Canadian Intellectual Property Office
Citation: 2022 TMOB 208
Date of Decision: 2022-10-27
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Anita Mar dba Trademark Angel
Registered Owner: Forever Natural Inc.
Registration: TMA668,668 for FOREVER NATURAL
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. TMA668,668 for the trademark FOREVER NATURAL (the Mark).
Natural health products namely vitamins; personal care products namely sea sponges, body scrub products of loofah, ramie and sisal, exfoliating slippers, wash cloths, body scrub brushes, nail brushes, foot brushes, hair brushes, foot files, pumice stones for foot and hand care, tooth brushes, gloves for moisturizing hands, slippers for moisturizing feet, apparatus (non-mechanical) for foot, body and hand massaging, massage oils; cosmetics namely blush, eye liner, mascara, foundation powders and creams, eye shadow, lipstick, lip gloss, lip moisturizer, nail polish, nail creams and lotions, facial mask and lotions, cosmetic brushes; tooth paste, hand, face and body soaps and cleansing washes and lotions, skin lotions, moisturizers and creams, hair lotions and sprays, shampoos and conditioners, hair removal lotions, creams and waxes, lotions for cellulite reduction, shower caps, bath pillows, bath turbans, soap dishes and soap holders, towel holders and bathtub trays. (the Goods)
Operation of a business for the distribution of natural health products including personal care products for others. (the Services)
[3] For the reasons that follow, I conclude that the registration ought to be expunged.
The Proceeding
[4] At the request of Anita Mar dba Trademark Angel (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on February 12, 2020 to Windward Ventures Inc. (Windward), the registered owner of the Mark as of that date.
[5] The notice required the registered owner to show whether the Mark was used in Canada in association with each of the Goods and Services 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 February 12, 2017 to February 12, 2020 (the Relevant Period).
[6] On May 21, 2021, the Registrar recorded an assignment of the Mark from Windward to Forever Natural Inc. (the Owner), effective as of April 9, 2021 (i.e. after the Relevant Period).
[7] The relevant definitions of use are 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.
4(2) A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[8] In the absence of use, pursuant to section 45(3) of the Act, the registration is liable to be expunged, unless the absence of use is due to special circumstances.
[9] In response to the Registrar’s notice, the Owner furnished the Affidavit of Jennifer Lewis, sworn on May 11, 2021, to which were attached Exhibits A and B.
[10] Only the Requesting Party submitted written representations. Only the Owner attended the oral hearing.
The Evidence
[11] Jennifer Lewis is the President of the Owner. She describes the Owner as:
… a Canadian company that develops bath and body accessory brands that are sold to some of the largest retailers and independently-owned health stores across North America and internationally.
[12] She describes Windward as a holding company.
[13] Ms. Lewis states that, prior to the assignment of the Mark to the Owner, the Mark was used by the Owner under license from Windward and that Windward had control and did in fact control the character and quality of the Goods and Services associated with the Mark.
[14] Ms. Lewis asserts that the Goods were sold and Services were offered in Canada in association with the Mark during the Relevant Period. In support of her assertion, Ms. Lewis provides Exhibits A and B to her affidavit.
[15] Ms. Lewis describes Exhibit A as consisting of:
… photos of the Goods bearing the Trademark, as well as representative packaging that is associated with the Goods when they were sold in Canada during the Relevant Period.
[16] Exhibit A consists of two photographs. The first appears to be the front panel of a container for shampoo which displays the trademarks URBAN SPA and SPEAKS VOLUMES. The second appears to be the back panel of the same container. The only reference to Forever Natural is as part of the Owner’s corporate name on the back panel, as shown below:
[17] Ms. Lewis describes Exhibit B as consisting of:
… an invoice on which the Trademark appears and which evidences the sale of the Services by the Registrant during the Relevant Period.
[18] The invoice is dated September 25, 2018 and is addressed to Purity Life Health Products in Acton, Ontario. The Mark appears at the top of the invoice, as shown below:
[19] The body of the invoice contains a table which describes the products being sold. There is no reference to the Mark in the descriptions used in the table. The invoice lists the following items:
Body Therapy Brush; The Fluffy Powder & Bronzer Brush; The flat-out loofah; The loads-of-lather pouf; The must-have mositurizing gloves; The bedtime booties; The konjac facial sponge; The get-glowing gloves; The heel-to-toe-foot brush; The love-that-lava pumice; The classic nail brush; The use-it-or-lose-it shower cap; The this-is-bliss bath pillow; The foot therapy kit; The Perfect Pedi Kit; The get-a-grip trio; Black Sleep mask; The boucle bath mitt; The best-ever foot paddle; The bamboo bikini brush; The big squeeze body sponge; Walnut Teardrop Buff; The handy-handle back scrubber; The savvy sister turban; Urban Spa Hair Oil Treatment; Urban Spa Treatment Conditioner; Urban Spa Moisturizing Conditioner; Urban Spa Smoothing Conditioner; Urban Spa Moisturizing Shampoo; Urban Spa Smoothing Shampoo; and, Urban Spa Volumizing Shampoo.
[20] I note that Ms. Lewis does not state whether the invoice accompanied the goods at the time of transfer.
[21] Finally, Ms. Lewis states that approximately 1,328,508 units of the Goods bearing the Mark were sold in Canada by the Owner during the Relevant Period. She also states that the Services were offered to a variety of retailers, including Sobey’s, Whole Foods, Jean Coutu and Purity Life, “by distributing to them its natural health products and personal care products”, and that sales by the Owner to those retailers during the Relevant period totalled approximately CDN $3,000,000.
