Date: 20100916
Docket: T-2103-09
Citation:
2010 FC 925
Ottawa, Ontario, September 16,
2010
PRESENT: The Honourable Madam Justice Bédard
BETWEEN:
ARBOUR
RECYCLED PRODUCTS
Applicant
and
ATTORNEY GENERAL OF CANADA
RICHES, MCKENZIE & HERBERT LLP
Respondents
REASONS FOR JUDGMENT AND
JUDGMENT
[1]
This
is an appeal, pursuant to section 56 of the Trade-marks Act, R.S.C. 1985,
c. T-13 [TMA], from a decision of the Registrar of Trade-marks of the
Canadian Intellectual Property Office (the Registrar). The Registrar decided
that the applicant’s trade-mark, ARBOUR & DESIGN, Registration No. TMA416,409
(the Mark), should be expunged from the Trade-marks Register (the Register) on
account of the applicant’s failure to file evidence of use in response to a notice
sent pursuant to subsection 45(1) of the TMA (Section 45 Notice). For
the reasons that follow, the appeal will be allowed in part.
I. Background
[2]
The
applicant originally registered the Mark on September 3, 1993. It renewed its
registration in September 2008 by paying the prescribed fee. The following
wares are listed in the Mark’s registration:
Recycled fine writing paper, recycled
drawing paper, recycled envelopes, recycled computer paper, recycled paper
pads, recycled cardstock, recycled kit folders, recycled paper labels, recycled
paper greeting cards, recycled plastic travel mugs, recycled plastic recycling
boxes, unbleached cotton shopping bags.
[3]
The
following services are also listed in the registration:
Photocopying, printing (i.e. business
cards, letterhead, envelopes, brochures, invitations, posters, reports, pads,
labels) on recycled paper using vegetable oil-based inks, layout and
typesetting.
[4]
The
respondent, Riches, McKenzie & Herbert LLP, requested that the Registrar issue
a Section 45 Notice to the applicant. On June 22, 2009, the Registrar sent the
requested Section 45 Notice to the applicant, asking it to furnish evidence of
use of the Mark during the preceding three year period. The applicant alleges
that it never received this notice. On October 28, 2009, the Registrar sent a
second notice to the applicant advising it that because no evidence of use had
been filed, the Mark would be expunged from the Register pursuant to subsection
45(5) of the TMA, subject to an appeal being brought under section 56. This
second notice was received by the applicant.
[5]
The
applicant appeals the Registrar’s decision to expunge its registration from the
Register. For the purposes of this appeal, the applicant has submitted an
affidavit sworn by Mr. Sean Twomey, a co-owner and co-founder of the applicant.
In it, Mr. Twomey claims the applicant never received the original Section 45
Notice and, thus, was not aware of the requirement to furnish evidence of use.
He goes on to set out the applicant’s use of the Mark during the relevant
period. Specifically, Mr. Twomey indicates that the applicant sold unbleached
cotton shopping bags throughout the relevant period, each bag bearing the Mark
in issue. Three sales receipts, showing sales within the relevant time period,
as well as photographs of the bags, were submitted as attachments to the
affidavit. Mr. Twomey does not allege use of the Mark during the relevant
period in association with any of the other wares or services listed in the TMA416,409
registration.
[6]
The
applicant asks this Court to set aside the Registrar’s decision and restore the
Mark to its original status. Neither respondent filed a Notice of Appearance or
made any submissions to this Court regarding the merits of this matter.
II. Analysis
A. The New
Evidence
[7]
Before
turning to the merits of this appeal, I must first consider whether Mr.
Twomey’s affidavit evidence regarding use can be accepted by this Court, given
that no evidence was submitted to the Registrar. Subsection 56(5) of the TMA
indicates that “On an appeal [from a decision of the Registrar], evidence in
addition to that adduced before the Registrar may be adduced…” The Federal
Court of Appeal has made it clear that new evidence may be adduced on appeal
even when no evidence was originally submitted to the Registrar following a
Section 45 Notice (Austin Nichols & Co v Cinnabon, [1998] 4 FC 569
at para 17, 82 CPR (3d) 513 (CA)). The same principle has been applied
recently by this Court (Vêtement Multi-Wear v Riches, McKenzie & Herbert
LLP, 2008 FC 1237 at para 17, 73 CPR (4th) 3 [Multi-Wear]).
[8]
In
this case, the applicant claims it never received the Section 45 Notice and,
thus, did not know it had to respond by providing evidence of use. It is
clear, on the authorities cited above, that under these circumstances, the
applicant is entitled to submit its new evidence (namely, the affidavit of Mr.
Twomey) for consideration in this appeal.
B. The Standard
of Review
[9]
The
Federal Court of Appeal in Molson Breweries v John Labatt Ltd, [2000] 3
FC 145 at para 51, 5 CPR (4th) 180 (CA), held that where, under section 56 of
the TMA, additional evidence is introduced that, “would have materially
affected the Registrar’s findings of fact or the exercise of his discretion,” the
appropriate standard of review is correctness. Justice Shore, in Multi-Wear,
above at para 16 applied this principle to a situation
similar to the one presently before this Court. He held that because “the
Registrar’s decision was based on a failure to provide evidence of use… the new
evidence of use presented… has probative significance; therefore, the standard
of review… is correctness.” That is the case here as well – no evidence of use
was before the Registrar. Evidence of use is before this Court. Thus, the
appropriate standard of review is correctness.
C.
