Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2025 TMOB 208
Date of Decision: 2025-10-30
Requesting Party: SmartSweets Inc.
Registered Owner: Nestlé Waters
Overview
[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. TMA379,829 for the trademark PERRIER & DESSIN shown below (the Mark), in the name of Nestlé Waters (the Owner).
[2] The Mark is registered for use in association with the following goods, which I reproduce in French as they appear on the Trademark Database:
(1) Porte-clés.
(2) Parapluies.
(3) Parasols.
(4) Porte-cartes de visite en cuir, sacs et sacs de sports.
(5) Articles en cuir, nommément: porte-monnaie.
(6) Parapluies et parasols.
(7) Miroirs.
(8) Inclusions bouteille 1/4 Perrier en plastique, présentoirs de bouteilles, panneaux en matière plastique pour camions, bouteilles gonflables pouvant servir de coussin.
(9) Ouvre-bouteilles et décapsuleurs.
(10) Menus clip-ons.
(11) Verres, gobelets plastique, dessous de bouteilles plastifiés, sceaux à glace.
(12) Décapsuleurs.
(13) Petit ustensiles et sous-verres; gobelets.
(14) Articles textiles nommément, serviettes de plage.
(15) Vêtements, nommément: blousons.
(16) Ceinture.
(17) Articles textiles nommément, tricot à col roulé, coupe-vent, toque.
(18) Vêtements, nommément: T-shirts, golf sweaters.
(19) Sweatshirts, chemises, tenues de jogging, cravates, visières, casquettes.
(20) Jeux de patience, balles de tennis, ballons.
[3] For the reasons that follow, I conclude that the registration ought to be amended.
The Record
[4] At the request of SmartSweets Inc. (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Act on March 28, 2024, to the Owner.
[5] The notice required the Owner to show whether the Mark was used in Canada in association with each of the goods specified in the registration 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 used and the reason for the absence of use. In this case, the relevant period for showing use is March 28, 2021 to March 28, 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 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] 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 [Miller Thomson LLP v Hilton Worldwide Holding LLP, 2020 FCA 134; Black & Decker Corp v Method Law Professional Corp, 2016 FC 1109]. The owner’s evidentiary threshold is quite low [Performance Apparel Corp v Uvex Toko Canada Ltd, 2004 FC 448] and “evidentiary overkill” is not required [see Union Electric Supply Co v Canada (Registrar of Trade Marks) (1982), 63 CPR (2d) 56 (FCTD)]. An owner need only establish use on a prima facie basis in association with each of the goods specified in the registration, and all that is required is for evidence to supply facts from which a conclusion of use may follow as a logical inference [Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184; John Labatt Ltd v Rainier Brewing Co et al (1984), 80 CPR (2d) 228 (FCA)].
[8] Where the owner has not shown “use”, the registration is liable to be expunged or amended, unless there are special circumstances that excuse the absence of use.
[9] In response to the notice, the Owner furnished the solemn declaration of Lina Benkhaldoun, declared in Toronto, Ontario, on August 26, 2024, together with Exhibits A through D [the Benkhaldoun Declaration].
[10] Both parties submitted written representations; only the Owner made representations at an oral hearing.
Preliminary matter
[11] As a preliminary matter, the Owner argues that this section 45 proceeding is retaliatory and an abuse of process, submitting that the Registrar should consider it frivolous and vexatious. In this respect, the Owner notes that, after it had opposed certain applications filed by the Requesting Party for unrelated trademarks, the Requesting Party then initiated seven section 45 proceedings against the Owner, including the present proceeding.
[12] The Owner further submits that the Requesting Party’s behaviour, notably its filing “near identical” written representations in all seven proceedings that all fail to address “the specific evidence of use furnished […] in each of those proceedings”, as well as its failure to attend an oral hearing, should be understood as a lack of legitimate interest in these proceedings [Owner’s Written Representations, paras 19-21]. The Owner requests that this proceeding be dismissed on this basis alone.