Analysis and Reasons for Decision
[22] Bare statements that the Mark was in use are not sufficient to demonstrate use in the context of section 45 proceedings [Plough (Canada) Ltd v Aerosol Fillers Inc (1980), 53 CPR (2d) 62 (FCA)]. Although the threshold for establishing use in this proceeding 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 Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to arrive at a conclusion of use of the Mark in association with each of the Goods and Services during the Relevant Period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].
License
[23] It is not necessary to furnish a written license agreement to establish licensed use of a trademark [see Wells’ Dairy Inc v UL Canada Inc (2000), 7 CPR (4th) 77 (FCTD)]. A trademark owner can demonstrate the requisite control of the character or quality of the goods sold under license pursuant to section 50(1) of the Act either by attesting to the fact that it exerts the requisite control or by providing evidence that demonstrates that it exerts the requisite control [Empresa Cubana Del Tobaco Trading v Shapiro Cohen, 2011 FC 102].
[24] Given the clear statement by Ms. Lewis that the use of the Mark during the Relevant Period was under license from Windward and that, pursuant to the license, Windward had control, and did in fact control, the character and quality of the Goods and Services associated with the Mark, I am satisfied that any evidenced use of the Mark during the Relevant Period enured to the benefit of the registered owner at that time, Windward.
Goods
[25] Ms. Lewis asserts that Goods bearing the Mark were sold in Canada during the Relevant Period and, in support of that assertion, she provides the Exhibit A photographs of the front and back panels of a bottle of shampoo. The Mark does not appear on the front panel. On the back panel, the corporate name “Forever Natural Inc.” appears in close association with an address.
[26] As stated in Consumers Distributing Co / Cie Distribution aux Consommateurs v Toy World Ltd, 1990 CarswellNat 1398 (TMOB), “trade-mark and trade-name usage are not necessarily mutually exclusive” [at para 14]. However, the question is whether the Owner has shown use of the Mark in such a way that it is identifiable as a trademark and not merely as a corporate name or corporate identifier. Relevant factors to consider include whether the Mark stands apart from the corporate address and other corporate information to the extent that the public would perceive such display as a trademark and not merely as identification of a legal entity [see also Illico Communication Inc. v Norton Rose SENCRL, 2015 FC 165; Road Runner Trailer Manufacturing Ltd v Road Runner Trailer Co (1984), 1 CPR (3d) 443 (FCTD); Nightingale Interloc Ltd v Prodesign Ltd (1984), 2 CPR (3d) 535 (TMOB)].
[27] Given that Forever Natural is only displayed as part of the corporate name “Forever Natural Inc.” in close association with a corporate address, I find that such display did not constitute use of the Mark. As such, Exhibit A does not support the assertion by Ms. Lewis that the Mark was displayed on the Goods sold in Canada during the Relevant Period.
[28] Ms. Lewis also provides Exhibit B, which consists of an invoice that displays the Mark in a box at the top of the invoice.
[29] The display of a trademark on an invoice may constitute use of the trademark in association with goods if the invoice accompanies the goods at the time of transfer in the normal course of trade [see Hortilux Schreder BV v Iwasaki Electric Co, 2011 FC 967, aff’d 2012 FCA 321].
[30] Here, there is no evidence that the invoice accompanied the Goods at the time of transfer. Accordingly, Exhibit B does not support the assertion by Ms. Lewis that the Mark was displayed on the Goods sold in Canada during the Relevant Period. Further, at the oral hearing, the Owner confirmed that it does not rely on Exhibit B to show use of the Mark on the Goods.
[31] Accordingly, based on the totality of the evidence, I am not satisfied that the Owner has shown use of the Mark, within the meaning of sections 4(1) and 45 of the Act, in association with any of the Goods. As there is no evidence of special circumstances to justify non-use, all of the Goods will be deleted from the registration.
Services
[32] In support of her assertion that the Mark was used in association with the Services, Ms. Lewis provides the Exhibit B invoice. While I am satisfied that display of the Mark on the invoice could constitute use or display of the Mark in association with the performance of services, I am not satisfied that any services evidenced by the Owner correlate to the Services as listed in the registration.
[33] The Services are as follows: “Operation of a business for the distribution of natural health products including personal care products for others” [emphasis added].
[34] As noted above, the business of the Owner, as described by Ms. Lewis in paragraph 8 of her affidavit, is to develop bath and body accessory brands. She goes on to state, in paragraph 13, that the Services were offered to a number of retailers during the Relevant Period by distributing to them “its” natural health products and personal care products.
[36] Further, the Services consist of the “distribution of natural health products including personal care products”. I must give some meaning to the word “including”.
[37] While services are to be interpreted broadly, based on a fair reading of the Services, it would appear that “personal care products are a sub-category of “natural health products”. To put it another way, the distribution of natural health products is inclusive of a subset of such products, namely personal care products.
[38] While many if not all of the goods listed in the Exhibit B invoice would appear to be personal care products, there is no indication that any of the goods fall within the category of natural health products.
[39] In the absence of further particulars from Ms. Lewis, there is insufficient evidence from which to conclude that the services offered were those specified in the registration namely the distribution of natural health products including personal care products.
[40] Accordingly, based on the totality of the evidence, I am not satisfied that the Owner has shown use of the Mark, within the meaning of sections 4(2) and 45 of the Act, in association with the Services. As there is no evidence of special circumstances to justify non-use, the Services will also be deleted from the registration, resulting in expungement.
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 expunged.
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| Robert A. MacDonald
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| Member
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| Trademarks Opposition Board
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| Canadian Intellectual Property Office
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Appearances and Agents of Record
HEARING DATE: 2022-10-06
APPEARANCES
For the Requesting Party: No one appearing
For the Registered Owner: Marie Lussier
AGENTS OF RECORD
For the Requesting Party: Anita Mar dba Trademark Angel
For the Registered Owner: Chitiz Pathak LLP