Canadian Intellectual Property Office

THE REGISTRAR OF TRADEMARKS

Citation: 2025 TMOB 203

Date of Decision: 2025-10-29

 

IN THE MATTER OF A SECTION 45 PROCEEDING

Requesting Party: IMAC S.p.A.

Registered Owner: International Gems Inc.

Registration: TMA345081 for I.G.I.

Introduction

[1] At the request of IMAC S.p.A. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) on February 7, 2025, to International Gems Inc. (the Owner), the registered owner of registration No. TMA345081 for the trademark I.G.I. (the Mark).

[2] The Mark is registered in association with the following goods:

Rings, pendants, chain, charms, bracelets, watches, necklaces, earrings, pocket watches, cuff links, tie bars, tie tacks, brooches, pins.

[3] The notice required the Owner to show whether the Mark was used in Canada in association with 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 use since that date. In this case, the relevant period for showing use is February 7, 2022 to February 7, 2025 and the relevant definition of “use” 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.

[4] 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 burden on the owner in a section 45 proceeding is not a stringent one and a prima facie case of use will suffice for the purposes of section 4 of the Act [Brouillette Kosie Prince v Great Harvest Franchising Inc (2009), 77 CPR (4th) 247 (FC)].

[5] In response to the Registrar’s notice, the Owner furnished the affidavit of James Keith Davis, sworn on May 1, 2025 (the Davis Affidavit).

[6] Neither party submitted written representations; a hearing was not requested.

The Owner’s Evidence

[7] In his affidavit, Mr. Davis identifies himself as the “founder and registered owner” of the Owner [para 1]. He explains that the Owner manufactures custom made jewellery – including all of the registered goods – which it sells at the “International Gems” retail store in Kelowna B.C. [para 3]. He asserts that, in its normal course of trade in Canada during the relevant period, the Owner used the Mark in association with all of the goods listed in the registration [paras 4 to 6].

[8] In particular, as evidence of how the Mark was associated with the registered goods, attached to the affidavit are photographs of four pieces of “custom made” jewellery (being a ring, a necklace, and two types of pendants) [para 4 and Exhibits 1 to 4]. I note that “IGI” appears to be engraved on each piece of jewellery.

[9] Mr. Davis confirms that the photographs are representative of how the Mark appeared on the registered goods sold by the Owner during the relevant period [para 4].

[10] As for evidence of transfers, Mr. Davis attests that “custom made jewellery” – including all of the registered goods – were sold at the Owner’s retail store in Kelowna during the relevant period [para 5], and he provides a “summary table of sales”, confirming that the figures include sales of each of the registered goods [para 6, Exhibit 5]. More specifically, the table shows sales of just over 300 “pieces” of jewellery totalling over $750000 in sales during the relevant period.

Analysis

[11] First, I note that the trademark as displayed, IGI, differs from the Mark as registered. More specifically, the trademark displayed on the goods appears without the periods contained in the Mark.

[12] However, I accept that the evidenced display of IGI on the jewellery pieces constitutes display of the Mark as registered. In this respect, in applying the principles as set out in Canada (Registrar of Trade Marks) v Cie internationale pour l'informatique CII Honeywell Bull, SA, 1985 CanLII 5537 (FCA) and Promafil Canada Ltée v Munsingwear Inc, 1992 CanLII 12831 (FCA), I consider the absence of the periods to be a minor deviation from the Mark as registered.

[13] As such, I accept that the Owner has demonstrated use of the Mark as required by the subject section 45 notice. Specifically, the evidence is sufficient to show that:

· during the relevant period and in its normal course of trade, the Owner sold all of the registered goods to Canadian customers; and

· such jewellery goods were associated with the Mark at the time of transfer by way of engravement on the goods themselves.

[14] In view of the foregoing, I am satisfied that the Owner has demonstrated use of the Mark in association with all of the registered goods, within the meaning of sections 4 and 45 of the Act.

Disposition

[15] 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.

Andrew Bene

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: ROBIC AGENCE PI S.E.C./ ROBIC IP AGENCY LP

For the Registered Owner: No agent appointed