Uvex Toko Canada Ltd. v. Performance Apparel Corp., 2004 FC 448

Date: 20040325

Docket: T-2115-02

Citation: 2004 FC 448

Ottawa, Ontario, this 25^th day of March, 2004

Present:           The Honourable Justice James Russell                                

BETWEEN:

                                                    UVEX TOKO CANADA LTD.

                                                                                                                                            Applicant

                                                                           and

                                             PERFORMANCE APPAREL CORP.

                                                                                                                                        Respondent

                                            REASONS FOR ORDER AND ORDER

[1]                 This is an application, pursuant to s. 56(1) of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended ("Act") by Uvex Toko Canada Ltd. ("Applicant") to appeal the decision of the Registrar of Trade-marks, through Senior Hearing Officer D. Savard ("Registrar"), dated October 17, 2002 ("Decision"), granting the request of Performance Apparel Corp. ("Respondent") under s. 45 of the Act to expunge trade-mark registration 354,471 ("Registration").

[2]                The Applicant asks the Court to set aside the decision of the Registrar expunging the Registration, to dismiss the Respondent's request under s. 45 of the Act, and to award costs to the Applicant.

BACKGROUND AND DECISION UNDER REVIEW

[3]                 OnJuly 28, 2000, at the request of the Respondent, the Registrar of Trade-marks forwarded a s. 45 Notice to the Applicant ("Notice"). The Notice required the Applicant to show use of its trade-mark HOT CHILLY'S ("Trade Mark") in Canada in the period July 27, 1997, through July 27, 2000 ("Relevant Period").

[4]                In response to the Notice the Applicant filed the unsworn affidavit of Mr. Doug Wilson, who is the president of the Applicant company.

[5]                By decision of D. Savard, Senior Hearing Officer, s. 45 Division on behalf of the Registrar, the Registration was ordered expunged, as the Registrar found that the unsworn affidavit of Mr. Wilson could not be considered evidence for the purposes of a s. 45 proceeding.

[6]                The Registrar also found that the evidence of sales of "HANGUP suspenders" and "HOT hoods" during the Relevant Period was not clear, as the invoices for such wares were subsequent to the Relevant Period.

[7]                The Registrar found that, with respect to the remaining wares listed on the Registration, the evidence furnished was clearly insufficient to show use of the Trade Mark during the Relevant Period. Also, the evidence was completely silent with respect to the Services. Hence the Registrar agreed that Services should be deleted from the Registration.

[8]                The Registrar did, however, make certain findings of fact that are of assistance in this Application. On page 3 of the Registrar's decision, she found as follows:

Had the document [Doug Wilson's affidavit] been found admissible, I would have concluded that use of the trade-mark had been shown during the relevant period only in association with the wares "clothing namely socks and underwear". Concerning those wares, I would have concluded that the invoices bearing dates during the relevant period showed sales of such wares. Also, I would have found the evidence sufficient to permit me to conclude that at the time of transfer of the wares in the normal course of trade the trade-mark HOT CHILLY'S appeared on the packaging for such wares. In this regard, I would have been satisfied that a correlation could be made between the descriptions on some of the packaging furnished as Exhibit A and the description appearing on the invoices bearing dates during the relevant period. For example, on the invoice dated "September 29, 1997" the item "BOYS SOLARMX PANT NAVY" would appear to be the item sold in the packaging bearing the words "Boys" HOT CHILLY'S underwear with SOLARMAX^TM". Based on the evidence furnished, I would have found it reasonable to infer that "pant" on the invoice was a reference to "long underwear". The invoice dated "September 09, 1997" refers to the item "L'IL CHILLY'S NAVY YTH 3-5" and there is a packaging which refers to "L'IL CHILLY'S Thermal socks for youth, size 3-5 and the packaging also clearly bears the trade-mark HOT CHILLY'S."                                                                                

[9]                On appeal by way of application, the Applicant filed a sworn affidavit of Mr. Doug Wilson dated January 14, 2003 ("Affidavit"), which repeated the evidence before the Registrar and added additional evidence concerning the use of the Trade Mark in the Relevant Period, not only in association with "socks and underwear" as found by the Registrar, but also in association with "pants, suspenders, neck warmers, scarves, hats (woven and knitted), turtlenecks, vests and shirts."

