gives an overview of the history of the Owner’s products, 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, the Owner’s tea and herbal tea were considered an effective prevention against influenza [para 6].
[15] He explains that the Owner has licensed JDB Hangzhou Limited (the Licensee) to “oversee the production of the [Owner]’s Tea and Herbal Tea bearing the [Mark]”, stating that the Owner maintains “direct or indirect control over the character and quality of the Tea and Herbal Tea bearing the [Mark]” [para 12].
[16] According to Mr. Chan, during the relevant period, the Owner’s teas and herbal teas 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 to his 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” [para 16, Exhibit C]. The products sold on these invoices are described as “Wong Lo Kat 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].
[17] Mr. Chan attests that the Owner’s tea and herbal tea are sold in Canada in packaging displaying the Marks. Attached to his affidavit as Exhibit B are “representative images of the [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:
[18] Noting that the Marks reproduced above and the respective colour claims may not be immediately clear on their own, I note that, in its representations, the Requesting Party conceded that the first version shown above displays the Marks on a cylindrical can [RP’s written representations at paras 21 and 28].
[19] Attached to Mr. Chan’s affidavit as Exhibit D is a table providing yearly breakdowns of 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 depicted in the Exhibit B images are representative of the products sold in Canada, as shown in the table [para 17].
Analysis and Reasons for Decision
Hearsay
[20] 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 issued by the Licensee, which do not have a corporate relationship with the Owner. It cites Brick Brewing Co v Lakeport Brewing Corp (2003), 35 CPR (4th) 70 (TMOB), for the proposition that business records of third-party companies constitute inadmissible hearsay.
[21] The Owner 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 contained in the Chan affidavit is known to Mr. Chan personally or contained in business records of the Owner and, because the Owner monitors the activities of its exporters and distributors, that it is reasonable to conclude that invoices and bills of lading would be maintained in those records.
[22] I agree with the Owner that Mr. Chan, by virtue of his position, would be knowledgeable of the activities of parties in the Owner’s chain of distribution. In view of this and the supporting statements in his affidavit, I accept that the entirety of the affidavit is admissible.
Use by the Owner
[23] The Requesting Party submits that the Owner has not established licensed use of the Marks in accordance with section 50 of the Act. It submits that the evidence suggests that at least five entities have a role in the manufacture, export, and distribution of the goods and, except for the Licensee, the Owner has not provided evidence that these entities have been licensed to use the Marks.
[24] The Owner submits that there is no obligation to “license” each member of its supply 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.
[25] It is well established that a trademark owner’s ordinary course of trade will often involve 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)].
[26] Moreover, Mr. Chan states that the Owner exerted the requisite control and that is sufficient to establish that any use of the Marks 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
[27] The Requesting Party also submits that the Owner failed to establish its normal course of trade. It submits that the evidence indicates that the production of the tea and herbal tea packaged in the second version of the packaging in the relevant period was supervised by Hung To (Holdings).
[28] 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) the Owner has a Licensee who supervised the production of the Owner’s tea goods, and ii) Wing Tung exported such goods from Malaysia by selling them to the Owner’s exclusive distributor in Canada, Every Green.
[29] In the present case, Mr. Chan described most of the chain of transactions, and his statements are consistent with the exhibits filed. There is no particular type of evidence that must be provided to show the normal course of trade in a section 45 proceeding and the evidence need not be perfect [see Lewis Thomson & Son Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD].
[30] As section 45 proceedings are meant to be simple, summary, and expeditious, it was not 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
[31] The Requesting Party submits that the evidence does not establish the quantities of herbal tea distributed and sold to consumers in Canada beyond a bald assertion that Every Green distributes and sells “Tea and Herbal Tea” in Canada. Moreover, it adds that the Owner did not establish which version of the can as shown in Exhibit B is reflected in the Exhibit C invoices and bills of lading, as well as in the Exhibit D sales table.
[32] 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, and provided the quantities and values of herbal tea sold in Canada each year during the relevant period. It adds that any transfer in Canada, even to a distributor, would be sufficient to demonstrate a transfer pursuant to the Act.
[33] With respect to the issue of transfers generally, I accept that the Exhibit C invoices and bills of lading are sufficient to demonstrate transfers of the product described as Wong Lo Kat Herbal Tea in Canada, by the Owner, during the relevant period.
[34] As for which version of the can “packaging” was sold and reflected in the representative invoices and bills of lading, while the evidence could have been clearer, I accept Mr. Chan’s statements at face value that the Exhibit B images are representative of the cans sold and transferred in Canada during the relevant period, such that both versions were the subject of transfers in Canada.
Display of the Marks
[35] Further to its argument that the evidence is ambiguous as to which version was transferred in Canada, the Requesting Party submits that, as the Marks are only affixed to the first version of the can depicted in Exhibit B, any transfers of the second version would not have constituted use of the Marks. In this respect, the Requesting Party argues that the colour and striping pattern at the bottom of the can does not conform to the colour claims as set out in the registrations.
[36] However, given my finding above that both versions shown in the Exhibit B images were transferred in Canada during the relevant period, I do not need to decide whether the trademarks appearing on the second version constitute display of the Marks as registered.
Use in association with the registered goods
[37] Finally, the Requesting Party submits that the evidence is directed to, at most, the goods “herbal tea” in goods (2), but not “tea” and “herbal tea for food purposes”.
[38] In turn, the Owner submits that use of “Herbal Drink” and “Herbal Tea” on invoices and packaging, supported by the sworn statements of Mr. Chan describing the Owner’s sales of its “Tea and Herbal Tea” in Canada, are sufficient to show use of the Marks in association with both “tea” and “herbal tea”.
[40] Taking into account all of the above, I am satisfied that the Owner has demonstrated use of the Marks 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
[41] 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 “Tea and herbal tea based food products, namely (…) herbal tea for food purposes” from goods (2).
[42] The statement of goods will now read as follows: Tea and herbal tea based food products, namely herbal tea for food purposes.
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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 medicines, 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; plasters, materials for dressings; material for stopping teeth, dental wax; all-purpose disinfectants; preparations for destroying vermin; fungicides, herbicides.
(2) Tea and herbal tea based food 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; 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, barbecue sauces, dipping sauces, hollandaise sauces, hot sauce, meat sauce, savoury sauces, spicy sauces, sweet sauces, vegetable sauces, chili sauce, chutney, fry sauce, horseradish, ketchup, mayonnaise, mustard, olive oil, pesto, pickle, relish, vinegar, wasabi, fish sauce, hoisin sauce, duck sauce, soy sauce, oyster sauce, peanut sauce, plum sauce, chili oil; 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; mineral and aerated waters; fruit juices, syrups for making beverages, namely, fruit squashes, fruit juices, non-alcoholic fruit drinks made from concentrate, non-alcoholic cordials.
TRADEMARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
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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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