Date: 20110209
Docket: T-480-10
Citation: 2011 FC 151
Ottawa, Ontario, February 9,
2011
PRESENT: The Honourable Madam Justice Simpson
BETWEEN:
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KISS MY FACE CORPORATION
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Applicant
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and
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LAPOINTE ROSENSTEIN MARCHAND MELANÇON,
LLP
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Respondent
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REASONS FOR JUDGMENT AND
JUDGMENT
[1]
Pursuant
to section 56 of the Trade-marks Act, RSC 1985, c T-13 (the Act), KISS
MY FACE Corporation (the Applicant) appeals a decision of the Registrar of
Trade-marks (the Registrar) dated February 2, 2010 (the Decision) expunging
Canadian Trade-mark Registration No. TMA574,850 (the Registration) for the
trademark “KISS KIDS” (the Mark) for non-use pursuant to subsection 45(4) of
the Act.
[2]
The
Applicant seeks an order directing the Registrar to reinstate the Registration
with the following modification: the deletion of clothing namely, knitted tops,
knitted shirts and t-shirts.
[3]
This
application in unopposed and the Applicant does not seek costs.
[4]
Although
no material was filed before the Registrar, evidence showing use of the Mark has
now been filed and will be discussed below.
BACKGROUND
[5]
Subsection
45(1) of the Act provides that use in Canada
must be shown during the three year period immediately preceding the date of the
notice requiring the owner of the trademark to furnish proof of use (the
Notice). In this case, since the Notice was dated September 25, 2007, the
relevant period runs from September 25, 2004 to the date of the Notice (the
Relevant Period).
[6]
Use for wares
(not services) is described in section 4 of the Act. It provides as follows:
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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.
Use by export
(3) A
trade-mark that is marked in Canada on wares or on the packages in which they
are contained is, when the wares are exported from Canada, deemed to be used
in Canada in association with those wares.
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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.
Emploi pour exportation
(3) Une
marque de commerce mise au Canada sur des marchandises ou sur les colis qui
les contiennent est réputée, quand ces marchandises sont exportées du Canada,
être employée dans ce pays en liaison avec ces marchandises.
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[7]
In Osler v Canada (Registrar of Trade-marks) (1997), 77 CPR (3d) 475, 139 FTR 64 (FCTD)
at paragraphs 22 and 25, the Court said:
22.
The nature of the proceeding before this Court under section 56 of the Act
is similar to a trial de novo in that the appellant has the right to
adduce evidence which was not presented to the Registrar. The Court is not
restricted to deciding whether the Registrar was right or wrong. However, the
Court should be circumspect about interfering with a Registrar’s decision.
[…]
25.
Evidence of a single sale, whether wholesale or retail, in the normal course of
trade, can 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 mark.
[8]
The wares
in this case are a variety of body soaps and hair care products.
[9]
The
Applicant submits that the affidavit of Robert McLeod, sworn in New York City on May 7, 2010 (the McLeod
Affidavit) provides evidence of substantial sales of the wares in Canada. Mr. McLeod has been
President of the Applicant since its incorporation in 1978. His Affidavit shows
that the wares were manufactured to the Applicant’s specifications. The McLeod
Affidavit exhibits photographs showing that the wares were packaged in
containers which bore labels which prominently displayed the Mark. The McLeod
Affidavit also lists the distributors and retailers of the wares and exhibits
invoices proving that the sales were made in Canada. I have no doubt that these transactions
were genuine.
CONCLUSIONS
[10]
I am
satisfied that the Mark was used in Canada
in the Relevant Period.
[11]
For all
these reasons, the appeal will be allowed.
JUDGMENT
THIS COURT’S JUDGMENT
is that
1. The application is granted.
2. The Registrar of Trade-marks
shall reinstate the KISS KIDS Registration with the following
modifications: delete clothing namely, knitted tops, knitted shirts and
t-shirts.
3. There shall be no costs
awarded on this application.
“Sandra
J. Simpson”
FEDERAL COURT
SOLICITORS OF RECORD
DOCKET: T-480-10
STYLE OF CAUSE: KISS
MY FACE v. LAPOINTE ROSENSTEIN LLP
PLACE OF HEARING: Toronto,
Ontario
DATE OF HEARING: October 25, 2010
REASONS FOR JUDGMENT: SIMPSON
J.
DATED: February 9, 2011
APPEARANCES:
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Paul V. Lomic
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FOR THE APPLICANT
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Matthew Norwood
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FOR THE APPLICANT
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SOLICITORS OF RECORD:
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Ridout & Maybee LLP
Toronto, Ontario
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FOR THE APPLICANT
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Lapointe Rosenstein Marchand Melançon,
LLP
Montreal, Quebec
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FOR THE RESPONDENT
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