Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2025 TMOB 201
Date of Decision: 2025-10-27
Requesting Party: Gabriel Meets Apparel Inc.
Registered Owner: Perry Ellis International Europe Limited
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. TMA659,729 for the trademark penguin design (the Mark), shown below:
[2] The Mark is registered in association with the following goods:
(1) Small leather goods, namely, CD cases, PDA cases, cell phone holders.
(2) Small leather goods, namely, agendas, calendars, address books, passport cases.
(3) Small leather goods, namely, wallets, handbags, briefcases, portfolios, key cases, backpacks.
(4) Small leather goods, namely, belts; and (2) clothing, namely, knit and woven shirts, t-shirts, sweatshirts, outerwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, ties, swimsuits, hosiery, underwear, and footwear, namely, sneakers, shoes, sandals.
[3] For the reasons that follow, I conclude that the registration ought to be maintained in part. More specifically, I conclude that goods (1) and (2), and (3) ought to be deleted from the registration, while goods (4) ought to be maintained.
The Proceeding
[4] At the request of Gabriel Meets Apparel Inc. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on September 5, 2024, to the registered owner of the Mark, Perry Ellis International Europe Limited (the Owner).
[5] The notice required the Owner to show whether the Mark was used in Canada in association with each of the registered goods at any time within the three-year period immediately preceding the date of the notice. If the Mark was not so used, the Owner was required to provide the date when the Mark 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 September 5, 2021 to September 5, 2024.
[6] 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 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 association is then given to the person to whom the property or possession is transferred.
[7] 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. Although the threshold for establishing “use” is section 45 proceedings is quite 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 Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD)], 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 [John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)]. Bare 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)].
[8] Where an owner has not shown “use”, a 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, the Owner furnished the affidavit of Ms. Bernheim, sworn on February 4, 2025, together with Exhibits A and B.
[10] Both parties filed written representations and made representations at an oral hearing on the matter.
The Evidence
[11] Ms. Bernheim is the Chief Legal Officer of the Owner. She states that the Owner is a subsidiary of Perry Ellis International, Inc., an American clothing, fashion, and cosmetics and beauty company that includes a portfolio of brands distributed through multiple channels worldwide.
[12] Ms. Bernheim explains that the company focuses primarily on sportswear and casual clothing, and that the “Original Penguin” is one of the flagship clothing lines of Perry Ellis International, Inc. dating back to 1955.
[13] Ms. Bernheim states that Original Penguin clothing and related accessories are sold throughout the world, including in Canada, through retail, wholesale and e-commerce distribution channels. She attests that, in Canada, products bearing the image of a penguin as follows (which she refers to as the PENGUIN Mark), are sold through the website www.originalpenguin.com. She states that at all times during the relevant period, this website has been in operation and accessible by individuals in Canada and has offered shipping to addresses in Canada [para 9].
[14] Ms. Bernheim states that the PENGUIN Mark is and has been prominently depicted during the relevant period:
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-in the header of each webpage of the Original Penguin website [para 12], and
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-throughout the checkout process when a customer makes a purchase from the website [para 13].
[15] In support, she provides representative screenshots from the Wayback Machine Internet archive dated between 2021 and 2024 [Exhibit 1]. She states that, as shown in these screenshots, goods offered for sale on the website prominently depicted the PENGUIN Mark, including on knit and woven shirts, t-shirts, sweatshirts, outerwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, swimsuits, hosiery, shoes, and sandals [para 15].
[16] Ms. Bernheim states that other goods branded with the PENGUIN Mark, including wallets, handbags, backpacks, ties, underwear and sneakers, were also offered for sale on the Original Penguin website and sold in Canada during the relevant period [para 17]. In support, she attaches images from the website, which she states are representative of the manner in which the PENGUIN Mark appeared on these goods during the relevant period [Exhibit 2]. I note that each of these “other goods” identified by Ms. Bernheim are depicted in this exhibit.
[17] Ms. Bernheim attests that products are also available for purchase in Canada through other channels including through stores such as Golf Town, and the e-commerce platform Amazon.ca, and have been for a number of years, including during the relevant period [para 10].
[18] Ms. Bernheim attests that goods branded with the PENGUIN Mark that were sold in Canada during the relevant period include knit and woven shirts, t-shirts, sweatshirts, outwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, ties, swimsuits, hosiery, underwear, sneakers, shoes, sandals, wallets, handbags, and backpacks [para 18]. In support, Ms. Bernheim provides a table listing unit sales from the website to Canadian addresses, during the relevant period, broken down by product type [para 19].
Analysis and Reasons for Decision
[19] The Owner’s evidence is silent with respect to registered goods (1) and (2), and certain of registered goods under goods (3), namely, “briefcases, portfolios, and key cases”. At the oral hearing, the Owner conceded this omission and indicated that it was only seeking to maintain the registration with respect to the remaining goods in goods (3) and goods (4). Consequently, goods (1) and (2), and the goods “briefcases, portfolios, and key cases” from goods (3) will be deleted from the registration. The ensuing analysis will thus only consider the remaining registered under goods (3), namely, “small leather goods, namely, wallets, handbags, backpacks”, and goods (4).
