Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2025 TMOB 171
Date of Decision: 2025-08-26
[UNREVISED ENGLISH CERTIFIED TRANSLATION]
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Securiforce Security Services Ltd.
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. TMA808,451 for the trademark SECURFORCE (the Mark), owned by Global Sécurité Inc. (the Owner) and covering various security systems and devices for home and office, as well as associated services as detailed in Schedule A.
[2] For the reasons that follow, I conclude that the registration ought to be amended.
The record
[3] At the request of Securiforce Security Services Ltd. (the Requesting Party), the Registrar issued a notice to the Owner under section 45 of the Act on November 3, 2023. This requires the Owner to indicate, with respect to all the goods and services specified in the registration, whether the Mark was in use in Canada at any time during the three-year period immediately preceding the date of the notice and, if not, the date when the Mark was last so in use and the reason for the absence of use since that date.
[4] In this case, the relevant period for showing use is November 3, 2020 to November 3, 2023 and the definitions of “use” appear in section 4 of the Act, which reads 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.
(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.
[5] It is well established that displaying the trademark in advertising services is sufficient to meet the requirements of subsection 4(2) of the Act, if the owner of the trademark is ready and able to perform those services in Canada [Wenward (Canada) Ltd v Dynaturf Co (1976), 28 CPR (2e) 20 (TMOB)].
[6] In the absence of use as defined above, a trademark registration is liable to be expunged unless the absence of use is due to special circumstances.
[7] In response to the Registrar’s notice, the Owner filed the affidavit of Jocelyn Bordeleau, sworn on January 30, 2024, to which were attached exhibits JB-1 to JB-7. Only the Requesting Party filed written representations and no oral hearing was held.
The evidence
[8] Mr. Bordeleau has been the President of the Owner since the corporation was incorporated in 2001 [para 1]. He states that it operates in the field of residential security in Canada, specifically offering sale, lease, installation and maintenance services for security systems that protect residences and businesses [para 2]. He states that the Mark was used during the relevant period and continues to be used in association with the Owner’s services [para 26]. Specifically, Mr. Bordeleau states that, among other things during the relevant period, it sold and provided its clients with security systems and the following services:
- twenty-four-hour police and medical emergency: the remote monitoring centre dispatches emergency rescue or the police once a danger is reported;
- door chimes that sound when the door is opened;
- smoke detectors that are remotely monitored for fire hazards;
- carbon monoxide detectors;
- movement detectors;
- door and window contacts;
- connections to a remote monitoring centre [para 24].
[9] However, he specifies that the Owner neither manufactures nor sells goods bearing the Mark; instead, it sells and installs goods that bear third party marks [para 7].
[10] Mr. Bordeleau states that to promote his services, the Owner operates its securforce.ca Internet site and filed in a bundle excerpts from this site obtained using the Wayback Machine (archived on November 28, 2020, January 24 and May 7, 2021, and March 22, 2022), stating that they show some of the services provided bearing the Mark during the relevant period [para 8, Exhibit JB-1].
[11] Mr. Bordeleau specifies that the Owner’s customers (both potential and current) can access this site and they can also contact the Owner by telephone to obtain a submission or by filling out an online form through the “Ask for a Submission” section of its website. He states that the Owner’s customer service [translation] “is open 24 hours a day, 7 days a week” to meet the needs of potential and existing customers by telephone and by email [para 9].
[12] Mr. Bordeleau states that the Owner also has branches (accessible to customers) on the South Shore of Montréal, in Montréal, Québec City, Lévis, Sherbrooke, Trois-Rivières, Gatineau, Chicoutimi and Laval and submitted in a bundle what he describes as a photograph of the logo of the Québec City branch and a photograph of the Laval office [para 10, Exhibit JB-2]. I note that the logo and even the entrance doors bear the Mark.
[13] Mr. Bordeleau states that the Owner also does business with partners over the Web, such as Soumissions Protection, to expand its pool of residential and commercial customers. He states that this is a Web service that provides quotes from companies that install, maintain and repair security systems (alarm, anti-theft, remote monitoring, etc.) and that when customers go through Soumissions Protection, they are connected to security professionals, including the Owner. Mr. Bordeleau states that when the Owner receives requests for quotes through this referral service, potential customers are contacted by telephone to identify their needs and quotes are sent bearing either the Mark or the GLOBAL SÉCURITÉ mark based on the needs that are expressed [paras 11 to 14].
