Canadian Intellectual Property Office
Citation: 2023 TMOB 175
Date of Decision: 2023-10-18
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Virgin Enterprises Limited
Registered Owner: Virgin Water Inc.
Registration: TMA956,814 for VIRGIN WATER
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. TMA956,814 for the trademark VIRGIN WATER (the Mark). The registration covers the following goods and services (the “Goods” and “Services”):
Goods
(2) Coffee.
Services
(1) Services of renting, leasing and selling water filtration systems and water coolers.
[2] The owner of the registration is Virgin Water Inc. (the Owner).
[3] For the reasons that follow, I conclude that the registration ought to be amended to delete the Goods. The registration will be maintained in respect of the Services.
The Proceeding
[4] At the request of Virgin Enterprises Limited (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on February 1, 2022, to the Owner.
[5] The notice required the 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 1, 2019 to February 1, 2022.
[6] The relevant definitions of “use” are set out in sections 4(1) and (2) 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.
[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 a registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448 at para 68] and “evidentiary overkill” is not required [see Union Electric Supply Co v Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD) at para 3]. That said, mere assertions of 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)], and 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 and services specified in the registration during the relevant period [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. With respect to services, the display of a trademark on advertising is sufficient to meet the requirements of section 4(2) of the Act 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)].
[8] Where the owner has not shown “use”, the registration is liable to be expunged or amended, unless there are special circumstances that excuse the absence of use.
[9] In response to the Registrar’s notice, on May 2, 2022, the Owner filed the affidavit of Gary Kimel sworn on April 29, 2022 in Toronto, Ontario (the Kimel Affidavit). Mr. Kimel is the President of the Owner.
[10] Both parties submitted written representations. Only the Requesting Party attended the hearing.
Evidence
[11] Mr. Kimel describes the Owner as being in the business of providing water coolers and water filtration systems to customers in Canada. He states that the Owner used the Mark during the relevant period in association with the provision of water coolers and water filtration systems to customers located in Canada. In this regard he attaches as Exhibit “A” to his affidavit an example of a brochure bearing the Mark which he states was used during the relevant period to advertise and promote the Owner’s services and products. In particular, he states that this brochure was displayed in the Owner’s premises and given or sent to prospective and actual customers.
[12] Exhibit “B” to the Kimel Affidavit is described as examples of webpage content obtained from the Internet Archive website (Wayback Machine) which was displayed on the Owner’s website at virginwatercanada.com. This webpage content displays the Mark. Mr. Kimel states that the webpage content as depicted in Exhibit “B” remained on the Owner’s website after February 1, 2019 and into the relevant period; however, in mid-2019 (after the commencement of the relevant period), Mr. Kimel states that the website became a target of hacking attempts and was ultimately taken down in the fall of 2019.
[13] Exhibit “C” to the Kimel Affiavit is the Owner’s Facebook page which displays the Mark and which Mr. Kimel states has been active since 2016 and through the relevant period.
[14] Exhibit “D” to the Kimel Affidavit is described as a customer contract between the Owner and a customer located in Scarborough, Ontario for the provision of water cooler and water filtration systems, effective as of 2018 and which continued through the relevant period. Exhibit “E” is described as an example of one of the invoices issued under that customer contract. In particular, Exhibit “E” is a copy of an invoice obtained from the Owner’s accounting software to the same Scarborough customer for the period from January 1 to March 31, 2019, which Mr. Kimel states was sent on or about March 2019.
Analysis
Goods
[15] Based on the evidence of record, I am not satisfied that the Owner has demonstrated use of the Mark in association with any of the Goods in the registration. I will begin with “coffee”. There is no reference to coffee in the Kimel Affidavit, and no evidence by which I could otherwise infer that coffee was sold by the Owner in association with the Mark during the relevant period or indeed at any time. Further, there is no evidence suggesting special circumstances justifying the absence of use of the Mark in association with coffee during the relevant period. Consequently, coffee must be deleted from the registration.
[16] With respect to “Water coolers, water filtration systems”, I am not satisfied that the Owner has demonstrated use of the Mark in association with those goods in accordance with section 4(1) of the Act. While it is apparent from the evidence that the Owner’s business involves the provision of water coolers and water filtration systems to customers, the evidence does not demonstrate that the Mark appeared on the water coolers or water filtration systems themselves or on their packaging. Nor does the evidence demonstrate that the Mark was otherwise so associated with the goods that notice of the association was given to the person to whom the property or possession was transferred.
[17] For example, with respect to the brochure bearing the Mark included as Exhibit “A” to the Kimel Affidavit, I agree with the Requesting Party that there is no evidence that this brochure was provided or present at the time of transfer of the goods. It is well established that such advertising bearing a trademark, alone, is insufficient to constitute use of a trademark in association with goods for the purposes of section 4(1) of the Act [see Nissan Canada Inc v BMW Canada Inc, 2007 FCA 255 at para 25]. Similarly, with respect to the Owner’s website (Exhibit “B”) and Facebook page (Exhibit “C”) displaying the Mark, there is no evidence to suggest that this display of the Mark was associated with the goods at the time of transfer of the goods to the customer.
