Date:
20130130
Docket:
T-816-12
Citation: 2013
FC 97
Ottawa, Ontario,
January 30, 2013
PRESENT: The
Honourable Mr. Justice O'Keefe
BETWEEN:
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DART INDUSTRIES INC.
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Applicant
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and
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BAKER & MCKENZIE LLP
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Respondent
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REASONS FOR
JUDGMENT AND JUDGMENT
[1]
This
is an appeal from the decision of a hearing officer (the officer), acting under
authority delegated from the Registrar of Trade-marks, expunging Registration
No. TMA145,567 (the mark). The officer was not satisfied the evidence showed
the requisite use of the mark during the relevant period of time as required by
the Trade-marks Act, 1985 RSC, c T-13 (the Act).
[2]
Dart
Industries Inc. (the applicant) seeks an order granting the appeal and maintaining
the mark in good standing. The respondent did not appear to dispute the appeal.
Background
[3]
The
applicant holds the mark for “FLAVOR SAVER”. It was registered on June 3, 1966,
and was last renewed on June 3, 2011. The registration covers plastic household
containers and covers.
[4]
On
January 25, 2010, the Registrar issued a notice under section 45 of the Act
requiring the applicant to file evidence that the mark had been used in Canada in association with the specified wares at any time during the period of January 25,
2007 to January 25, 2010. It was issued at the request of the respondent.
[5]
The
applicant filed an affidavit including two representative promotional flyers
featuring the trade-mark that had been distributed to customers and prospective
customers during the relevant period. The affiant’s evidence was that the sales
of the FLAVOR SAVER containers were through catalogue sales in its home party
sales programs.
The Decision
[6]
On
February 17, 2012, the officer decided that the mark’s registration should be
expunged and gave reasons cited as 2012 TMOB 20.
[7]
The
officer noted there was little evidence of how the mark was associated with the
wares at the time of transfer or sale and whether the mark was displayed on the
wares. The officer acknowledged that notice of association between a trade-mark
and unmarked wares could be established by way of catalogues or product
literature, but held that this was only possible when such literature was used
in the ordering and purchasing.
[8]
The
officer noted the affidavit did not state that the flyers were distributed in
the applicant’s home parties or that the flyers were used as catalogues when
ordering and purchasing the wares. Although the affidavit noted home parties,
it was not clear that the flyers were distributed at the time of the transfer
of property. The officer indicated he would have benefited from the affiant
providing further details regarding the conduct of the home parties and the
manner in which transactions took place. Absent such detail, he was unable to
find that there was requisite association between the mark and products. The
mere distribution of the flyers was insufficient to establish use.
[9]
The
officer, pursuant to his delegated authority under subsection 63(3) of the Act,
ordered that the registration be expunged in compliance with section 45 of the
Act.
Issues
[10]
The
applicant’s memorandum raises the following issue:
1. Did the applicant
use the mark during the relevant period in association with plastic containers?
[11]
I
would rephrase the issues as follows:
1. What is the
appropriate standard of review?
2. Does the evidence
establish the requisite association between the mark and the wares?
Applicant’s Written Submissions
[12]
The
applicant argues that in an appeal from the Registrar, new evidence may be
adduced to this Court. Where such evidence has been filed that could have
materially affected the Registrar’s decision, as in this case, the Court must
consider the matter de novo and come to its own conclusion on the issue
to which the additional evidence relates. The new evidence in this appeal
specifically addresses the deficiencies identified by the officer, so this
Court must consider the issue of evidence of requisite use de novo.
[13]
Proceedings
under section 45 of the Act are summary and administrative in nature. Their
purpose is to remove registrations which have fallen into disuse. The burden of
proof is not a heavy one.
[14]
A
sale for the purposes of section 45 includes a sale to a distributor and it is
not necessary to show transactions along the entire chain to the ultimate
consumer.
[15]
Leaflets,
product literature and catalogues bearing the mark can provide the required
notice of association between the mark and the wares when they are used in
ordering and purchasing.
[16]
The
applicant’s new affidavit establishes that Tupperware products, including the
FLAVOR SAVER container, are sold in Canada by independent sales consultants who
are independent business owners. The mark was used during the relevant period
because it was associated with the wares at the time of transfer of the
property of the wares to these consultants.