[14] Mr. Bordeleau states that as part of its activities, the Owner has salaried sales representatives and independent subcontracting contractors (which it collectively designates as “sales representatives”) who go door-to-door to present and offer the services provided under the Mark to potential customers. He specifies that during their travels and service deliveries to customers, sales representatives use company vehicles bearing the Mark and wear corporate shirts that bear the Mark. In support, Mr. Bordeleau filed in a bundle copies of the Owner’s security agency and street vendor permits issued by the Bureau de la sécurité privée and the Office de la Protection du Consommateur respectively, a photograph of one of the Owner’s vehicles, photographs of the corporate shirts that he states were used during the relevant period, as well as a document that summarizes some of the packages and services offered by the Owner during the relevant period [paras 15 to 18, exhibits JB-3 to JB-6].
[15] Mr. Bordeleau states that some customers who have security systems that are already installed subscribe to remote monitoring services such as those mentioned on the Owner’s Internet site and in the document summarizing its packages and services offered [exhibits JB-1 and JB-6], while others can either change security systems or update them. For changes or updates to equipment, he states that the Owner’s sales representatives inspect existing equipment before recommending a package and when potential customers subscribe and sign a contract, the Owner sells them and distributes the required monitoring equipment. Mr. Bordeleau states that the Owner’s certified installation technicians then go to appointments with customers to install security systems and connected mobile applications (if necessary) based on the packages selected by customers, who are then connected to the monitoring hub [paras 19 to 22].
[16] Mr. Bordeleau states that the Owner also provides repair and maintenance services for security system equipment so that customers who are encountering problems can contact customer service, appointments are set with installation technicians, and, once on site, these technicians can diagnose problems, replace faulty equipment and/or do any necessary repairs to ensure that equipment is working properly [para 23].
[17] Lastly, Mr. Bordeleau states that the only method of payment accepted by the Owner is preauthorized monthly payment on a set date, with contracts signed by customers setting out a monthly payment date to pay for the selected package. He submitted in a bundle an account statement from the Owner’s [translation] “SECURFORCE bank account” for October 2023 and a photograph of the envelope that contained this statement. He states that the monthly payments for services provided under the Mark appear under the note [translation] “Withdrawal for direct dep./GLOBAL SECURITE INC.” [para 25, Exhibit JB-7].
Analysis
[18] In light of the Owner’s concession that it does not sell goods associated with the Mark, and without any facts to justify this absence of use, all goods will be expunged from the registration.
[19] With respect to the services, it seems clear to me from the evidence summarized above that the Owner, at the very least, stated and was ready and able to provide, in Canada, most of the services associated with security systems specifically described by Mr. Bordeleau during the relevant period.
[20] Mr. Bordeleau clearly states that the Owner provides sale, lease, installation, repair and maintenance services for residential and commercial security systems. He explains how these services are provided, as well as promoted, and in support filed photographs of a logo and the entrance doors of two of the Owner’s branches, one of the vehicles used, and shirts worn by the sales representatives who go door-to-door, all of which bear the Mark. He also attached archived excerpts from his Internet site using the Wayback Machine that bear the Mark at several points and refer to various security systems, installing alarm systems, door chimes, door/window contacts, smoke detectors, carbon monoxide and movement detectors, home automation, including control (by computer or mobile device) of security and door locking systems in general, but also of lighting systems, thermostats, blinds and fans in order to save money and conserve energy.
[21] Notwithstanding the Requesting Party’s claims that this is hearsay evidence, I accept this material to the extent that it directly corroborates Mr. Bordeleau’s statements regarding the use of the Mark by the Owner during the relevant period. In this regard, it must be noted that the summary nature of proceedings under section 45 of the Act is such that concerns about hearsay can go to weight, rather than admissibility [1459243 Ontario Inc v Eva Gabor International, Ltd, 2011 FC 18].
[22] I also recall that the statements made by the deponent here can be accepted at face value and that they must be accorded substantial credibility. It is the evidence as a whole that must be considered and it is not the proper approach as the Requesting Party has done to dissect an affidavit with an overly technical approach in its representations [Oyen Wiggs Green & Mutala LLP v Atari Interactive. Inc, 2018 TMOB 79]. It is also important to highlight that there is no particular type of evidence that must be provided and the evidence need not be perfect [see Lewis Thomson & Sons Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)].
