Date: 20090812
Docket: T-1060-08
T-1061-08
Citation: 2009 FC
827
Ottawa, Ontario, August 12, 2009
PRESENT: The Honourable Madam Justice Hansen
BETWEEN:
SISSEL-ONLINE
LTD.
Applicant
and
SISSEL
HANDELS GmbH
Respondent
REASONS FOR JUDGMENT AND JUDGMENT
[1] The Applicant appeals from two May 12, 2008 decisions of
the Trade-marks Opposition Board made pursuant to section 45 of the Trade-marks
Act, R.S.C. 1985, c. T-13 (Act) maintaining the Respondent’s Canadian Trademark
Registration No. TMA466,055 for the trademark SISSEL and Canadian Trademark
Registration No. TMA442,454 for the trademark SISSEL & Design
(collectively, the SISSEL registrations or trade-marks) for use in association
with “pillows” (the wares). As the same issues are raised in both appeals,
these are the reasons for judgment in court files T-1060-08 and T-1061-08.
[2] At
the request of Paul Smith Intellectual Property Law (the requesting party), the
Registrar of Trade-marks sent a notice pursuant to section 45 of the Trade-marks
Act to the Respondent requesting that it provide evidence showing use of
the SISSEL registrations in Canada within the three year period preceding the
date of the notice, namely, November 8, 2002 to November 8, 2005. In response
to the section 45 notice, the Respondent filed the affidavit of its President,
Peter Ambühl. Subsequent to an oral hearing, the Hearing Officer rendered a
decision in which she concluded that the Respondent had demonstrated use of the
trade-marks in Canada in the three years preceding the date of the notice and
declined to expunge the registration.
[3] The
following summary of the evidence is taken from the Ambühl affidavit. The
Respondent, Sissel Handles GmbH (Sissel Handels) acquired the SISSEL
registrations and the business relating to products bearing the SISSEL
trade-marks from the previous owner of the registrations, Sana Handels AG, on
July 8, 2003. Sissel Handels manages and coordinates the worldwide
manufacturing and distribution of products bearing the trade-marks at issue
including pillows. Sissel Handels is also responsible for setting product
specifications, quality standards and oversees the marketing, advertising and
promotion of products including pillows throughout the world.
[4] Sissel
Handels has conducted business in various countries, including Canada, through
a network of distributors for a number of years. One of the European
distributors, Novacare GmbH (Germany), also acquired distribution rights for a
number of products bearing the trade-marks in Canada and the U.S. At the
direction of Sissel Handels, Novacare became responsible for the distribution
of various products, excluding the wares, bearing the trade-marks in Canada
through Sissel-Online Ltd. located in British Columbia, Canada and in the U.S.
through Sissel, Inc. located in Sumas, Washington.
[5] In
addition to asserting that during the material time the Respondent continuously
used and continues to use the SISSEL trade-marks in Canada in the normal course
of business in relation to pillows, Mr. Ambühl states that the Respondent’s
Canadian distributor filled orders placed during the material time with stock
in inventory located in its Mission, B.C. warehouse or directly from the
Respondent’s pillow manufacturer, Foam AB located in Sweden. He also states
that “[as]Sissel-Online Ltd. (Canada) and Sissel, Inc. (U.S.A.) are operated by
the same people, and as I understand Sissel-Online Ltd. shares a warehouse with
Sissel, Inc. some correspondence and invoices for products purchased by
Sissel-Online Ltd during the relevant period were forwarded to Sissel, Inc. in Washington.”
[6] He
also states that “[i]n accordance with the distribution arrangement in place
between Sissel Handels and Sissel-Online Ltd., Sissel-Online Ltd. filled orders
for pillows placed by Canadian end-users by placing orders directly with Foam
AB. Foam AB would then ship and deliver the pillows bearing the [trade-marks]
directly to Sissel-Online Ltd. or at the warehouse shared by the Sissel-Online
Ltd and Sissel, Inc.. …”
[7] Exibit
“B” to Mr. Ambühl’s affidavit contains a number of invoices. In his affidavit
he states that these invoices “are representative invoices evidencing sales in
Canada of pillows bearing the marks SISSEL and SISSEL & Design from Foam AB
to Sissel Online Ltd” during the material time. He also states that a number
of invoices were forwarded to Sissel, Inc. because of the close relationship
between Sissel, inc. and Sissel-Online Limited. The invoices are addressed to
Sissel-Online, LLC at PO Box 729 in Sumas, Washington and the invoice indicates
a delivery address to Sissel, Inc. at an address in Sumas, Washington.
[8] Mr.