[13] While I agree with the Owner that the Requesting Party’s written representations are cursory at best and mostly limited to general principles and broad statements and that they did not attend the hearing, I do not consider this to be a basis to dismiss this proceeding as both written representations and attending at a hearing are optional under the scheme of the Act. Further, the scope of section 45 proceedings is narrow - the sole issue to be determined is whether a trademark has been used within the meaning of the Act. Moreover, section 45 proceedings are designed to protect concerns of a public nature and contemplate the participation of persons with no interest whatsoever in the existence of a given trademark [Sport Maska Inc v Bauer Hockey Corp, 2016 FCA 44; Meredith & Finlayson v Canada (Registrar of Trade Marks) (1991), 40 CPR (3d) 409 (FCA)]. 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].
[14] In any event, although section 45(1) of the Act provides that the Registrar may refuse to issue a section 45 notice if there are “good reasons to the contrary”, once the notice is issued, allegations that a party’s actions may be abusive or vexatious are irrelevant [Norton Rose Fulbright Canada LLP/SENCRL,SRL v Tony Kock Yin Chao, 2021 TMOB 217]. The Owner’s request is therefore refused.
Reasons for decision
Use of the Mark under license
[15] The Benkhaldoun Declaration explains the corporate relationship between various Nestlé entities, and states that the Mark is used, under license, by the Nestlé Waters Canada division of Nestlé Canada Inc. (Nestlé Canada). It also states that the Owner has consistently exercised control over the character and quality of the goods and services sold or performed by Nestlé Canada in association with the Mark during the relevant period [paras 5-13].
[16] In view of these statements, I find that any evidenced use of the Mark by Nestlé Canada enures to the benefit of the Owner pursuant to section 50(1) of the Act [see Empresa Cubana Del Tabaco v Shapiro Cohen, 2011 FC 102 at para 84, aff’d 2011 FCA 340].
Summary of relevant evidence of use of the Mark
[17] The Benkhaldoun Declaration explains that the Mark has been used in Canada since at least 1990 and attaches images of various registered goods, which images are stated to be representative of how the Mark appeared on the products during the relevant period. The products shown are identified by name in English, and by number group from the registration as follows: Umbrellas and parasols (goods 2, 3 & 6); Bags and sports bags (goods 4); Bottle displays (goods 8); Bottle openers (goods 9 & 12); Clip-on menus (goods 10); Glasses, plastic cups, plastic coated bottles, ice buckets (goods 11); Coasters, goblets (goods 13); Textile articles, namely, beach towels (goods 14); Belts (goods 16); Clothing, namely: T-shirts, golf sweaters (goods 18); Sweatshirts, shirts, caps (goods 19) [paras 17-18, Exhibit B].
[18] The Benkhaldoun Declaration explains that:
While most of the goods are promotional in nature and support sales of PERRIER Design Mark branded premium water products, they are distributed to consumers in Canada, and have been […] during the Relevant Period [para 15].
[19] The Benkhaldoun Declaration states that Nestlé Canada distributed water and beverage products branded with the Mark, representative images of which are provided [Exhibit C], and performed services related thereto for many years [para 19]. It explains that:
In support of the sale of those products and services, and in the normal course of its trade, Nestlé Waters Canada distributes, and has distributed PERRIER Design Mark branded goods to consumers in Canada during the Relevant Period through a wide variety of channels, including primarily through promotional and community events [para 20].
[20] The Benkhaldoun Declaration states that such distribution of promotional items is part of the Nestlé Canada’s marketing and promotional efforts “in the normal course of its business” [para 29].
[21] The Benkhaldoun Declaration explains how promotional items were ordered, delivered and managed by Nestlé Canada, and how “Brand Activation Managers” organized events and meetings where promotional goods were distributed to attending establishments [paras 30-33]. It states that the goal of these events was and is to encourage establishments to offer “PERRIER Design Mark branded goods at their establishments, for their customers to purchase” [para 32].
