Canadian Intellectual Property Office
Citation: 2023 TMOB 186
Date of Decision: 2023-10-31
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Venom Powersports Ltd.
Registered Owner: Industrial Cycle Inc.
Registration: TMA859,751 for VENOM
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. TMA859,751 for the trademark VENOM (the Mark), owned by Industrial Cycle Inc. (the Owner).
[2] For the reasons that follow, I conclude that the registration ought to be expunged.
The Record
[3] At the request of Venom Powersports Ltd. (the Requesting Party), the Registrar of Trademarks issued a notice to the Owner under section 45 of the Act on April 29, 2022. 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 April 29, 2019, to April 29, 2022.
[4] The Mark is registered for use in association with the goods “Bicycles and bicycle frames”.
[5] 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.
[6] 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.
[7] In response to the Registrar’s notice, the Owner furnished a document signed by Elio Moracci, dated June 20, 2022, and bearing a jurat dated July 9, 2022. Only the Requesting Party submitted written representations; no oral hearing was held.
Evidence and Analysis
[8] The Requesting Party submits that the Moracci document is not an affidavit or statutory declaration and is therefore not admissible as evidence in this proceeding. I agree. Although the document bears a jurat reading “Sworn, (or Affirmed or Declared) before me at Barrie, in the Province of Ontario, this 9th day of July, 2022”, by a notary public, the document itself is in the form of a letter dated several weeks prior to the date of the jurat, and does not include any language relating to Mr. Moracci making oath or a solemn declaration or affirmation. Mr. Moracci also does not provide any of the customary personal identification information, such as his city of residence or position within the company, that would allow the reader to be satisfied that the commissioner or notary was able to confirm his identity before the document was sworn (although I note that such information can be inferred, to some degree, from the document and the attached materials).
[9] Section 45(1) of the Act requires the owner of a registered trademark to furnish its evidence in the form of “an affidavit or statutory declaration”. The technical requirements to constitute an affidavit are not specified in the Act, but are generally governed in Canada by the various provincial rules of civil procedure, the Federal Courts Rules, and the Canada Evidence Act. The form and requirements of a statutory declaration are set out in section 41 of the Canada Evidence Act.
[10] Section 45 proceedings are intended to be summary in nature, their purpose being to remove “deadwood” from the trademarks register. Consequently, mere technical deficiencies in an owner's evidence should not be a bar to a successful response to a section 45 notice [Baume & Mercier SA v Brown (1985), 4 CPR (3d) 96 (FCTD)], and it has been held that the “technical requirements” of section 45 should not become “a trap for the unwary” [George Weston Ltd v Sterling & Affiliates (1984), 3 CPR (3d) 527 (FCTD)]. For example, the Registrar has held that it need not strictly adhere to the rules of practice of the Federal Court with respect to evidence from a registered owner [Maximilian Fur Co v Maximillian for Men’s Apparel Ltd (1983), 82 CPR (2d) 146 (TMOB) at para 9]. In certain cases, un-notarized or incorrectly notarized exhibits to an affidavit have been admitted as evidence when no timely objection was raised by the requesting party [Adams v Société des Produits Nestlé SA (1996), 72 CPR (3d) 100 (TMOB) at paras 13-14]. In other cases, the Registrar has held that exhibits to an affidavit need not be notarized provided the exhibits are properly identified in the body of the affidavit [Smith, Lyons, Torrance, Stevenson & Mayer v Pharmaglobe Laboratories Ltd (1996), 75 CPR (3d) 85 (TMOB) at para 7].
[11] However, the evidence filed by a registered owner must still constitute "an affidavit or statutory declaration" in order to comply with section 45(1) of the Act. If it does not, then such evidence has been held inadmissible [Indian Motorcycle International, LLC v 680187 Ontario, 2006 CarswellNat 4928 (TMOB) at paras 6-9; see also Riches, McKenzie & Herbert LLP v Sena Marketing Inc, 2014 TMOB 255].
[12] In the present case, I am conscious of the fact that the Owner was not represented by counsel or a registered trademark agent in these proceedings, and that technical deficiencies ought not preclude a successful response to a section 45 notice. Nevertheless, in my view, the deficiencies in the Owner's evidence in this case are so fundamental that they amount to more than mere technicalities, and instead render the Owner's evidence inadmissible.
[13] In particular, as noted above, Mr. Moracci does indicate that the content is provided under oath or solemn declaration, and the document does not meet the requirements of a statutory declaration under section 41 of the Canada Evidence Act. While the document contains a jurat at the end signed by a notary or commissioner, it has been held that the presence of a jurat is not necessarily sufficient to correct for the absence of an indication that the facts were provided under oath or solemn declaration [see Dr Ing hcF Porsche AG v Procycle Inc (1992), 45 CPR (3d) 432 (TMOB) at paragraphs 9-10; Jeunesse Global Holdings, LLC v LaFontaine Source De Jeunesse Corporation, 2020 TMOB 88 at paras 16-17].
