Canadian Intellectual Property Office
Citation: 2023 TMOB 196
Date of Decision: 2023-11-24
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Smart & Biggar LLP
Registered Owner: Maranda Rampersaud
Registration: TMA1,022,113 for Fresh Smile Spa
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. TMA1,022,113 for the trademark Fresh Smile Spa (the Mark), owned by Maranda Rampersaud (the Owner).
[2] For the reasons that follow, I conclude that the registration ought to be maintained.
The Record
[3] At the request of Smart & Biggar LLP (the Requesting Party), the Registrar of Trademarks issued a notice to the Owner under section 45 of the Act on July 25, 2022. The notice required the Owner to show whether the Mark had been used in Canada in association with each of the services 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 July 25, 2019, to July 25, 2022.
[4] The Mark is registered for use in association with the following services:
(1) Dental laboratories; dental technician services
(2) Dental clinics; dental hygienist services
[5] The relevant definition of use in the present case is set out in section 4 of the Act as follows:
(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.
[6] The display of a trademark in the advertisement of services is sufficient to satisfy the requirements of section 4(2) of the Act, from the time the owner of the trademark is willing and able to perform the services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2d) 20 (TMOB)].
[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 services specified in the registration during the relevant period.
[8] In response to the Registrar’s notice, the Owner furnished her own affidavit, dated June 20, 2022. Only the Owner submitted written representations; no oral hearing was held.
Evidence and Analysis
[9] The Owner explains that she is a dental hygienist operating a dental clinic called Fresh Smile Spa in Calgary, Alberta. She states that during the relevant period, her clinic provided a range of dental services including teeth cleaning and dental check-ups, orthodontics, local anesthetic, periodontal therapy, prescriptions, laser gum therapy, teeth whitening, and oral radiology. She states that these are services routinely offered at dental clinics and by dental hygienists. In addition, she states that her clinic fabricates and adjusts dental products such as teeth whitening trays and sports guards, and explains that these are activities that fall under the general categories of dental laboratory services and dental technician services.
[10] I am satisfied that the Owner’s evidence demonstrates use of the Mark in association with each of the registered services within the meaning of sections 4(2) and 45 of the Act. With respect to display of the Mark, I note that the Owner attaches images of the Mark as it was displayed during the relevant period on signage at the Owner’s clinic and in the clinic’s dental laboratory, on bus stop bench signage in Calgary advertising the clinic, on the Owner’s social media accounts advertising the clinic (which show engagement from customers and members of the public), and on statements of account showing that the Owner provided the services described in her affidavit during the relevant period. In particular, I note that the statements of account show entries for “Exam”, “Fluoride”, “Polishing”, “Scaling”, “X-Ray”, and “Inoff teeth whitening 97111lab”; in view of the light evidentiary burden in a section 45 proceeding and the fact that statements of services may contain overlapping terms [Gowling Lafleur Henderson LLP v Key Publishers Co, 2010 TMOB 7 at para 15], I am satisfied that each of the registered services are reflected among these entries. As the Owner has shown how the Mark would have been displayed in the course of performance and advertising of the registered services in Canada during the relevant period, I am satisfied that the Owner has shown use of the Mark within the meaning of the Act in association with each of the registered services.
[11] I note that in the Owner’s written representations, the Owner attaches a number of materials which it “wishes to introduce into evidence”. However, pursuant to sections 45(1) and (2) of the Act, I cannot consider evidence beyond what is contained in or attached to the Owner’s affidavit. As a result, I have not considered any of the materials attached to the Owner’s written representations, or any alleged facts introduced in these written representations that are not included in the Owner’s affidavit.
[12] To the extent that the Owner refers to its request that the Requesting Party disclose the identity of a party on whose behalf it may have requested the section 45 notice in this proceeding, and to an allegedly improper purpose behind that request, section 45 of the Act is clear that “any person” may request the issuance of a section 45 notice. Thus, nothing prevented the Requesting Party from requesting that the Registrar issue the notice, nor did the Registrar determine there was good reason not to send the notice. The sole issue to be determined in a section 45 proceeding is whether a trademark has been used within the meaning of the Act; as such, the motivation of the Requesting Party is generally not a consideration [see Consorzio del Prosciutto di Parma v Maple Leaf Foods Inc, 2010 TMOB 52 at para 20; Norton Rose Fulbright Canada v VSL Canada Ltd, 2016 TMOB 68 at para 30].
[13] Finally, although the Owner requests that costs be awarded in its favour, the Act does not currently include any provision allowing the Registrar to award costs in a section 45 proceeding.
Disposition
[14] 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 maintained.
___________________________
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: Smart & Biggar LLP
For the Registered Owner: William R. Stemp