Canadian Intellectual Property Office
Citation: 2022 TMOB 265
Date of Decision: 2022-12-28
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: 9176-0264 Québec Inc.
Registered Owner: JD Sports Fashion Plc
Registration: TMA794,544 for JD SPORTS
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. TMA794,544 for the trademark
JD SPORTS (the Mark).
[2] The statement of services is reproduced below:
The bringing together for the benefit of others of clothing, footwear, headgear, sporting apparatus and equipment to be sold online, enabling customers to conveniently view and purchase those goods via an Internet webpage or webpages specializing in the marketing of clothing and sporting goods. (the Services)
[3] For the reasons that follow, I conclude that the registration ought to be maintained.
The Proceeding
[4] At the request of 9176-0264 Québec Inc. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on September 18, 2020 to JD Sports Fashion Plc (the Owner), the registered owner of the Mark.
[5] The notice required the Owner to show whether the Mark was used in Canada in association with the Services at any time within the three-year period immediately preceding the date of the notice and, if not, the date when the Mark 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 September 18, 2017 to September 18, 2020.
[6] The relevant definition of “use” in the present case is set out in section 4 of the Act as follows:
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.
[7] It is well established that the purpose and scope of section 45 of the Act is to provide a simple, summary and expeditious procedure for removing “deadwood” from the register. As such, the evidentiary threshold that the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448, 31 CPR (4th) 270].
[8] With respect to services, the display of a trademark on advertising is sufficient to meet the requirements of section 4(2) when the trademark owner is offering and prepared to perform those services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)].
[9] In response to the Registrar’s notice, the Owner furnished the affidavit of Siobhan Mawdsley, General Counsel and Company Secretary for the Owner, sworn on April 19, 2021 in Bury, England.
[10] Only the Owner submitted written representations and was represented at an oral hearing.
Evidence Summary
[11] In her affidavit, Ms. Mawdsley describes the Owner as “a leading retailer and online distributor of third-party branded sportswear, fashion wear, outdoor wear, fashion and sports footwear, sports equipment and outdoor equipment” [para 2]. She explains that the Owner has a significant online presence as a specialty sports and fashion retailer, and that customers from around the world, including Canada, can buy goods online from the Owner [para 5].
[12] Ms. Mawdsley attests that, during the relevant period, the Owner used the Mark in Canada in the normal course of trade in association with the Services [para 9]. More particularly, she attests that the Owner offered, advertised and performed the Services in Canada through its websites, jdsports.co.uk (the JD Sports Website) and global.jdsports.com [para 10].
[13] Ms. Mawdsley explains that, during the relevant period, the Owner’s websites were visited by a significant number of Canadians to view and purchase “third-party branded fashion items including clothing, footwear, headgear, sporting apparatus and equipment” [para 17]. In support, she provides a chart which she describes as a full breakdown of the approximate number of Canadian visitors to the Owner’s websites during the relevant period. The chart indicates that, at a minimum, 100,000 Canadians visited the JD Sports Website annually during the relevant period.
[14] Ms. Mawdsley also provides a chart showing sales of such third-party items made to Canadians through the JD Sports Website [para 18]. According to the chart, such sales exceeded $100,000 annually during the relevant period.
[15] Aside from advertising the Services on its own websites, Ms. Mawdsley explains that the Owner also extensively advertises through various social media websites including Facebook, Twitter and Instagram [para 20]. In this respect, she states that “social media analytics show that [the Owner’s] Instagram and Facebook accounts had approximately 4,000 and 3,800 Canadian followers during 2019 and 2020 respectively” [para 21].
[16] With respect to display of the Mark, Ms. Mawdsley attests that, during the relevant period, the Owner’s websites prominently featured the Mark in association with the Services [para 12]. In particular, she explains that the Mark was used during the relevant period in connection with the Owner’s JD Sports hub, accessible as a page on JD Sports Website [para 13]. Ms. Mawdsley adds that the hub provides various links to view and purchase items available on the JD Sports Website, as well as “sport links” to view and purchase items by sport, such as the “Fitness & Training”, “Running” and “Boxing” links [paras 13 and 14].
[17] In support of the foregoing, Exhibits B, C and D consist of printouts from the JD Sports Website, including retail store pages (Exhibits B and C), a hub page (Exhibit C) and an online blog page (Exhibit D). The exhibits are a mix of printouts from after the relevant period and printouts representative of how the website appeared during the relevant period, taken from the Wayback Machine at web.archive.org. The retail store pages show various clothing and sports-related items for sale, while the hub and blog pages appear to advertise or link to the retail store pages. I note that the retail store pages primarily display a stylized “JD” logo, whereas the hub and blog pages display the Mark in the form of the logo shown below (the JD Sports Logo):
[18] In addition, Exhibit E consists of three invoices dated during the relevant period, showing sales from the JD Sports Website of sport equipment and clothing-related items to customers located in Canada. I note that the URL for the JD Sports Website is prominently displayed at the top of each invoice.
[19] Lastly, Exhibit F consists of several screenshots of the Owner’s “JD Sports” social media accounts including Facebook, Twitter and Instagram, showing posts from the relevant period. The posts generally consist of advertisements of various clothing and sports-related items, and display the Mark at the top of each page. Ms. Mawdsley confirms that the posts are representative of the manner in which the Owner advertised the Services to its customers, including Canadians, in association with the Mark during the relevant period [para 20].
Analysis and Reasons for Decision
[20]
In the present case, I note that some of the Owner’s evidence is with respect to the JD Logo, and it is not necessarily clear from the aforementioned mix of printouts from the JD Sports Website whether the retail store pages on the website displayed the Mark as registered during the relevant period.
[21] In any event, at a minimum, the evidence demonstrates that the Owner advertised the Services through its hub and blog pages, as well as through social media websites. Furthermore, I accept that the evidence shows that such pages and social media displayed the Mark as registered during the relevant period, either as a word mark or as the JD Sports Logo. In particular, the Exhibit F screenshots show that the Owner’s social media webpages provided advertisements for third-party clothing, footwear, headgear, sporting apparatus and equipment during the relevant period, with the Mark prominently displayed at the top of the social media webpages. Given Ms. Mawdsley’s statement regarding the number of Canadian followers of the Owner’s Instagram and Facebook accounts [para 21], I accept that advertisements posted on such social media accounts would have reached and been accessed by Canadians during the relevant period.
[22] Additionally, the evidenced sales figures and invoices show that sport equipment and clothing was purchased from the JD Sports Website and shipped to customers in Canada during the relevant period.
[23] In view of all of the foregoing, I am satisfied that the Owner has shown use of the Mark in association with the Services within the meaning of sections 4(2) and 45 of the Act.
Disposition
[24] 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.
___________________________
Yves Cozien Papa Tchofou
Hearing Officer
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2022-10-17
APPEARANCES
For the Requesting Party: No one appearing
For the Registered Owner: Kathleen Lemieux
AGENTS OF RECORD
For the Requesting Party: Robic
For the Registered Owner: Borden Ladner Gervais LLP