Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2025 TMOB 181
Date of Decision: 2025-09-09
IN THE MATTER OF A SECTION 45 PROCEEDING
Requesting Party: Spyce Girlz Inc.
Registered Owner: Spice Girls Limited
Registration: TMA669,330 for SPICE GIRLS
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. TMA669,330 for the trademark SPICE GIRLS (the Mark), owned by Spice Girls Limited (the Owner).
[2] The Mark is registered for use in association with goods and services. The proceeding is restricted to the goods listed in the registration, as set out in Schedule A to this decision.
[3] For the reasons that follow, I conclude that the registration ought to be amended.
Proceeding
[4] At the request of Spyce Girlz Inc. (the Requesting Party), the Registrar of Trademarks issued a restricted notice to the Owner under section 45 of the Act on June 11, 2024.
[5] The notice required the Owner to show whether the Mark had been used in Canada in association with the goods specified in the registration, as set out in Schedule A to this decision, 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 use since that date. In this case, the relevant period for showing use is June 11, 2021 to June 11, 2024 (the Relevant Period).
[6] The relevant definition of “use” in the present case is set out in section 4(1) 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 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 the registered owner must meet is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448]. The evidence need only establish a prima facie case of use within the meaning of sections 4 and 45 of the Act, by supplying facts from which a conclusion of use may follow as a logical inference [see Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184 at paras 2, 9, 11].
[8] Where a registered owner does not show use of the trademark, the registration is liable to be expunged or amended pursuant to section 45(3) of the Act, unless the absence of use was due to special circumstances that excuse it.
[9] In response to the Registrar’s notice, the Owner furnished the affidavit of Rachel Wood, sworn on November 11, 2024.
[10] Only the Owner filed written representations. No hearing was held.
Evidence
[11] Ms. Wood has been the Director of 142 Management Limited, which provides project management services to the Owner. Ms. Wood, who has held her position since January 2019, is “responsible for, among other things, overseeing all sales and marketing activities” of the Owner in connection with the Mark. She asserts that unless indicated otherwise, the information provided in her affidavit are based on her personal knowledge, as well as business records maintained by the Owner, to which she has access [para 1].
[12] Ms. Wood provides information with respect to the worldwide success and notoriety of the Spice Girls, a British girl group formed in 1994 [paras 3-8]. She explains that the Owner, established in 1996, oversees and manages the brand and business operations of the Spice Girls group [para 9].
[13] Ms. Wood introduces the evidence of use of the Mark in Canada during the Relevant Period, starting with the following statement:
11. As discussed in greater detail below, [the Owner] used the trademark SPICE GIRLS, either directly or through authorized licensees, between June 11, 2021 and June 11, 2024 (the “Relevant Period”) in Canada and continues to so use it.
[14] Ms. Wood goes on to provide the evidence of use of the Mark in Canada, during the Relevant Period, for the Class 9 and Class 16 goods followed by the evidence for the Class 25 goods.
Evidence for Class 9 and Class 16 goods
[15] As regards to the use of the Mark in association with the Class 9 and Class 16 goods, Ms. Wood asserts the following:
-
·Universal Music Group (UMG), a licensee of the Owner, has used the Mark in association with audio and visual recordings, records, CDs and audio tapes featuring musical performances as well as related merchandise [para 12].
-
UMG released the Spice25 and Spiceworld25 albums in 2021 and 2022, respectively, to commemorate the 25th anniversary of the original Spice and Spiceworld albums. The Spice25 and Spiceworld25 albums featuring musical performances were available in audio tape, CD and record formats; they were primarily sold through the official Spice Girls website at thespicegirls.com (the Website) as well as through retailers such as Amazon.ca, Sunrise Records and Archambault [para 13].
-
·Each purchase of a Spice25 CD also came with a postcard. The Mark was not directly marked on the postcards, but the postcards were provided together with the Spice25 CDs displaying the Mark [para 15].
-
The purchase of each Spiceworld25 CD included a book; the image of the book included in the body of her affidavit is representative of the manner in which the Mark was marked on the books sold with the Spiceworld25 CDs during the Relevant Period [para 15].
-
UMG also made audio and visual recordings featuring the Spice Girls group available for download by Canadians from online stores such as the Apple iTunes Stores, 7DIGITAL and Qobuz. The images included in the body of her affidavit are representative of the manner in which the Mark was displayed on the online stores from which Canadians downloaded the recordings during the Relevant Period [para 17].
-
Notebooks, stickers, posters and calendars, manufactured by the Owner, were primarily sold in Canada through the Website. The images included in the body of her affidavit are representative of the manner in which the Mark was marked on notebooks, posters and calendars as well as packaging for stickers during the Relevant Period [para 19].