Evidence
of Use
[10]
To
succeed in this appeal, the applicant must satisfy the criteria set out in
section 45 of the TMA. Subsection 45(1) is clear that when responding
to a Section 45 Notice, the registered owner of the trade-mark in question must
furnish evidence showing, “with respect to each of the wares or services
specified in the registration, whether the trade-mark was in use in
Canada at any time during the three year period immediately preceding the date
of notice” (emphasis added) and if not, why not. Subsection 45(3) explains that
the trade-mark is liable to be expunged or amended if it appears that “either
with respect to all of the wares or services specified… or with respect to
any of those wares or services, [the trade-mark] was not used in Canada at any time
during the three year period…” (emphasis added) unless special circumstances
are put forth which excuse the absence of use.
[11]
The
“use” that is required to be shown is “use” as described in section 4 of the TMA
(Plough (Canada) Ltd v Aerosol Fillers, [1981] 1 FC 679 at para 11, 34
NR 39 (CA); Guido Berlucchi & C. S.r.l. v Brouillette Kosie Prince,
2007 FC 245, 56 CPR (4th) 401 at para 18). Subsection 4(1) and 4(2) of the TMA
read as follows:
|
When
deemed to be used
4. (1) A
trade-mark is deemed to be used in association with wares if, at the time of
the transfer of the property in or possession of the wares, in the normal
course of trade, it 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.
Idem
(2) A
trade-mark is deemed to be used in association with services if it is used or
displayed in the performance or advertising of those services.
|
Quand
une marque de commerce est réputée employée
4. (1)
Une marque de commerce est réputée employée en liaison avec des marchandises
si, lors du transfert de la propriété ou de la possession de ces
marchandises, dans la pratique normale du commerce, elle est apposée sur les
marchandises mêmes ou sur les colis dans lesquels ces marchandises sont
distribuées, ou si elle est, de toute autre manière, liée aux marchandises à
tel point qu’avis de liaison est alors donné à la personne à qui la propriété
ou possession est transférée.
Idem
(2)
Une marque de commerce est réputée employée en liaison avec des services si
elle est employée ou montrée dans l’exécution ou l’annonce de ces services.
|
[12]
While
the onus is on the registered owner to demonstrate use in connection with each
of the stated wares and services, the case-law makes it clear that the burden
of proof is not a heavy one. It is sufficient if the owner establishes a prima
facie case of use (see e.g. Guido Berlucchi, above at para 18; Brouillette
Kosie Prince v Great Harvest Franchising, 2009 FC 48, 77 CPR (4th) 247 at
para 32). As indicated by this Court in Philip Morris v Imperial Tobacco
Ltd (1987), 13 CPR (3d) 289, 8 FTR 310 (FCTD) at para 12:
Evidence of a single sale, whether
wholesale or retail, in the normal course of trade may well suffice so long as
it follows the pattern of a genuine commercial transaction and is not seen as
being deliberately manufactured or contrived to protect the registration of the
trade mark. Evidence in response to a [s. 45] notice should be forthcoming in
quality, not quantity, and there is no need nor justification for evidentiary
overkill.
[13]
Although
the evidentiary burden is not high, the wording of section 45 of the TMA
is clear that, barring special circumstances, use must be demonstrated in
connection with each of the wares and services listed in the
registration. This requirement was recently underscored by Justice Barnes in Tucumcari
Aero v Cassels, Brock & Blackwell LLP, 2010 FC 267, 81 CPR (4th) 372 at
para 20 where he indicated that, for the purposes of section 45, “there must be
some evidence to show that the trade-mark was used in association with each
ware specified in the registration.” Similarly, the Federal Court of Appeal in
John Labatt Ltd v Rainier Brewing (1984), 80 CPR (2d) 228 at 236, 50 NR 296
(FCA) instructed that:
If [the registered owner] shows that the
mark is in use in Canada with respect to all of the
wares specified then, clearly, the registration is not to be touched. If, on
the other hand, he shows that the mark is in use in Canada with respect to some but not
all of the wares, the registration is liable to be amended. (emphasis added)
[14]
In
this case, through a combination of Mr. Twomey’s affidavit statements regarding
sales of the shopping bags and the photocopies of receipts showing their actual
sale during the relevant three year time period, the applicant has discharged
its burden of demonstrating use of the Mark in connection with the “unbleached
cotton shopping bags” ware. However, the applicant has not provided evidence of
use in connection with any of the other wares (ex. the paper products, travel
mugs, etc.) or any of the services listed (ex. photocopying, printing, etc.) in
the registration. Nor has it provided an explanation for the lack of use in
connection with these wares and services that might amount to “special
circumstances” for the purposes of excusing non-use. Although the applicant
does reference plans for future expanded use of the Mark, the jurisprudence is
clear that plans for future use, which do not explain the period of non-use,
cannot amount to special circumstances for the purposes of subsection 45(3)
(see Scott Paper Ltd v Canada (Attorney General), 2008 FCA 129, 291 DLR
(4th) 660 at para 28).
III. Conclusion
[15]
This
appeal is granted in part. The decision of the Registrar to expunge
registration TMA416,409 from the Register is set aside with respect to the
“unbleached cotton shopping bags”. Although the registration will remain on
the Register, the remainder of the wares and services listed therein will be
deleted.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that the appeal is allowed in part and:
1.
the
Registrar’s decision (i.e. the decision indicating that registration TMA416,409
should be expunged from the Register) is set aside;
2.
registration
TMA416,409 for the ARBOUR & DESIGN trade-mark is to be maintained in the
Register, but with amendments to delete all wares and services other than the
“unbleached cotton shopping bags” ware;
3.
no
costs are awarded.
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