[10]            The Applicant claims to have submitted significant and substantial new evidence on appeal. Mr. Wilson was cross examined on the Affidavit by the Respondent.

PERTINENT LEGISLATION

[11]            Subsection 45(1) of the Act provides that a registered owner of a trade-mark who receives notice from the Registrar must furnish an affidavit or statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trade-mark was in use in Canada any time during the three-year period immediately preceding the date of the notice and, if not, the date when it was last used and the reason for the absence of use since that date.

[12]            Subsection 45(3) of the Act indicates that where, by reason of the evidence furnished or the failure to furnish any evidence , it appears to the Registrar that a trade-mark is not in use in Canada and that the absence of such use has not been due to special circumstances that excuse the absence of the use, the registration of the trade-mark is liable to be expunged or amended accordingly.

[13]            Section 2 of the Act defines "use" in relation to a trade-mark as "any use that by s. 4 is deemed to be a use in association with wares or services." Subsection 4(1) of the Act reads as follows:

[14]            An appeal from a decision of the Registrar lies to the Federal Court pursuant to s. 56 of the Act.

ISSUES

What is the standard of review applicable to the Decision of the Registrar?

Has the Applicant demonstrated use in Canada of the trade-mark HOT CHILLY'S registered under registration No. TMA354,471 during the Relevant Period in association with each of the following wares: socks, underwear, pants, suspenders, neck warmers, scarves, hats (woven and knitted), turtlenecks, vests and shirts (the "Remaining Wares")?                

ARGUMENTS                      

Applicant

Standard of Review

[1]                The Applicant submits that the standard of review on appeal from the Registrar is that the Court should not interfere with the Registrar's decision unless the Court finds the Registrar has failed to properly interpret or consider the facts or that significant or substantial new evidence is placed before the Court (Ridout & Maybee v. Sealy Canada Ltd. (1999), 87 C.P.R. (3d) 307 at 313 (F.C.T.D.)).

[2]                The Applicant submits that, in this case, there is significant and substantial new evidence before the Court that was not before the Registrar and that the Court should consider the matter de novo.

Use

[3]                The Applicant submits that the Affidavit shows use of the Trade Mark on or in association with the Remaining Wares during the Relevant Period.

[4]                The Affidavit indicates that the Registration for the Trade Mark occurred on April 14, 1989. The Registration was based on use in Canada since at least as early as February 20, 1989 in association with clothing products and accessories. The Affidavit further indicates that as at the date of the s. 45 Notice (July 28, 2000), and for the Relevant Period, the Applicant was using the Trade Mark in association with clothing products in Canada on the wares themselves, and/or packaging and in promotional material and advertising. The clothing products which depicted the Trade Mark in the Relevant Period included pants, socks, underwear, suspenders, neck-warmers, scarves, hats (woven and knitted), turtlenecks, vests and shirts.

[5]                The Applicant submitted representative packaging, labels, representative advertising and retailer invoices exhibiting use of the Trade Mark as exhibits to the Affidavit.

[6]                The Applicant submits that the threshold for use on a s. 45 proceeding is quite low (Woods Canada Ltd. vs. Lang Michener et al. (1996), 71 C.P.R. (3d) 477 at 480 (F.C.T.D.), Barrigar & Oyen v. Registrar of Trade-Marks et al. (1994), 54 C.P.R. (3d) 509 at 511 (F.C.T.C.), Union Electric Supply Co. Ltd. vs. Registrar of Trade-Marks (1982), 63 C.P.R. (2d) 56 at 57 (F.C.T.D.).

Respondent

Standard of Review

[7]                As no evidence was submitted before the Registrar, the Respondent agrees that additional evidence has been adduced on appeal which would have materially affected the Decision. The Respondent submits that, accordingly, the standard of review must be that of correctness (Molson Breweries, a Partnership v. John Labatt Ltd., [2000] 3 F.C. 145, 5 C.P.R. (4^th) 180 (C.A.)).

Use

The Evidentiary Requirements

[8]                The Respondent submits that the nature and purpose of the evidence required by s. 45 was set out by Thurlow C.J. of the Federal Court of Appeal in Plough (Canada) Ltd. v. Aerosol Fillers Inc. (1980), 53 C.P.R. (2d) 62 at 66 (F.C.A.).