-
Sanrio Company Limited (Sanrio), a licensee of the Owner, has used the Mark in association with books until December 31, 2023, The Owner had direct and indirect control over the character and quality of the books associated with the Mark and sold from Sanrio’s website at sanrio.com. The image included in the body of her affidavit is representative of the manner in which the Mark was marked on the back cover of the books during the period of June 11, 2021 to December 31, 2023 [paras 21-22].
[16] Ms. Wood provides the Canadian sales figures for each of the Class 9 goods referenced in her affidavit [paras 16 and 18]. She also provides the Canadian sales figures for each of the Class 16 goods referenced in her affidavit, except for postcards [paras 20‑21]. These sales figures cover the Relevant Period.
Evidence for Class 25 goods
[17] Ms. Wood states that since 2021, Mad Engine Global LLC and NTD Apparel Inc., both licensees of the Owner “have manufactured and sold various clothing items (the ‘Class 25 SPICE GIRLS Goods’)” in association with the Mark since 2021 [para 23]. Under the license agreements, the Owner has, and always had, direct and indirect control over the character and quality of the Class 25 SPICE GIRL Goods [para 24].
[18] Ms. Wood states that during the Relevant Period, both licensees sold and distributed in Canada the Class 25 SPICE GIRL Goods to Canadian retailers, who in turn sold them to their customers. The Class 25 SPICE GIRL Goods were also available for purchase by Canadians through the Website [para 23].
[19] Ms. Wood provides images and mock-up images representative of the manner in which the Mark “was marked on all the Class 25 SPICE GIRLS Goods sold in Canada during the Relevant Period [para 25, Tab #1 of Exhibit A, divided into sub-tabs].
[20] The Class 25 SPICE GIRLS Goods shown by the images and mock-up images collectively filed under Exhibit A are divided as follows:
-
·shirts and T-shirts [sub-tab #1.1]
-
·sweaters and sweatshirts [sub-tab #1.2]
-
·pants [sub-tab #1.3]
-
·sleepwear [sub-tab #1.4]
-
·halter tops [sub-tab #1.5]
-
·T-shirts, shorts, jumpsuits [sub-tab #1.6]
-
·socks [sub-tab #1.7]
-
·hats [sub-tab #1.8]
[21] Finally, Ms. Wood provides a table setting out the Canadian sales figures during the Relevant Period, broken down by goods as follows: shirts and T‑shirts; sweaters and sweatshirts; pants; sleepwear; halter tops; shorts; socks; and hats [para 26].
Analysis
[22] I find at the outset that the evidence is silent regarding any use of the Mark during the Relevant Period in association with the registered goods set out in Schedule B to this decision. I would add that the Owner did not make any reference to these registered goods in its written representations.
[23] Further, the affidavit does not put forward special circumstances to justify the absence of use of the Mark in Canada in association with the registered goods set out in Schedule B. Accordingly, these registered goods ought to be deleted from the registration.
[24] It remains to be decided whether the evidence furnished by Ms. Wood satisfactorily establishes use of the Mark, within the meaning of sections 4(1) and 45 of the Act, in association with the following registered goods (collectively the Remaining Goods):
Cl 9 (2) […] records […] audio and visual recordings, not containing software; […] data carriers, namely […] CDs, audio […] tapes, records […] featuring musical performances […]; […].
Cl 9 (3) […] records […] audio and visual recordings, not containing software; […] data carriers, namely […] CDs, audio […] tapes, records […] featuring musical performances […]; […].
Cl 16 (4) Books […] all in the field of fiction, non-fiction and popular culture; […]; calendars; posters; […] note books;[…] post cards; […]; stickers; […].
Cl 16 (5) Calendars; Books […] all in the field of fiction, non-fiction and popular culture; […]; posters; […] note books; […]; post cards; […] stickers; […].
Cl 25 (6) Clothing for men, women and children, namely, shirts, T-shirts, sweatshirts, […] pants, shorts, […] sweaters, […], sleepwear, […], socks, […] jumpsuits, […] halter tops; […] hats, […].
The Remaining Goods
[25] As a preliminary matter, I find that Ms. Wood’s clear sworn statements regarding the Owner’s control over the character and quality of the goods sold by the Owner’s licensees are sufficient to establish that such use of the Mark enured to the Owner within the meaning of section 50 of the Act.
[26] In addition, I accept the Canadian sales figures provided by Ms. Wood as evidence demonstrating that transfers of goods in the Owner’s normal course of trade occurred in Canada during the Relevant Period.
