Trademark Opposition Board Decisions

Decision Information

Nicole Bleach and Les Constructions Gart Inc. / Gart Construction Inc.

Collection	Trademark Opposition Board Decisions
Date	2022-11-08
Neutral citation	2022 TMOB 212
Application number/Registration number	TMA958,733
Trademark	SUPERKIDUP & DESIGN

Decision Content

A maple leaf on graph paper

Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2022 TMOB 212

Date of Decision: 2022-11-08

UNREVISED ENGLISH

CERTIFIED TRANSLATION

IN THE MATTER OF A SECTION 45 PROCEEDING

Requesting Party: Nicole Bleach

Registered Owner(s): Les Constructions Gart Inc. / Gart Construction Inc.

Registration: TMA958,733 for SUPERKIDUP & DESIGN

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. TMA958,733 for the mark SUPERKIDUP & DESIGN (the Mark), shown below.

Lettres enjolivées ou ornées de dessins formant le mot Superkidup et cinq étoiles

[2] The statement of goods is reproduced below:

(1) Cleansing wipes.

(2) Babies’ diapers; babies’ diaper-pants

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

The proceeding

[4] On September 20, 2021, at the request of Nicole Bleach (the Requesting Party), the Registrar of Trademarks issued a notice pursuant to section 45 of the Act to Les Constructions Gart Inc. / Gart Construction Inc. (the Owner), the registered owner of the Mark.

[5] The notice required the Owner to show whether the trademark had been 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 between September 20, 2018, and September 20, 2021.

[6] The relevant definition of “use” 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] In response to the Registrar’s notice, the Owner submitted the statutory declaration of Ms. Caroline Trudel, CEO of the Owner, sworn on December 17, 2021.

[8] Only the Owner submitted written representations, and no hearing was held.

The Owner’s evidence

[9] Ms. Trudel explains that the Owner has been in business since 1973 and designs and markets internationally babies’ diaper-pants and cleansing wipes [paras 2, 3, and 4]. She states that her customers are Canadian wholesalers or distributors; specifically, she identifies the Canadian Commercial Corporation [para 5] and Colmex Trading International Inc. [para 18].

[10] In support, Ms. Trudel attached the following relevant documents to her declaration:

· Copies of an invoice from the Owner to Colmex Trading International Inc., located in Quebec from the relevant period [Exhibit 7].The invoice includes two products in various formats: “Training pants” and “Baby wipes” [Translation: couches-culottes et lingettes nettoyantes] and includes the words “Training pants and wipes SUPERKID UP” [Translation: couches‐culottes et lingettes SUPERKID UP]. The total of the invoice is $1,066. Ms. Trudel states that this is a sample sale [para 18] and that the Owner is waiting “to settle an agreement” with Colmex [para 19].
· Photographs of packages and shipping boxes of products identified as “Training Pants” and “Soft Cleansing Wipes” [Translation: couches-culotes et lingettes nettoyantes]. All packages and shipping boxes bear the Mark [Exhibit 6]. Ms. Trudel states that these packages are the same as those of the products sold to Colmex Trading International Inc. during the relevant period [para. 18].

[11] Ms. Trudel explains that since 2008, the Owner has been dealing and has “strong business ties” with the Canadian Commercial Corporation [para 14]. She adds that in 2015, outside the relevant period, the Owner made sales to the Canadian Commercial Corporation for approximately $1 million [para 13] and provides a sample of invoices [Exhibit 4] and payment vouchers [Exhibit 5]. In 2016, the Canadian Commercial Corporation’s order for products destined for Cuba [Translation] “was suspended but not cancelled” due to local labour issues and climate, economic, and health factors [para 16] and the Owner expects that this sale will resume toward the end of 2022 [para 21].

[12] To offset the suspension of orders in 2016, the Owner continued to develop its business, identified a new distributor, and started dealing with Colmex Trading International Inc. in June 2021 with sample sale of its products [para 18 and Exhibit 7].

Analysis and reasons for decision

[13] First, in its written representations, the Owner acknowledges that the product “babies’ diapers” [Translation: couches] should be removed from the registration. Consequently, it will be expunged from the registration.

[14] Although the threshold for establishing use in the context of section 45 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 Canada (Registrar of Trade-Marks) (1982), 63 CPR (2d) 56 (FCTD)], sufficient facts must still be provided to permit the Registrar to conclude that the trademark has been used in association with all the goods and services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA) (John Labatt)].

[15] In this case, the Owner demonstrated that in the normal course of business it sold “Training Pants” and “Soft Cleansing Wipes” [Translation: couches-culottes et lingettes nettoyantes] to a Canadian distributor during the relevant period. In addition, the Mark was on the product packaging and the shipping boxes. I am therefore satisfied that the Owner has demonstrated the use of the Mark in Canada within the meaning of sections 4 and 45 of the Act for two products of the registration: “babies’ diaper-pants” and “Cleansing wipes” [Translation: couches-culotes et lingettes nettoyantes].