[9]                The Respondent submits that the evidence must clearly show use by the registrant in respect of each of the wares and/or services. Specifically, to avoid unacceptable recourse to "token use," it is incumbent upon the owner of a trade-mark to show how, when, and where the mark has been used (Empire Clothing Manufacturing Co. v. Registrar of Trade Marks et al. (1982), 67 C.P.R. (2d) 180 at 185 (F.C.T.D.)).

Use in the Normal Course of Trade

[10]            The Respondent submits that, as a prerequisite to showing that a mark has been used in the normal course of trade, the owner must provide evidence as to what constitutes the normal course of its trade. The Registrar cannot make assumptions or be expected to know the nature of the business of the owner of any trade-mark or the practices and experiences in the ordinary course of the owner's business (S.C. Johnson & son, Inc. v. Registrar of Trade Marks (1981), 55 C.P.R. (2d) 34 at 37 (F.C.T.D.).

[11]            The Respondent notes that the inclusion of the word "trade" in the requirement is crucial:

The word "trade" in the expression "in the normal course of trade" is very important and, in my view, such word contemplates some payment or exchange for the wares supplied or at least that the transfer of the wares be a part of a dealing in the wares for the purpose of acquiring goodwill and profits from the marked goods.

Renaud Cointreau & Cie v. Cordon Bleu International Ltd. (1993), 52 C.P.R. (3d) 284 (Senior Hearing Officer) at 287.

Special Circumstances Justifying Non-Use

[12]            Special circumstances justifying non-use means "circumstances that are unusual, uncommon or exceptional." (Sim & McBurney v. Belvedere International Inc. (1993), 53 C.P.R. (3d) 522 at 523 (F.C.T.D.)).

[13]            The Respondent submits that, in determining whether special circumstances have been shown, three factors must be considered: (1) the length of time during which the trade-mark has not been used; (2) whether the reasons for non-use are due to special circumstances beyond the registrant's control; and (3) whether on the evidence it is possible to conclude that the registrant has shown a serious intention to shortly resume use of the mark (Registrar of Trade Marks v. Harris Knitting Mills Ltd. (1985), 4 C.P.R. (3d) 488 (F.C.A.))

[14]            The intention to resume use shortly must be "substantiated by factual elements such as purchase orders, or at least a specific date of resumption" (Lander Co. Canada Ltd. v. Alex E. MacRae & Co. (1993), 46 C.P.R. (3d) 417 at 421 (F.C.T.D.)).

Burden Regarding Use by the Applicant

[15]            The Respondent argues that the Applicant has conceded that the Affidavit shows use of the Trade Mark only in association with the Remaining Wares and that the Registration should be amended to reflect the Remaining Wares and delete all other wares as well as the Services.

[16]            The Respondent submits that, in these proceedings, the Applicant must establish that it has used the Trade Mark at some time in the Relevant Period in association with the Remaining Wares.

[17]            The Respondent says that, to maintain the Registration with respect to the Remaining Wares, the Court must be able to conclude from the evidence set out in the Affidavit that:

(a)         the Trade Mark, in the form in which it is registered, was used in Canada,

(b)         by the Applicant in the normal course of its trade,

(c)         with respect to each of the Remaining Wares,

(d)         at any time during the Relevant Period, or if there was no use during that period, the date when the Trade Mark was last in use and the reason for the absence of use since that date.

Evidence of Use as Filed

[18]            The Respondent submits that the evidence filed by the Applicant does not support maintenance of the Registration with respect to pants, neck warmers, scarves, woven hats, turtlenecks, vests and shirts.

Pants

[19]            The Respondent says that the only potential "pants" which appear on the invoices are listed as "MTF PANT" and "SOLARMX PANT". Invoice #00064964, dated September 29, 2000, which refers to a "SPORT PANT" is outside the Relevant Period and therefore must be disregarded. Invoice #00027404 does not establish sales of the "MTF PANT", as the quantity shipped is listed as "0", indicating that these products were never shipped, and never sold, as confirmed by Mr. Wilson on cross-examination.