[14] Further, the Owner was put on notice by the Requesting Party’s written representations that the Requesting Party was contesting the admissibility of the Owner’s evidence on the basis that it was not provided under oath or solemn declaration, and the Owner took no steps to try to correct the alleged issue (for example, by requesting a retroactive extension of time to file a corrected affidavit or statutory declaration).
[15] In view of the above, I find that the Moracci document is not admissible as evidence in this proceeding in compliance with section 45(1) of the Act and the registration should therefore be expunged. However, even if I were to accept that the Moracci document ought to be accepted, I would still find that the Owner has not demonstrated use of the Mark or special circumstances excusing non-use.
[16] Mr. Moracci does not state that the Mark was used in association with the registered goods during the relevant period. He indicates that at some point “in the past years”, the Owner sold its two-wheel bicycle division and shifted its focus to tricycles. However, due to the sale of the bicycle division, the Owner “did not have the time to continue to order products for our three-wheel tricycle division”, and instead sold “what we had in stock”, although it is not clear whether such sales were of bicycles or tricycles displaying the Mark, or whether they occurred during the relevant period. Mr. Moracci further states that the Owner sold tricycles ordered from the United States, which did not display the Mark, as “fill in inventory”. There is no clear statement or indication that the Owner sold bicycles or tricycles displaying the Mark during the relevant period.
[17] However, Mr. Moracci appears to submit that special circumstances existed which ought to excuse non-use. In particular, he states that “when we were ready to order tricycles, COVID started, and we were unable to get any stock from China using my trademark names”. He indicates that due to factory closures, he was unable to order tricycles or components, and he had to lay off all his employees and continue the company himself. He states that he received his first order from China in January 2022, and placed a second order on April 4, 2022, for products displaying the Mark. In support, he attaches a number of emails and purchase orders from Chinese manufacturers.
[18] To determine whether special circumstances have been established, the Registrar must first determine, in light of the evidence, why the trademark was not used during the relevant period. Second, the Registrar must determine whether these reasons for non-use constitute special circumstances [per Registrar of Trade Marks v Harris Knitting Mills Ltd (1985), 4 CPR (3d) 488 (FCA) (Harris Knitting)]. The Federal Court has held that special circumstances mean circumstances or reasons that are “unusual, uncommon, or exceptional” [John Labatt Ltd v Cotton Club Bottling Co (1976), 25 CPR (2d) 115 (FCTD) at para 29].
[19] If the Registrar determines that the reasons for non-use constitute special circumstances, the Registrar must still decide whether such special circumstances excuse the period of non-use. This involves the consideration of three criteria: (i) the length of time during which the trademark has not been in use; (ii) whether the reasons for non-use were beyond the control of the registered owner; and (iii) whether there exists a serious intention to shortly resume use [Harris Knitting]. All three criteria are relevant, but satisfying the second criterion is essential for a finding of special circumstances excusing non-use [Scott Paper].
[20] I note that the Requesting Party submits that tricycles are not bicycles, and therefore, use of the Mark in association with tricycles would not amount to use in association with the registered goods. However, even if I were to consider tricycles as amounting to the registered goods, the circumstances set out in the Moracci document would not constitute special circumstances pursuant to the test as set out in Harris Knitting. With respect to the first step of the test, while Mr. Moracci refers to delays in resuming use of the Mark caused by the pandemic, he is clear that the reason the Mark was not in use was because the company had changed and was in transition following the sale of the bicycle division. There is nothing to suggest that this was not a voluntary business decision, which would not amount to circumstances that were unusual, uncommon, and exceptional.
[21] Moreover, Mr. Moracci does not provide a date of last use for the Mark, stating only that his company had changed “during the past years”. Where the registered owner has not provided a date of last use, the Registrar may consider the date of registration as the relevant date for purposes of assessing the length of non-use [see, for example, Oyen Wiggs Green & Mutala LLP v Rath, 2010 TMOB 34]. In this case, the date of registration is September 10, 2013; as there is no date of last use provided, a nearly nine-year period of non-use weighs against the Owner.
[22] As for whether the period of non-use was beyond the control of the Owner, while it is clear that the Owner faced challenges in resuming use related to the pandemic, the relevant period began in April 2019, nearly a year before the onset of the pandemic-related disruptions identified by Mr. Moracci. While Mr. Moracci states that the Owner “did not have the time to continue to order products” following the sale of the bicycle division, in the absence of further details, it is not clear that this lack of time was not the result of business decisions within the control of the Owner, or that the Owner made diligent efforts throughout the whole of the relevant period such that use of the Mark would have commenced during the relevant period if not for the pandemic [see The Wonderful Company LLC and Fresh Trading Limited, 2023 TMOB 8 at paras 44-45]. While the Owner has shown some evidence of continuing intention to use the Mark (in association with tricycles), such intention is not sufficient on its own to excuse non-use [see Scott Paper at para 28].
[23] In view of the foregoing, I am not satisfied that the Owner has established that there were special circumstances excusing non-use with respect to any of the registered goods within the meaning of section 45(3) of the Act.
Disposition
[24] In view of all of the foregoing, 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: No hearing held
AGENTS OF RECORD
For the Requesting Party: Ollip P.C.
For the Registered Owner: No agent appointed