[22] The Benkhaldoun Declaration states that at these events, promotional items are distributed to establishments, which can then use them in their operation, or give them away to their patrons [para 33]. Moreover, it affirms that “PERRIER Design Mark branded goods, including the Registered Goods, were distributed to attendees” at these events [para 34].
[23] The Benkhaldoun Declaration states that Nestlé Canada has had great success in selling water and beverage related products in Canada and attributes part of that success to brand awareness created from the “distribution of its PERRIER Design Mark branded goods, including the Registered Goods […] frequently during the relevant period” [para 35].
[24] The Benkhaldoun Declaration also provides three invoices dated during the relevant period pertaining to certain of the registered goods.
[25] Two invoices are issued to Nestlé Canada by a third party manufacturer. The declaration states that Nestlé Canada “ordered the manufacture of, and purchased […] Registered Goods bearing the Perrier Design Mark”, identified on such invoices as follows [paras 22-23 & 26-27, Exhibit D, Tabs 1 & 3]: Bags; Ice buckets; Sweatshirts; Coasters.
[26] The third invoice, however, pertains to “the purchase by Nestlé Waters Canada from Nestlé Waters of various PERRIER Design Mark branded goods, including the following Registered Goods” [para 24, Exhibit D, Tab 2]: Bottle Opener; Umbrellas; Sports Bag; Bottle Display.
[27] Although the invoices are redacted to mask confidential information, including the number of items ordered and their purchase price, the Benkhaldoun Declaration confirms that “in some cases tens, and in the majority of cases, hundreds, and in some cases, thousands of each of the […] goods listed in these invoices were ordered” [para 28].
Analysis
[28] The Owner’s evidence is clear that the goods specified in the registration are primarily promotional goods distributed to support the sales of the Owner’s premium water products.
[29] I note that the evidence does not include invoices, other documentation or clear statements regarding the financial aspects or implications of Nestlé Canada’s distribution of the promotional goods to the establishments in question. As such, there is no indication whether the registered goods were sold, distributed at low cost or given away for free.
[30] In view of this evidence, I must consider whether the evidence is sufficient to demonstrate transfer of any of the registered goods in the normal course of trade, as required by section 4(1) of the Act.
[31] The Owner rightly submits that section 4(1) of the Act does not require a transfer of goods for actual profit [see Cosmetic Warriors Limited v Riches, McKenzie & Herbert LLP, 2019 FCA 48 at para 23].
[32] It nevertheless remains that the free distribution of goods merely to promote one’s own brand or other products or services does not generally constitute a transfer in the normal course of trade [see, for example, Smart & Biggar v Sutter Hill Corp, 2012 TMOB 121, 103 CPR (4th) 128; and Riches, McKenzie & Herbert LLP v Park Pontiac Buick GMC Ltd (2005), 50 CPR (4th) 391 (TMOB)]. For the free distribution goods to qualify as a transfer in the normal course of trade, the evidence must show that the goods were delivered, not merely as a means of promoting other products or services, but as an object of trade in itself, leading to some kind of payment or exchange for such goods [see Canada Goose Inc v James, 2016 TMOB 145; and Oyen Wiggs Green v Flora Manufacturing and Distributing Ltd, 2014 TMOB 105, 125 CPR (4th) 152].
[33] In the present case, the Benkhaldoun Declaration asserts that Nestlé Canada purchased the goods identified in the invoice issued by the Owner. It would have been preferable to provide more details regarding this transaction. That being said, sworn statements are to be accepted at face value and accorded substantial credibility in section 45 proceedings [per Oyen Wiggs Green & Mutala LLP v Atari Interactive, Inc, 2018 TMOB 79 at para 25]. As such, and in the absence of substantive representations from the Requesting Party regarding the characterisation of this transaction, I find this evidence sufficient to show a genuine sale in the normal course of trade of the products identified in the invoice provided as Exhibit D, Tab-2, between the Owner and Nestlé Canada.
