Citation: 2022 TMOB 189

Date of Decision: 2022-09-27

IN THE MATTER OF A SECTION 45 PROCEEDING

	Vanguard IP LLP	Requesting Party
and
	Lidl Stiftung & Co. KG	Registered Owner
	TMA579,767 for OCEAN SEA	Registration

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. TMA579,767 for the trademark OCEAN SEA (the Mark).

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

Prepared fish and fish products, namely fish preserves, mussels, fish jellies, prepared and/or living mollusca and crustacea, ready to serve meals consisting mainly of fish, seafood cocktail, seafood salad, sardine filets, smoked salmon, tuna in olive oil.

[3] For the reasons that follow, I conclude that the registration ought to be expunged.

The Proceeding

[4] At the request of Vanguard IP LLP (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on June 2, 2020, to Lidl Stiftung & Co. Kg (the Owner), the registered owner of the Mark.

[5] The notice required the Owner to show whether the trademark 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 June 2, 2017 to June 2, 2020.

[6] The relevant definition of use in the present 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] Where the owner has not shown “use”, the registration is liable to be expunged or amended, unless there are special circumstances that excuse the absence of use.

[8] In response to the Registrar’s notice, the Owner furnished an affidavit of Irina Boldeanu, sworn on December 17, 2020.

[9] Only the Requesting Party submitted written representations. No oral hearing was held.

The Evidence

[10] Ms. Boldeanu identifies herself as a student and gave 2000‑630, boulevard René-Lévesque Ouest Montreal (Quebec) H3B 1S6 as her address, which appears to be the address of the Owner’s trademark agents suggesting that she is a student at that firm. She asserts that she has [translation] “general knowledge of the operations of [the Owner]”, a German hard-discount company based on a minimalist concept to reduce costs and offer products at very low prices. She further asserts that the Owner [translation] “offers for sale products such as those set out in the Canadian registration” [paras 1 and 3].

[11] In support to her statements, Ms. Boldeanu includes several screenshots that she states correspond to one of the Owner’s websites. She also reproduces some enlarged images showing products’ packages displaying the Mark in a stylized logo. Regarding these images, she states that [translation] “one can clearly see [the Mark] as it appears on the packaging of the products set out in the registration”. Finally, she states that there is no reason to believe that the images reproduced in her affidavit are not representative of the way the Mark was associated to the registered goods during the relevant period. [paras 4‑6].

Analysis and reasons for decision

[12] In its written representations, the Requesting Party questions Ms. Boldeanu’s personal and direct knowledge of the facts asserted in her affidavit. It submits that the affidavit, including the screenshots and images contained thereto, constitutes inadmissible hearsay as Ms. Boldeanu does not provide any grounds to establish its necessity and reliability. In addition, the Requesting Party submits that the Boldeanu affidavit is silent as to whether the registered goods were sold in Canada during the relevant period and as to the reasons excusing the absence of use of the Mark.

[13] With respect to the admissibility of the affidavit, I agree with the Requesting Party that there is no indication in Ms. Boldeanu’s affidavit that she was at any time an employee of the Owner or that she was otherwise associated with it. There is also no indication that she was personally involved in the Owner’s activities or had access to its business records. Therefore, I’m unable to infer that Ms. Boldeanu is knowledgeable of the Owner’s activities and facts asserted in her affidavit. In this context, the evidence provided in her affidavit constitutes hearsay. Such hearsay evidence is prima facie inadmissible, unless it satisfies the criteria of necessity and reliability [Labatt Brewing Co v Molson Breweries, A Partnership (1996), 68 CPR (3d) 216 (FCTD)]. The Owner provided no reason as to why the evidence had to be introduced through a student employed by its agent, or why a person having direct knowledge regarding the Owner’s activities and use of the Mark was unable to provide the evidence in question. Consequently, the Owner has not established the necessity of submitting evidence by way of an affidavit of its agent’s student. Additionally, it is unclear that Ms. Boldeanu was in a position to assess the reliability of the Owner’s website screenshots.

[14] In any event, even if I were to accept Ms. Boldeanu’s affidavit as necessary and reliable, the Owner would not have discharged its burden to prove use of the Mark in Canada during the relevant period. Indeed, as argued by the Requesting Party, nowhere in her affidavit Ms. Boldeanu states that the products shown in the screenshot images were sold, nor does she provide any invoices or factual particulars that would have established a prima facie case of use of the Mark in association with each of the registered goods in Canada during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA); see also Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184]. Ms. Boldeanu’s affidavit also fails to provide any reasons that would have excused the absence of use of the Mark.

[15] In view of all of the foregoing, I am not satisfied that the Owner has demonstrated use of the Mark in association with the registered goods within the meaning of sections 4 and 45 of the Act.

Disposition

[16] Accordingly, pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be expunged in compliance with the provisions of section 45 of the Act.

Maria Ledezma

Hearing Officer

Trademarks Opposition Board

Canadian Intellectual Property Office

TRADEMARKS OPPOSITION BOARD

CANADIAN INTELLECTUAL PROPERTY OFFICE

APPEARANCES AND AGENTS OF RECORD

___________________________________________________

HEARING DATE No Hearing Held

AGENTS OF RECORD

ROBIC	For the Registered Owner
VanTek Intellectual Property LLP	For the Requesting Party