Ambühl deposes that “[t]he pillows bearing the [trade-marks] and sold in
Canada come in a variety of shapes and sizes. The price for pillows paid for
by the end user customer has varied between approximately CND$60.00 and
CND$80.00 over the years spanning 2001-2005.” In chart form, the approximate volume
and value of sales in Canada of pillows under the trade-marks for each of the
years from 2001-2005 is set out.
[9] Mr.
Ambühl also states that the Respondent provided its distributors including
Sissel‑Online Ltd. with marketing materials and guidelines, photographs,
brochures and catalogues featuring its products including pillows. It also
provided financial support for marketing activities undertaken by Sissel-Online
Ltd. during the relevant period.
[10] Additional
exhibits attached to the affidavit include a 2004-2005 brochure featuring
various products, including pillows, bearing the trade-marks provided to
distributors around the world including to Sissel-Online Ltd.; photographs of a
plastic bag and box bearing the trade-marks used to package the pillows;
invoices from Sissel-Online Ltd. to Sissel Handels for various marketing
activities and attendance at trade shows during the material time; excerpts
from a brochure containing information on pillows bearing Sissel trade-marks
distributed by Sissel-Online Ltd. through Canada Post’s mass mailing services;
and screen shots from the Canadian section of the Respondent’s website operated
by Sissel-Online Ltd.
[11] There
is no dispute between the parties that since no new evidence has been filed on
the appeals, the standard of review is reasonableness: Mattel Inc. v.
3894207 Canada Inc., [2006] 1. S.C.R 772 at paras. 40-41. As the Supreme
Court of Canada explained in Dunsmuir v. New
Brunswick, [2008] 1 S.C.R. 190 at para. 47, reasonableness concerns “the
existence of justification, transparency and intelligibility within the
decision-making process” and “whether the decision falls within a range of possible
acceptable outcomes which are defensible in respect of the facts and law”.
[12] The
only issue on this appeal is whether the finding that the Respondent had
demonstrated use within the meaning of subsection 4(1) of the Act is
reasonable.
[13] Subsection
4(1) of the Act reads:
|
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.
|
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.
|
[14] The Applicant
characterizes the evidence tendered by the Respondent as follows. Although the
affidavit shows sales figures for Canada, there is no invoice evidencing an
actual sale or delivery of pillows in Canada. The Applicant points out that the invoices
appended to the affidavit as evidence of sales in Canada are to an entity known
as Sissel-Online, LLC and the destination address for the invoice and the
delivery address are to locations in the United States. As well, there is no reference to Canada in the invoices.
Further, the affiant does not identify any Canadian company by the name of
Sissel-Online, LLC or that Sissel-Online, LLC is a Canadian company.
[15] The Applicant submits
that the Hearing Officer misapprehended the evidence of sales. First, she
stated that the invoices were addressed to “Sissel-Online LLC, the Canadian
company” when this entity was not referred to in the affidavit nor was it
referred to as being a Canadian company associated with the Respondent. Secondly,
she referred to the destination address as “appearing” to be that of a U.S.
distributor, which in the Applicant’s view supports an inference of sales in
the U.S. but not in Canada. The Applicant argues
that by “treating invoices of sales to an entity in the US as being
corroborative of the assertion of Canadian sales, the Hearing Officer failed to
ensure that clear, precise, solid and reliable evidence of use was relied on to
maintain the registrations”.
[16] The Applicant submits
that the quality of the evidence adduced in the present case is similar to the
evidence adduced in the section 45 proceeding in Smart v. Biggar v. Jarawan,
2006 FC 1254; 52 C.P.R. (4th) 33. The Applicant argues that in that
case, as in the present case, the Hearing Officer took the invoices as
corroborative of sales of the wares as opposed to evidence of sales. On
appeal, the Court held that this did not establish use of the trade-mark.
[17] The Applicant also
relies on this court’s decision in Grapha-Holdings AG v. Illinois Tool Works
Inc., 2008 FC 959; [2008] F.C.J. No. 1194 where the Court held, at
paragraph 20:
The
evidence provided by the affidavit must describe the use of the mark within the
meaning of section 4 of the Act and should not simply state the use of the
mark. The Registrar inferred that the sales of the wares occurred and stated
that invoices for the sales of the machines were not necessary because the
evidence, as a whole, showed the use of the mark. In my view, the Registrar did
not have sufficient evidence before her to demonstrate the use of the mark.
[18] At this point, it is
useful to reiterate some general principles in relation to section 45
proceedings that are relevant to the issue in this case. A section 45
proceeding “ is primarily designed to clear the register of dead wood, not to
resolve issues in contention between competing commercial interests, which
would be involved in expungement proceedings” (Phillip Morris Inc. v.
Imperial Tobacco Ltd et al. (No. 2)1987, 17 C.P.R. (3d) 237 at p. 241
(CA).