[27] Finally, Ms. Wood clearly states that the images included in the body of her affidavit as well as the images and mock-up images attached as Exhibit A to her affidavit displaying the Mark on goods or packaging for the goods are representative of how the Mark was used during Relevant Period.
[28] In the end, I am satisfied that the evidence shows sales of goods in association with the Mark, in the normal course of trade, during the Relevant Period, by the Owner or by a licensee, subject to the requisite control pursuant to section (50)(1) of the Act. The question becomes whether such evidence is provided for each of the Remaining Goods.
[29] It is with the above in mind, and in the absence of representations from the Requesting Party, that I hereafter make my findings with respect to the Remaining Goods by class order.
Class 9 Goods of the Remaining Goods
[30] Having considered the evidence, I am satisfied that the Owner has shown use of the Mark, within the meaning of sections 4(1) and 45 of the Act, in association with the goods except for the registered goods “records”.
[31] Indeed, the registration covers both “records” and “records featuring musical performances”. In a case such as this where use in association with a specific good could potentially support two goods in a registration, the more specific good will be maintained over the more general [Sharp Kabushiki Kaisha v 88766 Canada Inc (1997) 72 CPR (3d) 195 (FCTD) at paras 14-16]. As such, insofar as the evidenced records correspond to “records featuring musical performances”, they cannot also support use of the Mark in association with the broader term “records”.
[32] I would add that the Owner seemingly concedes in paragraph 30 of its written representations that the broader term “records” should be deleted as the Owner argues for the goods “records featuring musical performances” being maintained in the registration; not the broader goods “records”.
[33] Having regard to the foregoing, I conclude that the broader goods “records” ought to be deleted from the registration.
Class 16 Goods of the Remaining Goods
[34] Having considered the evidence, I am satisfied that the Owner has shown use of the Mark, within the meaning of sections 4(1) and 45 of the Act, in association with the goods.
[35] In making this finding, I am mindful that no Canadian sales figures were provided for “post cards”. However, Ms. Wood clearly states that each purchase of a Spice25 CD also came with a postcard. This factual particular allows me to conclude that postcards were transferred in the normal course of trade. Further, since Ms. Wood asserts that the postcards were provided together with the Spice25 CD and the evidence shows the Mark displayed on a CD case, I find the evidence sufficient to establish the requisite association between “post cards” and the Mark at the time of transfer, bearing in mind that nothing in the Act requires a trademark to be used in association with a “stand-alone” product [see Gowling, Strathy & Henderson v Tundra Knitwear Ltd (2001), 13 CPR (4th) 559 (TMOB) at para 7; Gowling WLG (Canada) LLP v Pelican International Inc, 2016 TMOB 144 at paras 16-18].
Class 25 Goods of the Remaining Goods
[36] I note at the outset that I can reasonably infer from the images and mock-ups images provided collectively by Ms. Wood under Exhibit A that the clothing items specifically referenced in her affidavit are for men, women and children.
[37] Having considered the evidence, I am satisfied that the Owner has shown use of the Mark, within the meaning of sections 4(1) and 45 of the Act, in association with the goods, except for the registered goods “jumpsuits”.
[38] I acknowledge that the exhibited image under sub-tab #1.6 depicts a jumpsuit for children with the Mark displayed on the front. However, Ms. Wood does not provide sales figures for jumpsuits, nor does she provide any factual particular to demonstrate any transfer of “jumpsuits” during the Relevant Period, or at anytime whatsoever. Further, the affidavit does not put forward special circumstances to justify the absence of use of the Mark in Canada in association with these goods.
[39] Accordingly, the registered goods “jumpsuits” ought to be deleted from the registration.
Disposition
[40] 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 registered goods shown in strikethrough and emphasized below:
Cl 3
(1) Children's play cosmetics; Perfumes; toilet waters; eau de cologne; essential oils for personal use; cosmetics, namely, mascara, eyeliner, eye shadow, lipstick, lip, gloss, rouge, cover stick, blush and foundation; anti-perspirants, deodorants; face powder, body powder, baby powder, talcum powder, nail polish, nail hardener, nail conditioner, nail polish remover, cuticle creams and conditioners, body and face cream; hair shampoos; hair conditioners; hair lotions, hand lotions and body lotions; body soap; skin soap; toilet soap; dentifrices; shaving preparations, namely creams, lotions, gels, and after-shave; dyes for the hair.