[20] The main submissions of the Requesting Party, in brief, are as follows:
· Deviation – the Requesting Party submits that the Mark and the trademark shown in the evidence (the PENGUIN Mark) “are extremely different designs that cannot be mistaken for each other.”
· No evidence of transfers/sales - The Requesting Party alleges that there is no evidence of actual sales. In this regard, the Requesting Party notes that there are no invoices relating to any specific goods sold online.
[21] I will deal with each of these issues in turn.
Does the use of the PENGUIN design trademark constitute use of the Mark as registered?
[22] For ease of reference, I have reproduced the Mark as registered and the PENGUIN Mark, as it appears in the Owner’s evidence:
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Mark as registered |
PENGUIN Mark in evidence |
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[23] As previously indicated, the Requesting Party submits that the Mark and the PENGUIN Mark are extremely different designs that cannot be mistaken for each other. To explain, the Requesting Party submits that the Mark is a caricature of a penguin in a squat posture more akin to a baby penguin, while the PENGUIN Mark is a caricature of an elongated adult penguin. Furthermore, and more importantly the Requesting Party argues, the head, beak, and limbs of the penguins in each design are turned in opposite directions.
[24] The Owner submits that the law of trademarks does not require the maintaining of the absolute identity of a trademark, nor does it look to miniscule differences to catch out a registered trademark owner acting in good faith. The Owner submits that some variation is acceptable and that a trademark owner is only required to keep the identity of the trademark so that it maintains recognizability and avoids confusion on the part of unaware purchasers.
[25] Moreover, the Owner submits that Canadian law does not incorporate a linear view of the trade mark registration but can tolerate multiple variants of a mark [Promafil Canada Ltee v Munsingwear (1992), 44 CPR (3d) 59 (FCA) at 71, cited in North Brewing Company Ltd v DLA Piper (Canada) LLP, 2023 FC 1188 at para 41].
[26] The Owner further notes cases where it submits that, like the present case, the dominant features of the trademarks in question were maintained, and thus held to constitute use of the trademarks as registered [see Montréal Production Inc and Harley-Davidson Motor Company, Inc, 2023 TMOB 164; Mark Sumbulian v 3074153 Canada Inc, 2022 TMOB 135]. The Requesting Party submits that these cases are distinguishable, in that the trademarks in question also contained distinctive word elements. The Owner, however, submits that these cases nonetheless remain relevant, as the design elements were held to constitute dominant features of the trademarks.
[27] The Owner submits that the differences between the registered PENGUIN design Mark and the PENGUIN Mark are minor, and that the dominant features in both designs have been maintained, namely, a penguin, formally dressed wearing a bow tie and a buttoned-up vest, with flippers and feet extended outwards or ‘spread eagle’ and a rounded head with a beak. The Owner submits that the fact that the beak is pointed in different directions between the two designs is a minor change that would not mislead an unaware purchaser.
[28] The Owner submits that the Requesting Party’s position that these designs are “extremely” different is not credible and the Requesting Party fails to consider the appropriate legal test, instead stating that the two designs “cannot be mistaken for each other.”
[29] Generally, where the trademark as used deviates from the trademark as registered, the question to be asked is whether the trademark was used in such a way that it did not lose its identity and remained recognizable in spite of the differences between the form in which it was registered and the form in which it was used [Canada (Registrar of Trade-marks) v Cie International pour l’informatique CII Honeywell Bull (1985), 4 CPR (3d) 523 at 525 (FCA)]. In deciding this issue, one must look to see if the “dominant features” have been preserved [Promafil Canada Ltée v Munsingwear Inc (1992), 44 CPR (3d) at 59 (FCA)]. Whether the differences between the trademarks are “so unimportant that an unaware purchaser would be likely to infer that both, in spite of their differences, identify goods having the same origin” [CII Honeywell, supra at p 525], is a question of fact.
[30] I agree with the Owner, and find, as was held in Promafil, supra, that while the two designs are different, they differ only in “petty” details. In this regard, I agree with the Owner’s assessment of the dominant features of the Mark, and that these features have been maintained. While the direction of the penguin’s head differs, the penguin’s head remains oriented in profile and, as such, I consider this difference to be minor.
[31] As such, I consider that any evidenced use of the PENGUIN Mark constitutes use of the Mark as registered.
Is there sufficient evidence of transfers of the goods in the normal course of trade?
[32] The Requesting Party submits that evidence comprising webpage printouts for goods showing the trademark on them, without anything more, is insufficient to show use of the trademark in Canada within the meaning of sections 4(1) and 45 of the Act. The Requesting Party submits that merely asserting online retail sales without evidencing that actual sales of specific goods occurred in this manner is insufficient [citing Plough, supra, and Kazar Group Spolka z ograniczona odpowiedzialnoscia v BCF SENCRL/BCF LLP, 2024 FC 2075 at para 19].