[19] It is well established
that in this type of proceeding it is not enough to simply assert use. A
registrant must show use of the trade-mark in association with the wares for
which it has been registered: (Plough (Canada) Ltd. v. Aerosol
Fillers Inc.,
[1980] F.C.J. No 198 at para. 10). That is, an affidavit or declaration in
response to a section 45 notice must “show use by describing facts from which
the Registrar or the Court can form an opinion or can logically infer use
within the meaning of section 4.” (Guido Berlucchi & C. S.r.l. v.
Brouilette Kosie Prince, [2007] F.C.J. No. 319, 56 C.P.R. (4th) 401 at
para. 18. . As Justice framed it in the Federal Court of Appeal’s decision in Central
Transport, Inc. v. Mantha & Associés/Associates (1995), 64 C.P.R. (3d)
354 at 355, “[in] a sense all statements in affidavits are “bald assertions”;
what this court has found to be inadequate in s. 45 proceedings are assertions
of use (a matter of law) as opposed to assertions of facts
showing use.”
[20] As to the type of
evidence required to show use, in Lewis Thomson & Sons Ltd. v. Rogers,
Bereskin & Parr (1988), 21 C.P.R. (3d) 483 at p. 486, Justice Strayer
rejected the notion that in a section 45 proceeding “there is some particular
kind of evidence which must be provided, and that any affidavit which does not
attach an invoice is presumptively useless.”
[21] The critical paragraph
in the Hearing Officer’s reasons to which the Applicant refers reads:
It
appears that there were two companies distributing in North America, Sissel
Online Ltd, in Canada, and Sissel Inc, in the United States;
these companies were sharing the website and the same warehouse facility in Canada. The affiant explains that some correspondence for Sissel
Online Ltd. was sent to the address of Sissel Inc, in Washington. Excerpts from the Canadian section of the website are
attached as Exhibit G. Representative invoices are attached (Exhibit B)
evidencing sales from the registrant’s manufacturer to the Canadian distributor
– Sissel-Online. It would appear that the invoices are addressed to
Sissel-Online LLC, the Canadian company, but with an address in the United
states that appears to be that of the US distributor Sissel, Inc. The affiant
states however, that these goods were to provide the pillows for Sissel-Online
LLC to fulfill it orders to Canadians. I find this explanation reasonable and
satisfactory.
[22] In my view, the Hearing
Officer did not misapprehend the evidence. It is evident from a reading of the
Hearing Officer’s reasons that she accepted that Sissel-Online Ltd. and
Sissel-Online, LLC were the same entity. Although the Applicant is correct
that the affiant does not specifically refer to an entity by the name of
“Sissel-Online, LLC”, the affiant explains that “invoices for products
purchased by Sissel-Online Ltd.” were sent to Washington. The affiant also describes the invoices
appended to the affidavit as being invoices for sales of pillows from Foam AB to Sissel-Online Ltd.
This taken together with the fact that among the distributors in the U.S.,
Australia, the United Kingdom and Canada only the Canadian distributor uses
“Online” as part of its corporate name, leads me to conclude that the Hearing
Officer did not misapprehend the evidence when she inferred that the addressee
on the invoices, Sissel-Online, LLC, was the Canadian company, Sissel-Online
Ltd.. Accordingly, it also follows, that contrary to the Applicant’s
assertion, the Hearing Officer did not rely on sales to an entity in the U.S. as corroborative of
Canadian sales. Instead, she relied, in part, on the sales to the Canadian
distributor as corroborative of Canadian sales.
[23] Having regard to the
statement in the affidavit regarding the approximate volume and value of the
sales of the pillows bearing the trade-mark(s) coupled with the extensive
evidence of related commercial activity in Canada it was reasonably open to the
hearing Officer to concluded that the Respondent had met the burden of proving
use during the material time.
[24] At the start of the
hearing, counsel for the Respondent drew to the Court’s attention the fact that
the requesting party in the section 45 proceeding is not the Applicant before
the Court in this proceeding. The Respondent took the position that if
Sissel-Online Ltd., the Applicant, wished to challenge the decision, it should
have done so by bringing an application for judicial review. Although the
Respondent had not raised this question in its memorandum of fact and law, the
Applicant made responding submissions and I heard the matter on its merits. As
I have concluded that the appeals should be dismissed, a consideration of this
question in these reasons is unnecessary.
[25] For the above reasons,
the appeals will be dismissed with costs to the Respondent.
JUDGMENT
THIS COURT
ORDERS AND ADJUDGES that the appeals in Court
files T-1060-08 and T-1061-08 are dismissed with costs to the Respondent.
“Dolores
M. Hansen”
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