Date: 20100121
Docket: T-1502-08
Citation: 2010 FC 73
Calgary, Alberta, January 21, 2010
PRESENT: The Honourable Madam Justice Snider
BETWEEN:
MARTY
SANDERS
Applicant
and
SMART & BIGGAR
INTELLECTUAL
PROPERTY & TECHNOLOGY LAW
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1]
The
Applicant, Mr. Marty Sanders, is the registered owner of registration No.
TMA574,587 for the trade-mark “UGGLY BOOTS” (the Mark), registered in
association with “ladies and mens: slippers, boots and shoes”. The Mark was
filed on December 21, 1999.
[2]
In
February 2006, Smart & Biggar Intellectual Property and Technology Law (the
Respondent) began the process to have the registration of the Mark expunged on
the basis that the Applicant had not used the Mark during the period 2003 to
2006. In a decision dated July 29, 2008, a panel of the Trade-marks Opposition
Board (the Board) determined that the Mark was to be expunged, in accordance
with the provisions of s. 45(5) of Trade-marks Act, R.S.C. 1985, c. T-13
(the Act). The basis of the decision was that the Applicant had not “shown
evidence of the use of the Mark in Canada in association with each of the registered
wares in accordance with s. 4 of the Act during the material period [between
February 28, 2003 and February 28, 2006]”.
[3]
Pursuant
to s. 56(1) of the Act, the Applicant appeals this decision to expunge.
[4]
The
Respondent made no submissions on the merits of this appeal and has advised the
Court that it would not take any position.
Statutory Framework
[5]
I
begin with an overview of the statutory framework.
[6]
Pursuant
to s. 4 (1) of the Act, a trade-mark is deemed to be used in association with
wares if, at the time of the transfer of property in or possession of the
wares, in the normal course of trade, the trade-mark is marked on the wares
themselves or on the packages in which they are distributed, or it is in any
other manner so associated with the wares that notice of the association is
then given to the person to whom the property or possession is transferred.
[7]
The
Respondent commenced the review of the Mark by initiating a request pursuant to
s. 45(1) of the Act. Section 45(1) provides that the Registrar may give notice
to the registered owner of the trade-mark requiring him to furnish an affidavit
or a statutory declaration within three months of such notice. Once s. 45(1)
notice is given, the registered owner must show that the trade-mark at issue
was in use, in association with the registered wares, in Canada at any time during the
three-year period immediately preceding the date of the notice. If the
registered owner cannot do so, he must show the date when the trade-mark was
last used, and the reason for the absence of use since that date. Consequently,
the Applicant, the registrant of the Mark, was required to prove to the
satisfaction of the Registrar that he used the wares, with the Mark, in Canada at any time between
February 28, 2003 and February 28, 2006.
[8]
The
Applicant appealed the decision of the Board pursuant to s. 56 of the Act.
According to s. 56(5), on an appeal to the Federal Court, additional evidence
that was not before the Board may be adduced, and the Court may exercise any
discretion vested in the Registrar.
Analysis
[9]
In
an appeal of the Board’s decision, the law is clear on the standard of review.
As stated by Justice David Near in Loro Piana S.P.A. v. Canadian Council of
Professional Engineers, 2009 FC 1096, [2009] F.C.J. No. 1344 at paras.
14-15:
The
standard of review on appeal where no new evidence is filed that would have
materially affected the Registrar's findings or exercise of discretion is
reasonableness (see Mattel Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R.
772, 49 C.P.R. (4th) 321 at paragraphs 40-41, Guido Berlucchi & C.S.r.l.
v. Brouillette Kosie Prince, 2007 FC 245, 49 C.P.R. (4th) 321 at paragraph
23, Dunsmuir v. New
Brunswick, 2008 SCC 9,
[2008] 1 S.C.R. 190).
When
additional evidence is filed in the appeal that would have materially affected
the Registrar's findings of fact or the exercise of discretion, the Court must
decide the issue de novo considering all of the evidence before it (Shell
Canada Limited v. P.T. Sari Incofood Corporation, 2008 FCA 279, 68 C.P.R.
(4th) 390). In assessing the impact that additional evidence will have for the
standard of review, the question is the extent to which the additional evidence
has a probative significance that extends beyond the material that was before
the Board (Berlucchi, above, and Fairweather Ltd. v. Canada (Register
of Trade-marks), 2006 FC 1248, C.P.R. (4th) 50).
[10]
During
the proceeding before the Board, the Applicant presented very little evidence
in support of his use of the Mark. In its decision, the Board observed that
the evidence submitted by the Applicant was “rampant with ambiguities” and
omissions. For this appeal, it appears that the Applicant learned his lesson
and has provided the Court with extensive, detailed and unambiguous evidence of
the use of the Mark.
[11]
The
Applicant submits that the new evidence he has presented to the Court in this
appeal is sufficient to demonstrate that the Mark was in use in Canada during the relevant
time. I agree.
[12]
In
this appeal – in contrast to the proceeding before the Board – the Applicant
filed substantial new evidence that relates directly and persuasively to the use
of the Mark in the period between February 28, 2003 and February 28, 2006. The
affidavits of clients, Amanda Clare Cragg, Gerardina Klis, Dianne Dietrich,
Jessica Klis, and Linda Klikach, are not merely bare allegations that the Mark,
UGGLY BOOTS, was in use. Rather, each affidavit comes with invoices showing the
transfer of wares, with the Mark, between the Applicant and others in Canada. Each invoice has a GST
number at the bottom and is dated at the top. These dates fall within the
February 28, 2003 to February 28, 2006 time frame.
[13]
I
conclude that the evidence before me is sufficient to demonstrate the existence
of:
[…]
evidence of a single sale, whether wholesale or retail, in the normal course of
the trade, […] as it follows the pattern of a genuine commercial transaction
and is not being deliberately manufactured or contrived to protect the
registration of the trade-mark at issue (Guido, above, at para. 17).
[14]
Furthermore,
under the principle of use “in the normal course of trade”, where there is no
evidence that the affiant’s credibility is being challenged, good faith is
presumed (see Guido, above, at para. 52). In the case at hand, there are
no challenges to the credibility of affidavits filed in support of use of the
Mark. Thus, I conclude that the Applicant has satisfied his burden to prove
“use” under s. 4 of the Act. Property with the Mark, UGGLY BOOTS, was
distributed or transferred from the Applicant to other persons in Canada between February 28,
2003 and February 28, 2006, in the normal course of trade.
Conclusion
[15]
In
conclusion, I find that the Applicant has proved use of the Mark, in
association with the registered wares, within the relevant time. Accordingly,
the appeal will be allowed. No costs are requested by the Applicant and none will
be awarded.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that:
1.
the
appeal is allowed and the July 29, 2008 decision of the Trade-marks Opposition
Board with respect to trade-mark registration No. TMA574,587 is set aside;
2.
trade-mark
registration No. TMA574,587 will be maintained on the register without
amendment; and
3.
no
costs are awarded.
“Judith A. Snider”
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