[33] Furthermore, the Requesting Party submits that the affidavit merely asserts that the PENGUIN Mark has been prominently depicted throughout the online checkout process without any facts providing an explanation for the checkout process.
[34] In response, the Owner submits that the Bernheim affidavit provides evidence of sales of the goods branded with the PENGUIN Mark in Canada during the relevant period in terms of the number of units sold, separated by product type, from the website to Canadian addresses. The Owner notes that it is well established that invoices are not mandatory to demonstrate that there have been transfers of the goods in the normal course of trade; what is required are assertions of fact showing use, such as providing the number of units sold during the relevant period, as is provided in the Bernheim affidavit [citing Gowling WLG (Canada) LLP v Northern Tool & Equipment Company, Inc, 2021 TMOB 286 at para 17; Oyen Wiggs Green & Mutala LLP v Hung Gay Enterprises Ltd, 2014 TMOB 107 at para 11]. The Owner submits that these assertions of fact distinguish the present case from the decision in Kazar relied upon by the Requesting Party.
[35] The Owner submits that the evidence includes images from the relevant period which show the PENGUIN Mark on “knit and woven shirts, t-shirts, sweatshirts, outerwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, swimsuits, shoes and sandals”. The Owner submits that where images of goods from the relevant period are not available, Ms. Bernheim attests that images of goods taken from the current website are “representative of the manner in which the PENGUIN Mark appeared on [wallets, handbags, backpacks, ties, underwear, and sneakers] during the relevant period”. Furthermore, the Owner submits that notice of association of the Mark with the goods is also provided through the online checkout process. In this regard, the Owner submits that Ms. Bernheim provides sworn statements the PENGUIN Mark was prominently depicted in the header of the website and throughout the checkout process when a customer made a purchase from the website.
[36] I agree with the Owner that the evidence in the present case is sufficient, as was held in Northern Tool & Equipment Company, supra and Hung Gay Enterprises Ltd, supra, to show there were sales in the normal course of trade of goods bearing the Mark in Canada during the relevant period. In this regard, Ms. Bernheim has provided clear sworn statements of fact regarding sales transactions (i.e. – the means through which the sales took place and sales figures broken down by product type), in combination with representative images of goods sold clearly bearing the Mark. Indeed, invoices are not necessary in a section 45 proceeding [Lewis Thomson & Sons Ltd v Rogers, Bereskin & Parr (1988), 21 CPR (3d) 483 (FCTD)], provided that there is some evidence of transfers in the normal course of trade in Canada during the relevant period [John Labatt, supra]. It has been accepted that such evidence can be in the form of sales reports or can also be through clear sworn statements regarding sales volumes, dollar value of sales, or equivalent factual particulars [1471706 Ontario Inc v Momo Design srl, 2014 TMOB 79]. In the present case, clear statements of fact regarding sales of specific goods have been provided [see Central Transport, Inc v Mantha & Associé/Associates (1995), 64 CPR (3d) 354 (FCA)]; and there is no evidence to suggest that such sales lacked bona fides. Consequently, I accept that sales of the enumerated goods attested to, took place in Canada, in the normal course of trade during the relevant period.
[37] Lastly, the Requesting Party submits that the evidence with respect to goods (3) does not show that such goods are “small leather goods…” as defined in the registration. In response, the Owner submits that Ms. Bernheim provides a sworn statement in her affidavit at paragraph 17, that the evidence is representative of how the Mark appears on such goods. The Requesting Party correctly notes however, that such sworn statements do not refer to “small leather goods” or wallets, bags, or backpacks made of leather. Indeed, such statements simply reference “wallets, bags, and backpacks”, as do the sales figures provided at paragraph 19 of the Bernheim affidavit. Furthermore, the representative depictions in evidence of such goods do not appear to be leather goods, but rather goods constructed of other materials, such as polyester.
[38] Consequently, I do not accept the evidence shows use of the Mark in association with the goods as defined in the registration under goods (3) as “small leather goods, namely, wallets, handbags, backpacks”. No special circumstances have been advanced to excuse the absence of such use.
[39] Accordingly, within the meaning of sections 4 and 45 of the Act, I am satisfied that the Owner has demonstrated use of the Mark only in association with goods (4). The registration will be amended accordingly.
Disposition
[40] Having regard to the aforementioned, 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 goods (1), (2), and (3) from the registration. Accordingly, the statement of goods in the registration will now read as follows:
(4) Small leather goods, namely, belts; and (2) clothing, namely, knit and woven shirts, t-shirts, sweatshirts, outerwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, ties, swimsuits, hosiery, underwear, and footwear, namely, sneakers, shoes, sandals.
Kathryn Barnett
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: 2025-09-23
APPEARANCES
For the Requesting Party: Sebastian Beck-Watt
For the Registered Owner: Erin Creber
AGENTS OF RECORD
For the Requesting Party: PCK IP Lawyers PC
For the Registered Owner: Gowling WLG (Canada) LLP