[20]            The Respondent notes that the "SOLARMX PANT", otherwise known as the SOLARMAX garment refers to long or thermal underwear, worn as a base layer, not to an actual "pant" that would be worn on its own. The Respondent notes that the Applicant relies on one garment, the "SOLARMX PANT", as its sole evidence of use of the Trade Mark in association with bottom underwear and pants. It does not furnish evidence of sales of any other pants or bottom underwear. The Respondent argues that none of the invoices submitted with the Affidavit demonstrate that any of this thermal underwear was sold during the Relevant Period.

[21]            The Respondent submits that, when one looks at the SOLARMAX garment display in Exhibit 1 to the Wilson cross-examination, it is obvious that it can only be characterized as long underwear, and not as pants. Such a garment would not be worn on its own as pants. The Respondent submits that the Applicant cannot claim that it has used the Trade Mark in association with pants and underwear while referring to the same garment. The Respondent also submits that what the Applicant refers to as "Solarmax pants" in the Affidavit are only sold as underwear, and not as "pants".

[22]            Accordingly, the Respondent submits that the Applicant has not established use of the Trade Mark in association with pants. Hence, "pants" should be deleted from the Registration.

Turtlenecks, Vests and Shirts

[23]            The Respondent submits that the only "tops" referred to in the invoices submitted by the Applicant are listed as the "SOLARMX TOP". As is the case with the "MTF PANT", the "FLEECE SNB TAILTOP" appearing on invoice #00027404 dated September 29, 1997 was never shipped and therefore there is no evidence that it was ever sold. Invoice #00064964, dated September 29, 2000, which refers to a "SPORT CREW" is outside the Relevant Period and therefore must be disregarded.

[24]            The Respondent submits that the Applicant has not disclosed any evidence of the use of the Trade Mark in association with turtlenecks and vests. All the tops referred to in the three relevant invoices submitted by the Applicant are crew tops, not vests or turtlenecks.

[25]            Also, with respect to the crew neck and round neck, the Respondent submits that Mr. Wilson explained on cross-examination that these are the same thing. The Respondent says that, as in the case of "pants", the crew neck garment which the Applicant attempts to characterize as a "shirt" is, in fact, long thermal underwear and not a shirt.

[26]            The Respondent further submits that Mr. Wilson admitted that the product called "SOLARMAX [Base Layer] Men's Crew Neck Top" was representative of the SOLARMAX crew neck tops referred to in the invoices at Exhibit "C" to the Affidavit, and he further admitted that it would be fair to characterize this garment as underwear.

[27]            The Respondent submits that it is obvious when looking at the SOLARMAX top that it is long or thermal underwear, not a shirt. It would not be worn in the same fashion as a shirt. The Respondent submits that the common meaning of "shirt" does not include such a garment, nor is there any overlap between the common meanings of "shirt" and "underwear".

[28]            The Respondent submits that the Applicant relies on one garment, the "SOLARMX TOP" as its sole evidence of use of the Trade Mark in association with top underwear and shirts. The invoices demonstrate that this product was the only garment of either category that was sold during the Relevant Period. The Respondent submits that the SOLARMAX TOP is clearly underwear. Accordingly, the Respondent submits that the Applicant has not furnished any evidence of use of the Trade Mark in association with "shirts" and these wares should be deleted from the Registration.

Neck Warmers and Woven Hats

[29]            The Respondent submits that the only "head wear" product in respect of which the Applicant has adduced evidence of sales, and therefore use of the Trade Mark in its normal course of trade, is the "HOT HOOD".

[30]            The Respondent notes that, in the Affidavit, Mr. Wilson states that "[t]he "hot hood" HOT CHILLY'S product is a combination neck-warmer, woven and knitted hat because of its unique balaclava design." Hence, the Applicant is attempting to characterize the same garment, the "HOT HOOD", as three of the wares listed in its Registration: a neck-warmer, a woven hat and a knitted hat.

[31]            The Respondent submits that the HOT HOOD garment cannot be classified as both a woven or knitted hat; it must be one or the other. The Respondent submits that it is clearly a knitted garment. The Respondent notes that, when asked on cross-examination if a HOT HOOD was a woven and knitted hat, Mr. Wilson's answer was "[n]ot necessarily". Such an ambiguous statement with respect to the characterisation of the wares should, the Respondent argues, be construed against the Applicant, as the onus pursuant to s. 45 of the Act is on the Applicant to furnish clear evidence of use in association with each of the wares.