[34] As the goods in question originated from the Owner, I accept that this sale along the Owner’s distribution chain enures to the Owner’s benefit [per Manhattan Industries Inc v Princeton Manufacturing Ltd (1971), 4 CPR (2d) 6 (FCTD); Lin Trading Co v CBM Kabushiki Kaisha (1988), 21 CPR (3d) 417 (FCA); Osler, Hoskin & Harcourt v Canada (Registrar of Trade Marks) (1997), 77 CPR (3d) 475 (FCTD)]. I therefore find that the Owner has demonstrated use, pursuant to sections 4(1) and 45 of the Act in association with the following goods: (2) parapluies (umbrellas); (4) sacs de sport (sports bags); (8) présentoirs de bouteilles (bottle display); (9) ouvre-bouteilles (bottle openers).
[35] However, I cannot arrive at the same conclusion regarding the remaining goods specified in the registration.
[36] With regard to the goods identified in the two other invoices, although the evidence shows that they were manufactured for Nestlé Canada, there is no evidence such as invoices, sales reports or clear statements that they were the subject of further transactions in a distribution chain, were sold to clients or were otherwise objects of trade in their own right.
[37] With regard to all the remaining goods specified in the registration, the evidence is largely limited to photographs of products which, as noted by the Requesting Party, in some instances, do not seem to correspond to the goods in the registration. In any event, again, the evidence does not contain documents or clear statements evidencing that any of these goods were objects of trade in their own right.
[38] The Owner has evidenced the distribution of promotional goods as an important part of its overall strategy to support its sales of premium water products. Unfortunately, in the present case, I consider this evidence insufficient to demonstrate that such promotional goods are objects of trade in and of themselves; rather, the evidence here is that they are merely promotional in nature. As such, in the present case, their distribution does not constitute a transfer in the normal course of trade as required by section 4(1) of the Act [for similar conclusions, see Chilly Moose Ltd v Moosehead Breweries Limited, 2025 TMOB 196; 1661, Inc v Vista Radio Ltd, 2025 TMOB 83; Canada Lands Company Limited v The Toronto Regional Real Estate Board, 2025 TMOB 74; Montréal Production Inc and Harley-Davidson Motor Company, Inc, 2023 TMOB 133; Future Living Developments Ltd v International Living Future Institute, 2022 TMOB 262].
[39] In view of the foregoing, considering the evidence a whole, I find it insufficient to show use of the Mark pursuant to sections 4(1) and 45 of the Act with the remaining goods. As the Owner acknowledged at the hearing that the evidence did not show or raise the issue of special circumstances excusing any absence of use, the remaining goods will be deleted from the registration as per the disposition below.
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 following goods and services:
[…]
(3) Parasols.
(4) Porte-cartes de visite en cuir, sacs et […]
(5) Articles en cuir, nommément: porte-monnaie.
(6) Parapluies et parasols.
(7) Miroirs.
(8) Inclusions bouteille 1/4 Perrier en plastique, […], panneaux en matière plastique pour camions, bouteilles gonflables pouvant servir de coussin
(9) […] et décapsuleurs
(10) Menus clip-ons.
(11) Verres, gobelets plastique, dessous de bouteilles plastifiés, sceaux à glace.
(12) Décapsuleurs.
(13) Petit ustensiles et sous-verres; gobelets.
(14) Articles textiles nommément, serviettes de plage.
(15) Vêtements, nommément: blousons.
(16) Ceinture.
(17) Articles textiles nommément, tricot à col roulé, coupe-vent, toque.
(18) Vêtements, nommément: T-shirts, golf sweaters.
(19) Sweatshirts, chemises, tenues de jogging, cravates, visières, casquettes.
(20) Jeux de patience, balles de tennis, ballons.
[41] The amended statement of goods will read as follows:
(2) Parapluies.
(4) Sacs de sports.
(8) Présentoirs de bouteilles.
(9) Ouvre-bouteilles.
Emilie Dubreuil
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: August 19, 2025
APPEARANCES
For the Requesting Party: No one appearing
For the Registered Owner: Kathleen Lemieux
AGENTS OF RECORD
For the Requesting Party: Palmer IP INC.
For the Registered Owner: Borden Ladner Gervais LLP