Canadian Intellectual Property Office
Citation: 2022 TMOB 205
Date of Decision: 2022-10-26
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Engineers Canada/Ingénieurs Canada
Registered Owner: TNMJ Caliber, LLC
Registration: TMA863651 for DYAD DS & Design (2nd)
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. TMA863,651 for the trademark DYAD DS & Design (2nd) (the Mark), owned by TNMJ Caliber, LLC (the Owner), and shown below:
[2] For the reasons that follow, I conclude that the registration ought to be maintained.
The Proceeding
[3] At the request of Engineers Canada/Ingénieurs Canada (the Requesting Party), the Registrar of Trademarks issued a notice to the Owner under section 45 of the Act on November 9, 2021.
[4] 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 November 9, 2018, to November 9, 2021.
[5] The Mark is registered for use in association with the following goods:
Multi-disc clutch system for land vehicles comprising clutches and clutch mechanisms.
[6] The relevant definition of use in the present case is set out in section 4 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 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)]. However, 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.
[8] In response to the Registrar’s notice, the Owner furnished the statutory declaration of Patrick R. Wilson, managing member of the Owner, sworn on February 5, 2022. Neither party submitted written representations and no hearing was held.
Evidence and Analysis
[9] Mr. Wilson states that he is also President and CEO of Midway Industries, Inc. (Midway), an entity that also does business as Centerforce Clutches, based in Arizona. He states that the Owner was formed to own certain patents and/or trademarks, including the Mark. He affirms that any use of the Mark by Midway is under licence by the Owner and that the Owner controls the character and quality of goods sold in association with the Mark.
[10] Mr. Wilson explains that since 2011, the Owner has been selling multi-disc clutch system for land vehicles comprising clutches and clutch mechanisms by itself and/or through Midway. As Exhibit C, he attaches screenshots from Midway’s website showing images of its DYAD DS clutch system goods. He explains that such goods are sold in packaging displaying the Mark; as Exhibit D and Exhibit E, respectively, he attaches images of packaging and an instruction sheet which accompanied the Owner’s clutch system goods sold in Canada during the relevant period. Both the packaging and the instructional sheet display the Mark.
[11] As Exhibit F, Mr. Wilson attaches copies of invoices from Midway dated during the relevant period and addressed to retail customers in Canada. In several cases, the invoices show sales of clutch kits identified as “DYAD DS”; in others, the item is identified as “DYAD DS ASSM”. Based on the totality of the evidence, I am satisfied that these items correspond to the clutch system items shown in Exhibits C, and therefore correspond to the registered goods.
[12] Given that the Owner has demonstrated sales of the registered goods in the normal course of trade in Canada during the relevant period in packaging displaying the Mark by a licensee whose use of the Mark would enure to the Owner, I am satisfied that the Owner has demonstrated use of the Mark within the meaning of sections 4 and 45 of the Act.
Disposition
[13] In view of the above, 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 maintained.
___________________________
G.M. Melchin
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: No hearing held
AGENTS OF RECORD
For the Requesting Party: Macera & Jarzyna LLP
For the Registered Owner: Kirby Eades Gale Baker