[32]            The Respondent submits that the HOT HOOD is intended to be a hat, and not a neck warmer. Accordingly, the Respondent says that the Applicant has not furnished any clear evidence of use of its Trade Mark in association with neck warmers and, therefore, that those wares should be deleted from the Registration.

Scarves

[33]            The Respondent submits that with respect to "scarves", the Applicant, with the exception of a bald statement in the Affidavit, has not furnished any evidence of use of its Trade Mark in association with scarves. None of the invoices or the pictures of packaging attached to the Affidavit make any references to scarves. Accordingly, these wares should be deleted from the Registration.

Conclusion

[34]            The Respondent submits that the evidence provided in the Affidavit consists only of unsupported and ambiguous bald statements that the Trade Mark was used by the Applicant in association with pants, neck warmers, scarves, woven hats, turtlenecks, vests and shirts. There is no other evidence that the Trade Mark was used in association with such wares in the Relevant Period.

[35]            The Respondent further notes that the Applicant has not demonstrated any "special circumstances" justifying its failure to use the Trade Mark in association with those wares.

[36]            Therefore, the Respondent submits that, of the Remaining Wares, the following wares must be deleted from the Registration: pants, neck warmers, scarves, woven hats, turtlenecks, vests and shirts. The Respondent concedes that there is sufficient evidence to support the Registration in relation to underwear, suspenders, knitted hats and socks.

ANALYSIS

[37]            As numerous cases have made clear, the purpose of s. 45 of the Trade Marks Act is to provide a summary procedure that allows the register to be cleared of marks that have fallen into disuse. See, for example, Woods Canada, supra, at p. 480. It is also clear that s. 45 is not intended to be an adversarial process in the way that s. 57 of the Act is. As Hugessen J.A. put the matter for the Federal Court of Appeal in Meredith & Finlayson v. Canada (Registrar of Trade Marks) (1991), 40 C.P.R. (3d) 409 at 412:

Section 45 provides a simple and expeditious method of removing from the register marks which have fallen into disuse. It is not intended to provide an alternative to the usual inter partes attack on a trade mark envisaged by s. 57. The fact that an applicant under s. 45 is not even required to have an interest in the matter (the respondent herein is a law firm) speaks eloquently to the public nature of the concerns the section is designed to protect.

[38]            It has also been often said that a corollary to these basic principles is that the registrar (and in this case, the Court) should be satisfied by a relatively low threshold of use. See, for example, Baume & Mercier S.A. v. Brown carrying on business as Circle Import (1985), 4 C.P.R. (3d) 96 (F.C.T.D.); Barrigar & Oyen v. Canada (Registrar of Trade Marks) (1994), 54 C.P.R. (3d) 509 (F.C.T.D.).

[39]            But what does "a relatively low threshold of use" mean? And therein lies the rub, at least as far as this case is concerned.

[40]            In Union Electric Supply Co. Ltd. v. Registrar of Trade-Marks (1982), 63 C.P.R. (2d) 56, Mahoney J., at page 57, felt that there "is absolutely no justification in putting a trade mark owner to the expense and trouble of showing his use of the trade mark by evidentiary overkill when it can be readily proved in a simple, straightforward, fashion." This means that, to quote Mahoney J. again in Union Electric, supra, "[u]se must be shown, not examples of all uses":

The type of evidence necessary to "show" use of a trade mark in Canada will doubtless vary from case to case depending, to some extent, on the nature of its owner's business, e.g. manufacturer, retailer or importer, and merchandising practices. Perhaps the sort of evidence the respondent would have accepted here is needed in some cases, however, he erred in rejecting the evidence he had here as insufficient and unreliable [page 60].

[41]            The Applicant argues that the affidavit of Mr. Wilson goes well beyond what was considered sufficient evidence of use in Union Electric, supra.

[42]            The same principles have been applied in more recent cases. See, for example, Re: Climatique International Inc., [1999] T.M.O.B. No. 153 and McCarthy Tétrault v. Hilary's Distribution Ltd. 67 C.P.R. (3d) 279 where the Senior Hearing Officer had the following to say at page 284:

Where the registration covered a long list of wares, in the case Saks and Co. v. Canada (Registrar of Trade Marks) (1989), 24 C.P.R. (3d) 49, 22 C.I.P.R. 146, 25 F.T.R. 65 (T.D.), the court was satisfied that where the wares have been properly categorized in the registration, documentary evidence is not required for each item under a category; however, it seems the affidavit must contain a clear statement of use within the relevant period in association with each of the wares and must provide sufficient facts to permit the Registrar to conclude that the trade mark is in use in association with each ware.