Cl 9 (3)
Video cameras, recorders and players; radios and televisions; tape recorders and players; laser-read discs for recording and playing sound; compact disc players and recorders; magnetic tape and discs, and cassettes for use therewith; loudspeakers; microphones; visual display units (VDUs);
records and record players; audio and visual recordings not containing software;
motion picture films; film strip apparatus for recording, transmission or reproduction of sound or of images; coin-operated video players and coin-operated audio players; computer software games and music track files; video games; computers, computer peripherals, data carriers, namely
floppy disks, CDs, audio
and video tapes, records
and computer software featuring musical performances
and motion pictures; and computer software for games; sunglasses;
decorative refrigerator magnets; protective helmets.
Cl 16 (5) Calendars; Books,
magazines, newsletters, pamphlets, journals, all in the field of fiction, non-fiction and popular culture;
car stickers; mounted and unmounted photographs; posters;
note pads and note books;
file folders; paper and cardboard file jackets; wrapping paper; note cards; post cards;
gift cards; file cards; business cards; stickers;
printed tickets; address labels; printed labels; shipping labels; greeting cards; printed gift vouchers; sheet music; Pens, pencils, markers, crayons, colour pencils; drawing rulers; drafting rulers; graduated rulers; erasers; pencil sharpeners; diaries; binders; ring binders; file
folders; paper and cardboard file jackets; pen cases; pencil cases; photograph albums; autograph albums.
Cl 25 (6) Clothing for men, women and children, namely, shirts, T-shirts, sweatshirts,
blouses, skirts, dresses, pants, shorts,
overalls, sweaters,
jackets, coats, ties, scarves, robes, belts, suspenders, sleepwear,
underwear, lingerie, hosiery, socks,
leotards, gloves, mittens,
jumpsuits,
swimwear, jumpers, nightgowns, tank tops, halter tops;
shoes, boots, sandals, slippers; hats
, sun visors, caps.
[41] Accordingly, the amended statement of goods will be as follows:
Cl 9 (2) audio and visual recordings, not containing software; data carriers, namely CDs, audio tapes, records featuring musical performances.
Cl 9 (3) audio and visual recordings not containing software; data carriers, namely, CDs, audio tapes, records featuring musical performances.
Cl 16 (4) Books, all in the field of fiction, non-fiction and popular culture; calendars; posters; note books; post cards; stickers.
Cl 16 (5) Calendars; Books, all in the field of fiction, non-fiction and popular culture; posters; note books; post cards; stickers.
Cl 25 (6) Clothing for men, women and children, namely, shirts, T-shirts, sweatshirts, pants, shorts, sweaters, sleepwear, socks, halter tops; hats.
Céline Tremblay
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
SCHEDULE A
Statement of goods together with the associated Nice classes (Cl):
Cl 9 (2) Video cameras, recorders and players; radios and televisions; tape recorders and players; laser-read discs for recording and playing sound; compact disc players and recorders; magnetic tape and discs, and cassettes for use therewith; loudspeakers; microphones; visual display units (VDUs); records and record players; audio and visual recordings, not containing software; motion picture films; film strip apparatus for recording, transmission or reproduction of sound or of images; coin-operated video players and coin-operated audio players; computer software games and music track files; video games; computers, computer peripherals, data carriers, namely floppy disks, CDs, audio and video tapes, records and computer software featuring musical performances and motion pictures and sunglasses; decorative refrigerator magnets.
Cl 9 (3) Video cameras, recorders and players; radios and televisions; tape recorders and players; laser-read discs for recording and playing sound; compact disc players and recorders; magnetic tape and discs, and cassettes for use therewith; loudspeakers; microphones; visual display units (VDUs); records and record players; audio and visual recordings not containing software; motion picture films; film strip apparatus for recording, transmission or reproduction of sound or of images; coin-operated video players and coin-operated audio players; computer software games and music track files; video games; computers, computer peripherals, data carriers, namely floppy disks, CDs, audio and video tapes, records and computer software featuring musical performances and motion pictures; and computer software for games; sunglasses; decorative refrigerator magnets; protective helmets.
Cl 16 (4) Books, magazines, newsletters, pamphlets, journals, all in the field of fiction, non-fiction and popular culture; pens, pencils, markers, crayons, colour pencils; drawing rulers; drafting rulers; graduated rulers; erasers; pencil sharpeners; car stickers; mounted and unmounted photographs; photograph albums; autograph albums; diaries; calendars; posters; note pads and note books; binders; ring binders; file folders; paper and cardboard file jackets; pen cases; pencil cases; wrapping paper; note cards; post cards; gift cards; file cards; business cards; stickers; printed tickets; address labels; printed labels; shipping labels; greeting cards; printed gift vouchers; sheet music.