[18] With respect to the contract (Exhibit “D”) and invoice (Exhibit “E”) included in the Kimel Affidavit, I note that they do not display the Mark per se. Instead, they display the Owner’s name “Virgin Water Inc.” With these two documents the Requesting Party submits, and I agree, that the display of “Virgin Water Inc.” constitutes the display of the Owner’s trade name rather than display of the Mark. With the contract, the expression “Virgin Water Inc.” is displayed in multiple parts of the contract in a manner that makes clear it is identifying the business name of the Owner as a party to the contract. For example, in the defined terms at the beginning of the contract, it states ““Our”, “We” or “Us” means Virgin Water Inc.” In the invoice, the expression “Virgin Water Inc.” is depicted at the top left of the document directly above business contact information including an address and phone number, and is not depicted in the body of the invoice where the item being delivered is described. Finally, in neither the contract nor the invoice are the words “Virgin Water” depicted in a manner that would distinguish them as a trademark. Instead, the expression “Virgin Water Inc.” is consistently depicted in the same basic font. All of these facts suggest use of a trade name rather than use as a trademark [see, for example, Road Runner Trailer Manufacturing Ltd v Road Runner Trailer Co (1984), 1 CPR (3d) 443 (FCTD); Sterling & Affiliates v ACB Dejac SA (1994), 58 CPR (3d) 540 (TMOB); and Sunny Fresh Foods Inc. v. Sunfresh Limited (2003), 30 CPR (4th) 118 (TMOB)].
[19] In view of the above, I am not satisfied that the Owner has demonstrated use of the Mark during the relevant period in association with the goods “Water coolers, water filtration systems” in accordance with section 4(1) of the Act. Further, there is no evidence to suggest special circumstances which would justify the absence of use. Consequently, these goods will also be deleted from the registration.
Services
[20] With respect to the Services described as “Services of renting, leasing and selling water filtration systems and water coolers”, I am satisfied that the Owner has demonstrated use of the Mark during the relevant period in association with these Services in accordance with section 4(2) of the Act.
[21] First, in my view, the Owner has demonstrated that it advertised the Services in association with the Mark during the relevant period. In particular, the Kimel Affidavit includes a brochure which prominently bears the Mark which Mr. Kimel attests was displayed at the Owner’s premises and given or sent to prospective or actual customers. While the Requesting Party questions the sufficiency of this evidence given that the brochure is undated, I note that the Kimel Affidavit states that the brochure is “an example of a brochure which was used during the [relevant] Period to advertise and promote [the Owner]’s services and products.” In addition, the Owner has included evidence that the Mark was displayed on the Owner’s website and Facebook page during the relevant period to advertise the Services. While the Requesting Party takes issue with the archived versions of the website pre-dating the relevant period, in my view, the Kimel Affidavit adequately explains that the website examples included were displayed for at least a portion of the relevant period. Further, the Kimel Affidavit indicates that the Facebook page displayed the Mark continuously for the entire relevant period.
[22] Second, in my view, the evidence establishes that the Owner was available to provide, and in fact did provide, the Services in Canada during the relevant period. In this regard, I reference the contract and invoice included in the Kimel Affidavit as Exhibits “D” and “E”, respectively. As discussed above, I agree with the Requesting Party that these documents display the trade name “Virgin Water Inc.” rather than the Mark; however, that finding does not dispose of the question of whether the Owner used the Mark in association with the Services during the relevant period, nor does it render these documents irrelevant to answering that question. In particular, the contract and invoice constitute evidence that the Owner was offering the Services to customers in Canada during the relevant period. For example, the contract included as Exhibit “D”, entitled “QUARTER TO QUARTER RENTAL CONTRACT”, was signed by the customer on January 11, 2019 and the Owner on March 18, 2019, and appears to contemplate the Owner’s provision of a water and filtration system to the customer on an ongoing basis. The invoice pursuant to that contract included as Exhibit “E” is dated March 1, 2019 which is during the relevant period.
[23] When the Owner’s evidence is considered as a whole, it demonstrates that the Owner was advertising the Services in association with the Mark during the relevant period, and was offering and able to provide the Services in Canada during the relevant period. Taken together, that is sufficient to constitute use of the Mark pursuant to section 4(2) of the Act. Therefore, the Services in the registration will be maintained.
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 amended to delete the Goods. The registration will be maintained in respect of the Services.
_______________________________
Timothy Stevenson
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2023-06-22
APPEARANCES
For the Requesting Party: Stephanie Karam
For the Registered Owner: No one appearing
AGENTS OF RECORD
For the Requesting Party: Robic
For the Registered Owner: No agent appointed