[43]            On the other hand, the Respondent correctly points to the words of Thurlow C.J., writing for the Federal Court of Appeal in Plough (Canada) Ltd., supra, at 66:

What s-s. 44(1) requires is an affidavit or statutory declaration not merely stating but "showing", that is to say, describing the use being made of the trade mark within the meaning of the definition of trade mark in s. 2 and of use in s.4 of the Act. The subsection makes this plain by requiring the declaration to show with respect to each of the wares and services specified in the registration whether the trade mark is in use in Canada and if not the date when it was last used and the reason for the absence of such use since that date. The purpose is not merely to tell the Registrar that the registered owner does not want to give up the registration but to inform the Registrar in detail of the situation prevailing with respect to the use of the trade mark so that he, and the Court on appeal, can form an opinion and apply the substantive rule set out in s-s. 44(3).

[44]            So what guidance can be gleaned from these authorities and statements of basic principle that can be applied in the present case? We know that the purpose of s. 45 proceedings is to clean up the "dead wood" on the register. We know that the mere assertion by the owner that the trade mark is in use is not sufficient and that the owner must "show" how, when and where it is being used. We need sufficient evidence to be able to form an opinion under s. 45 and apply that provision. At the same time, we need to maintain a sense of proportion and avoid evidentiary overkill. We also know that the type of evidence required will vary somewhat from case to case, depending upon a range of factors such as the trade mark owners' business and merchandising practices.

[45]            Turning to the various items of clothing that remain in contention in the present case, the evidence we have is as follows:

Pants

In relation to pants, Mr. Wilson says in his affidavit (para. 4) that the company has used the Trade Mark on the "wares themselves, and/or packaging and in promotional material and advertising." He also tells us (para. 9) that the "pants are also sold and used as 'underwear' or an undergarment layer." Having told us this, he goes on to provide representative packaging that is "typical of the packaging used by my Company in association with the clothing and accessary items listed in paragraph 4 hereof, and sold in Canada in the Period." These items include pants.

He also attaches (para. 5) "further representative original current packaging for my Company's HOT CHILLY'S brand product which are typical of the manner in which my client (sic) has used the HOT CHILLY'S trade mark in Canada for at least the last 5 to 6 years."

He also attaches a "representative sample of advertizing of HOT CHILLY'S products in Canada which is typical of the way my Company's HOT CHILLY'S Products of paragraph 4 [which includes pants] have been promoted in Canada in the Period."

He also produces "representative invoices from my Company's records as to retail outlets in Canada of HOT CHILLY'S products and accessories within the Period" . . . and he says that "each of the products listed on the invoices with the exception of item No. ST12 on invoice No. 58515 would have had the trade-mark HOT CHILLY'S on the packaging and labelling when delivered to the retailer for resale in the Period and Canada."

When we turn to the representative packaging and labelling for evidence of pant sales, there are no examples of the use of the Trade Mark in association with pants, although there is in relation to thermal underwear. The same prevails in relation to the advertizing materials. So all we have to connect the packaging, labelling and advertizing to pants are Mr. Wilson's assertions in his Affidavit that these materials are "representative" or "typical" of the way that pants are packaged, labelled and advertized.

When we turn to the invoices, it seems to me that the Respondent's summary is correct and that the only evidence for sales during the relevant Period is the "Solarmax Pant."

Having examined the Solarmax Pant itself, the conclusion seems inevitable that, even in an age of permissive clothing choices, this is underwear and not a pant. This is not to say that someone might not choose to wear it as a pant, but that would be because they had chosen to wear underwear as such rather than pants.

In my view, Mr. Wilson's evidence on pants amounts to very little more than his bald assertions. Because he bundles all of the clothing items together, but only provides "representative" samples for some of them, it is not at all clear that the representative or typical samples cover pants. It is worth bearing in mind that the number of items in the Trade Mark description are relatively few, so that it would not have required a great deal of trouble to "show" examples for each of them. This would not be requiring evidentiary overkill. In any event, the invoices refer to an item (Solarmax Pants) that turn out to be underwear. In conclusion, on pants, the Applicant fails to satisfy the governing legal principles.