Cl 16 (5) Calendars; Books, magazines, newsletters, pamphlets, journals, all in the field of fiction, non-fiction and popular culture; car stickers; mounted and unmounted photographs; posters; note pads and note books; file folders; paper and cardboard file jackets; wrapping paper; note cards; post cards; gift cards; file cards; business cards; stickers; printed tickets; address labels; printed labels; shipping labels; greeting cards; printed gift vouchers; sheet music; Pens, pencils, markers, crayons, colour pencils; drawing rulers; drafting rulers; graduated rulers; erasers; pencil sharpeners; diaries; binders; ring binders; file folders; paper and cardboard file jackets; pen cases; pencil cases; photograph albums; autograph albums.
Cl 25 (6) Clothing for men, women and children, namely, shirts, T-shirts, sweatshirts, blouses, skirts, dresses, pants, shorts, overalls, sweaters, jackets, coats, ties, scarves, robes, belts, suspenders, sleepwear, underwear, lingerie, hosiery, socks, leotards, gloves, mittens, jumpsuits, swimwear, jumpers, nightgowns, tank tops, halter tops; shoes, boots, sandals, slippers; hats, sun visors, caps.
SCHEDULE B
Absence of evidence for the following goods (with the associated Nice classes):
Cl 3 (1) Children's play cosmetics; Perfumes; toilet waters; eau de cologne; essential oils for personal use; cosmetics, namely, mascara, eyeliner, eye shadow, lipstick, lip, gloss, rouge, cover stick, blush and foundation; anti-perspirants, deodorants; face powder, body powder, baby powder, talcum powder, nail polish, nail hardener, nail conditioner, nail polish remover, cuticle creams and conditioners, body and face cream; hair shampoos; hair conditioners; hair lotions, hand lotions and body lotions; body soap; skin soap; toilet soap; dentifrices; shaving preparations, namely creams, lotions, gels, and after-shave; dyes for the hair.
Cl 9 (2) Video cameras, recorders and players; radios and televisions; tape recorders and players; laser-read discs for recording and playing sound; compact disc players and recorders; magnetic tape and discs, and cassettes for use therewith; loudspeakers; microphones; visual display units (VDUs); […] and record players; […]; motion picture films; film strip apparatus for recording, transmission or reproduction of sound or of images; coin-operated video players and coin-operated audio players; computer software games and music track files; video games; computers, computer peripherals, [data carriers, namely] floppy disks, […] and video [tapes], […] and computer software [featuring musical performances] and motion pictures and sunglasses; decorative refrigerator magnets.
Cl 9 (3) Video cameras, recorders and players; radios and televisions; tape recorders and players; laser-read discs for recording and playing sound; compact disc players and recorders; magnetic tape and discs, and cassettes for use therewith; loudspeakers; microphones; visual display units (VDUs); […] and record players; […]; motion picture films; film strip apparatus for recording, transmission or reproduction of sound or of images; coin-operated video players and coin-operated audio players; computer software games and music track files; video games; computers, computer peripherals, [data carriers, namely] floppy disks, […] and video [tapes], […] and computer software [featuring musical performances] and motion pictures; and computer software for games; sunglasses; decorative refrigerator magnets; protective helmets.
Cl 16 (4) […] magazines, newsletters, pamphlets, journals, [all in the field of fiction, non-fiction and popular culture]; pens, pencils, markers, crayons, colour pencils; drawing rulers; drafting rulers; graduated rulers; erasers; pencil sharpeners; car stickers; mounted and unmounted photographs; photograph albums; autograph albums; diaries; […]; note pads […]; binders; ring binders; file folders; paper and cardboard file jackets; pen cases; pencil cases; wrapping paper; note cards; […]; gift cards; file cards; business cards; […]; printed tickets; address labels; printed labels; shipping labels; greeting cards; printed gift vouchers; sheet music.
Cl 16 (5) […] magazines, newsletters, pamphlets, journals, [all in the field of fiction, non-fiction and popular culture]; car stickers; mounted and unmounted photographs; […]; note pads […]; file folders; paper and cardboard file jackets; wrapping paper; note cards; […]; gift cards; file cards; business cards; […]; printed tickets; address labels; printed labels; shipping labels; greeting cards; printed gift vouchers; sheet music; Pens, pencils, markers, crayons, colour pencils; drawing rulers; drafting rulers; graduated rulers; erasers; pencil sharpeners; diaries; binders; ring binders; file folders; paper and cardboard file jackets; pen cases; pencil cases; photograph albums; autograph albums.
Appearances and Agents of Record
No hearing held
AGENTS OF RECORD
For the Requesting Party: No agent appointed
For the Registered Owner: Smart & Biggar LP