Canadian Intellectual Property Office
Citation: 2022 TMOB 258
Date of Decision: 2022-12-20
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Palmer IP Inc.
Registered Owner: Rawlings Sporting Goods Company, Inc.
Registration: TMA718,866 for MUTANT
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. TMA718,866 for the trademark MUTANT (the Mark), owned by Rawlings Sporting Goods Company, Inc. (the Owner).
[2] For the reasons that follow, I conclude that the registration ought to be expunged.
The Proceeding
[3] At the request of Palmer IP Inc. (the Requesting Party), the Registrar of Trademarks issued a notice to the Owner under section 45 of the Act on September 16, 2020.
[4] The notice required the Owner to show whether the Mark 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 September 16, 2017, to September 16, 2020.
[5] The Mark is registered for use in association with “Sporting goods, namely, baseball bats and softball bats” (the Goods).
[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 accepted 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 affidavit of Jim Hoscheit, Senior Director, Business Unit Leader for the Owner, sworn on April 16, 2021. Only the Requesting Party submitted written representations and was represented at an oral hearing.
The Evidence
[9] Mr. Hoscheit states that the Owner, a company based in the United States, produces and sells sporting goods products including baseball and softball products. He states that the Owner has sold its products in Canada by way of its wholly-owned Canadian subsidiary (Rawlings Canada), which exists under common corporate control with the Owner. Among the products sold in Canada are a line of baseball bats and softball bats sold in association with the Mark. He states that since as early as 2008, the Owner (under its “Worth Sports” banner) has sold the registered goods in association with the Mark in Canada and the United States. He further states that such goods are typically produced in limited editions or special orders, each of relatively limited quantities. In Canada, such goods are sold by the Owner to Rawlings Canada, and then to the Owner’s Canadian distributors and retailers for distribution and re-sale to Canadian end consumers. He confirms that during the relevant period, the Owner exercised control over the character and quality of goods manufactured and sold in Canada in association with the Mark. As Exhibits 1 and 2, he attaches screenshots from the Rawlings and Worth Sports websites. I note that none of these screenshots show any goods displaying the Mark.
[10] Mr. Hoscheit confirms that the Mark “is currently in use, and during the relevant period, was used, in association with” baseball and softball bats, and that the Mark was printed directly on such bats. As Exhibits 3 and 4, he attaches photographs of two bats displaying the Mark. He confirms that such images are representative of how the Mark was displayed on such goods during the relevant period.
[11] As Exhibit 5, Mr. Hoscheit attaches four “representative (but not exhaustive) sales invoices [...] related to sales of Goods in Canada and the United States”. He describes the first two invoices as showing sales of the Goods by the Owner to Rawlings Canada. I note that both of these invoices are dated December 7, 2020, shortly after the relevant period. The second two invoices show sales by the Owner to its “distributors/retailers located in Rochester, New York”, and appear to be issued by the Owner rather than Rawlings Canada. Both invoices are dated during the relevant period.
Reasons for Decision
[12] As noted by the Requesting Party, the only evidence of transfers of goods displaying the Mark in the Owner’s evidence are the four invoices attached as Exhibit 5. Of these, two show transfers in Canada but are dated outside the relevant period, while the remaining two are dated within the relevant period but show transfers in the United States, with no connection to Canada. It is well established that it not sufficient that the goods were merely offered during the relevant period; some evidence of transfers in the normal course of trade in Canada is necessary [see, for example, Molson Cos v Halter (1976), 28 CPR (2d) 158 (FCTD)]. In this case, however, the Owner has furnished no evidence of a transfer in Canada during the relevant period; moreover, as noted by the Requesting Party, there is not even a clear statement in Mr. Hoscheit’s affidavit that bats bearing the Mark were sold in Canada during the relevant period; instead, Mr. Hoscheit merely states at paragraph 12 of his affidavit that the Owner sold bats bearing the Mark in Canada and the United States since 2008, and at paragraph 18, that the Mark was used in association with the Goods during the relevant period, with no specific reference to Canada.
[13] As there is no evidence demonstrating that there were transfers of the Goods associated with the Mark in the normal course of trade in Canada during the relevant period, I am not satisfied that the Owner has shown use of the Mark within the meaning of sections 4 and 45 of the Act. Further, although Mr. Hoscheit states that the Goods are produced in limited quantities, I concur with the Requesting Party that the Owner has not established that there are special circumstances within the meaning of the Act that may excuse non-use of the Mark, given that the Owner has not suggested that any reasons for such non-use may have been beyond its control.
Disposition
[14] Accordingly, 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.
___________________________
G.M. Melchin
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2022-12-06
APPEARANCES
For the Requesting Party: Andrew Lew
For the Registered Owner: No one appearing
AGENTS OF RECORD
For the Requesting Party: Palmer IP Inc.
For the Registered Owner: Gowling WLG (Canada) LLP