Tops, Turtlenecks, Vests and Shirts

Once again, as regards these items we have the assertions in Mr. Wilson's Affidavit, together with the same packaging, labelling and advertising as for pants, that Mr. Wilson says in representative and typical, together with invoices. This gives rise to similar problems as in the case of pants.

The only sales evidence for the Relevant Period in the invoices refers to the "Solarmax Top." There is no evidence in the invoices regarding turtleneck and vests. The invoices refer to crew tops. And, once again, when the crew neck garment itself is examined, it is clearly thermal underwear rather than a shirt and, even taking into account current varieties of fashion, a decision to wear it as a shirt would be a decision to wear underwear as a shirt.

Once again, in my opinion, the Applicant does not show use in respect of turtlenecks, vests and shirts. Mr. Wilson's assertions concerning representative and typical items are too uncertain to satisfy the governing legal principles.

Neck Warmers, Hats and Scarves

In this category, the only sales and other evidence for the Relevant Period refer to an item called a "Hot Hood." The Applicant's position is that this item is a combination neck-warmer, a woven hat, a knitted hat and a scarf. The Respondent says it is clearly a knitted hat and nothing more.

In my opinion, this is a balaclava that is intended to cover the whole head and neck. A neck warmer does not cover the head. If it qualifies as anything, it is a hat. It is also a knitted balaclava. The Applicant says the distinction between woven and knitted is too detailed for s. 45 proceedings and is akin to the question of whether a tomato is a fruit or a vegetable. I don't think this analogy is apt. People clearly know the difference between a knitted hat and a woven hat.

[46]            Consequently, I am of the opinion that the Applicant has provided sufficient evidence to show use of the Trade Mark in association with a knitted hat for the Relevant Period.

CONCLUSIONS

[47]            The facts of the present case demonstrate the importance of showing, as opposed to telling, in s. 45 proceedings. Mr. Wilson is adamant in his Affidavit that the Trade Mark has been used on pants, socks, underwear, suspenders, neck warmers, scarves, hats (woven and knitted) turtlenecks, vests and shirts. He has been with the company for a considerable period of time and he is the President, so he ought to know. He produces packaging, advertising, labelling and invoice examples that he says are typical and representative. He says he should not have to provide corroborative materials for each item of clothing because this would be evidentiary overkill.

[48]            Yet what his Affidavit does not reveal, for instance, is that, as far as he is concerned, underwear can be designated as pants, a balaclava can be both a hat, a neck warmer and a scarf, underwear can also be a shirt, and a woollen hat and a woven hat are the same thing. This somewhat idiosyncratic approach to the nomenclature of clothing suggests that showing is safer than telling, particularly in a case such as the present one where the number of items in question is small and there would be little extra effort involved in providing corroborative examples of use for each item.

[49]            The end result is that the Registration remains valid for the following wares: Clothing, namely socks, underwear, suspenders, head wear, namely hats knitted.

[50]            The Registration should be expunged for all other wares and services.

ORDER

THIS COURT ORDERS that

1.          The Application is dismissed in part;

2.          Registration 354,471 shall be limited to socks, underwear, suspenders and knitted hats;

3.          Registration 354,471 shall be expunged for all other wares and services;

4.          The Respondent shall have the costs of this application.

         JFC

                                     FEDERAL COURT

    NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET:                  T-2115-02

STYLE OF CAUSE: UVEX TOKO CANADA LTD

                     v.

PERFORMANCE APPAREL CORP.

PLACE OF HEARING:                                 Ottawa

DATE OF HEARING:                                   Wednesday, December 10^th, 2003

REASONS FOR ORDER :                           The Honourable Justice Russell

DATED:                     March 25, 2004

APPEARANCES:

Kenneth D. McKay                                           FOR APPLICANT

Geneviève Domey                                             FOR RESPONDENT

SOLICITORS OF RECORD:

Sim, Hughes, Ashton & MacKay LLP               FOR APPLICANT

330 University Avenue

6^th Floor

Toronto, Ontario

M5G 1R7

Olser, Hoskin & Harcourt LLP                                      FOR RESPONDENT

Barristers & Solicitors

1500 - 50 O'Connor Street

Ottawa, Ontario

K1P 6L2