[23] In light of the above and considering the evidence as a whole, I am satisfied that the Owner’s evidence is sufficient to show use of the Mark under sections 4(2) and 45 of the Act in association with services for installing security systems for homes and businesses; selling, distributing, installing, repairing, maintaining and inspecting security systems for homes and businesses, access control systems and computer-based security and fire alarm systems; and installing locks and related hardware. I am also prepared to accept that the Owner used the Mark in association with energy usage management systems for the purpose of assessing heating, cooling, ventilation, lighting and all other energy consumption systems for conservations purposes.
[24] In that regard, I note that although it is not up to the Registrar to speculate as to the nature of what is covered by the registration [Wrangler Apparel Corp v Pacific Rim Sportswear Co, (2000), 10 CPR (4d) 568 (TMOB); Fraser Milner Casgrain LLP v Fabric Life Limited, 2014 TMOB 135; Thor Tech, Inc v Quantum Enterprises Incorporated, 2020 TMOB 108], reasonable inferences can be drawn from the provided evidence [Eclipse International Fashions Canada Inc v Cohen, 2005 FCA 64]. In addition, contrary to the goods, the Registrar has already concluded that in some cases, statements of the services contain overlapping and redundant terms, in the sense that the performance of one service would necessarily imply the performance of another [Gowling Lafleur Henderson LLP v Key Publishers Co, 2010 TMOB 7; Provent Holdings Ltd v Star Island Entertainment, LLC, 2014 TMOB 178].
[25] That said, I am of the opinion that the evidence lacks precision regarding the monitoring services covered by the registration. In fact, although it includes several references to remote monitoring packages, it is also suggested that remote monitoring, along with the associated telephone response services were not offered by the Owner. In that regard, I note the following remarks in Exhibit JB-1:
SECURFORCE helps to protect your loved ones with high-technology security systems remotely monitored by ADT
With an alarm system remotely monitored by ADT, your family and your property are always protected. ADT remote monitoring centres across the country are supported by powerful infrastructure that is equipped with secure communication connections that are open 24 hours a day, 7 days a week [emphasis added].
[26] I also note the following remark in Exhibit JB-6:
[Translation]
… SECURFORCE has pricing agreements with all major manufacturers, in addition to partnering with the ULC’s best remote monitoring centres in the country, such as Security24, Lanvac and Armstrong Monitoring [emphasis added].
[27] Mr. Bordeleau did not state that the Owner operates a remote monitoring centre or hub and did not provide any details regarding the rapport or relationship that it has (or once had) with its abovementioned partners. Without clear explanations about the matter and/or examples of the Owner’s contracts or invoices for remote monitoring, and given the evidence that appears to state the opposite, I am not of the opinion that I have sufficient facts to conclude or infer that the Owner itself was able to provide these services during the relevant period. These items will therefore be expunged from the registration.
[28] Lastly, I note that the evidence is silent regarding closed circuit television services/systems; industrial process supervisory systems; background music; security guard services; custom design; research and development; or consulting, drafting, engineering and project management. It also does not provide any special circumstances to justify the absence of use of the Mark. Those services will therefore also be expunged.
Disposition
[29] Pursuant to the authority delegated to me under section 63(3) of the Act, the registration will be amended in accordance with the provisions of section 45 of the Act to delete all of the goods and services that are
struck through below:
(1) Home and business security systems and devices, namely, installation of home and business security systems; sale, distribution, installation, repair, maintenance and inspection of homes’ and business’ security systems, access control systems,
closed circuit television systems, computer based security and fire alarm systems;monitoring of home and business security systems;monitoring of homes and businesses with respect to security, carbon monoxide, poisonings, smoke, fire, temperature and flood; central station electric protection services, namely security, carbon monoxide, poisonings, smoke, fire, temperature and flood alarm services, intruder and burglar alarm services, industrial process supervisory services, closed circuit television services and card access control services.
(2)
Home and business security systems and devices, namely, monitoring personal emergency electronic necklace alarms; telephone answering services;supplying background music to homes and businesses for security purposes; security guard services; custom design of security, carbon monoxide, poisonings, smoke, fire, temperature and flood alarm systems; consulting, drafting, engineering and project management of security and alarm systems;installation of locks and related hardware;research and development associated with product developments in homes’ and business’ security systems;providing energy usage managementand monitoringservices for the purpose of assessing heating, cooling, ventilation, lighting and all other energy consumption systems for conservation purposes;consulting services pertaining to building design to optimize energy conservation operating strategies and providing monitoring services to evaluate energy usage and conservation strategies.
[30] Consequently, the statement of the services will read as follows:
(1) Home and business security systems and devices, namely, installation of home and business security systems; sale, distribution, installation, repair, maintenance and inspection of homes’ and business’ security systems, access control systems, computer based security and fire alarm systems.
(2) installation of locks and related hardware; providing energy usage management services for the purpose of assessing heating, cooling, ventilation, lighting and all other energy consumption systems for conservation purposes.
Iana Alexova
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Certified translation
Tony Santin
SCHEDULE A
Statement of goods and services covered by the Mark
Goods
(1) Home and business security systems and devices namely, alarm transmitters, intrusion detectors and fire detectors; motion sensors activated by heat, humidity, sound, electromagnetic energy or photoelectric energy; alarm systems for the detection of carbon monoxide, poisonings, smoke, fire and floods; intruder or vault alarm apparatus, namely door and window contacts, metallic foil, glass break sensors, alarm systems for security vaults; alarm systems for monitoring indoor water sprinklers in the event of smoke or fire; pressure sensitive units, control panels and key pads for security systems; access control units, namely card operated and electrically activated computer equipment permitting access to restricted and private locations; closed circuit television systems and equipment, namely monitoring and recording systems utilizing television cameras, closed circuit television systems, television monitors and monitor units, television camera lenses, television camera zoom lenses and remote control units, television camera mountings and housings and video switchers for providing a single output from a plurality of inputs, video transmitters and video monitoring units (‘on-track’); voice communication systems, namely speaker intercom systems, telephone intercom systems, nurses’ call systems, paging systems, public address systems, voice evacuation systems; music equipment, namely stereos, amplifiers, speakers and receivers for providing background music for security purposes, microphones, sirens, horns, amplifiers, speakers and strobe lights; monitoring stations for controlling and/or reporting the movements of security personnel; electrical units for monitoring the security of a communication link between a protected premise and a central monitoring station intended for the receipt of alarm signals emanating from the protected premise.
(2) Home and business security systems and devices namely, remote monitoring systems of the temperature of residences, offices and industrial buildings and of the quantity of fuel oil in tank; personal emergency electronic necklace alarms, card-operated, computer-controlled electrically actuated locking systems for use in hotels, motels, business establishments where it is desired to change key codes for individual doors, energy conservation equipment, namely switch gears arranged to activate or deactivate electrical loads in accordance with a pre-determined schedule or in accordance with selected environmental conditions.
Services
(1) Home and business security systems and devices, namely, installation of home and business security systems; sale, distribution, installation, repair, maintenance and inspection of homes’ and business’ security systems, access control systems, closed circuit television systems, computer based security and fire alarm systems; monitoring of home and business security systems; monitoring of homes and businesses with respect to security, carbon monoxide, poisonings, smoke, fire, temperature and flood; central station electric protection services, namely security, carbon monoxide, poisonings, smoke, fire, temperature and flood alarm services, intruder and burglar alarm services, industrial process supervisory services, closed circuit television services and card access control services.
(2) Home and business security systems and devices, namely, monitoring personal emergency electronic necklace alarms; telephone answering services; supplying background music to homes and businesses for security purposes; security guard services; custom design of security, carbon monoxide, poisonings, smoke, fire, temperature and flood alarm systems; consulting, drafting, engineering and project management of security and alarm systems; installation of locks and related hardware; research and development associated with product developments in homes’ and business’ security systems; providing energy usage management and monitoring services for the purpose of assessing heating, cooling, ventilation, lighting and all other energy consumption systems for conservation purposes; consulting services pertaining to building design to optimize energy conservation operating strategies and providing monitoring services to evaluate energy usage and conservation strategies.
Appearances and Agents of Record
No hearing held.
AGENTS OF RECORD
For the Requesting Party: PALMER IP INC.