[17]
The
consultants used the flyer included in the applicant’s original evidence to
purchase FLAVOR SAVER containers online through a web-based ordering
application. On the date of the publication of the flyer, over 100 orders were
placed from Canada for these containers. The consultants paid for such orders
with credit cards and took ownership of the containers.
[18]
The
consultants therefore used the flyer when ordering and purchasing the wares.
The flyer made the consultants aware of the wares and enabled them to order and
purchase the wares online, by providing images of the containers together with
the mark. The sales were in the normal course of trade because the purchasers
took ownership of the wares for resale or personal use.
Respondent’s Written Submissions
[19] The respondent filed no
written submissions.
Analysis and Decision
[20]
Issue
1
What is
the appropriate standard of review?
Where
previous jurisprudence has determined the standard of review applicable to a particular
issue before the court, the reviewing court may adopt that standard (see Dunsmuir
v New Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 at paragraph 57).
[21]
If
additional evidence presented on appeal would have materially affected the
Registrar’s decision, then this Court must come to its own conclusion on the
issue the additional evidence relates to (see Spirits International BV v BCF
SENCRL, 2012 FCA 131 at paragraph 10, [2012] FCJ No 526).
[22]
In
this appeal, the sole issue is whether the mark was used in association with
the wares during the relevant period. The applicant’s new evidence is directly
relevant to that issue. I will therefore consider this issue de novo, as
that term is used; in this case as evidence from the previous hearing is also
considered it is not truly a de novo hearing.
[23]
Issue 2
Does
the evidence establish the requisite association between the mark and the
wares?
As Mr. Justice Yves
de Montigny wrote in Philip Morris Products SA v Marlboro Canada Limited,
2010 FC 1099 at paragraph 236, [2010] FCJ No 1385:
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. . it has been held that leaflets, product literature, and pricing stickers
bearing the trade-mark, as well as catalogues, can provide the required notice
of association between the trade-mark and the wares to the purchaser when they
are used in ordering and purchasing.
[24]
The
issue in this case, as first identified by the officer, is whether the flyers
clearly associating the mark with the wares were in fact used in ordering and
purchasing (officer’s decision at paragraphs 13 to 15).
[25]
The
applicant’s new evidence establishes that they were in fact used in ordering.
The purchasers of the wares, the consultants, placed online orders from the applicant.
The timing of the purchases, more than 100 on the day the flyer was released, shows
that the purchasers were responding to the flyer in placing their orders. The
flyer, which uses the mark in connection with the wares, has therefore been
used in “ordering and purchasing” as described above.
[26]
Although
in the era before online purchasing, the applicant might have more direct proof
of the flyer’s connection to ordering on the basis of the orders being placed
using a form from a flyer or catalogue, there is no need to hold registrants to
such a requirement in the face of emerging technologies. Here, the timing of
the orders is sufficient to link the flyers to the online orders despite the
separation of the two media of communication.
[27]
The
appeal is therefore granted, the officer’s decision is set aside, and Registration
No. TMA145,567 should remain in good standing.
JUDGMENT
THIS
COURT’S JUDGMENT is that the application is allowed, the order
of the Registrar dated February 17, 2012 expunging Registration No. TMA145,567
is set aside, therefore maintaining Registration No. TMA145,567 in good
standing.
“John A. O’Keefe”
ANNEX
Relevant
Statutory Provisions
Trade-marks
Acts, RSC
1985, c T-13
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45. (1) The
Registrar may at any time and, at the written request made after three years
from the date of the registration of a trade-mark by any person who pays the
prescribed fee shall, unless the Registrar sees good reason to the contrary,
give notice to the registered owner of the trade-mark requiring the
registered owner to furnish within three months an affidavit or a 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 at any time
during the three year period immediately preceding the date of the notice
and, if not, the date when it was last so in use and the reason for the
absence of such use since that date.
(2) The
Registrar shall not receive any evidence other than the affidavit or
statutory declaration, but may hear representations made by or on behalf of
the registered owner of the trade-mark or by or on behalf of the person at
whose request the notice was given.
(3) Where,
by reason of the evidence furnished to the Registrar or the failure to
furnish any evidence, it appears to the Registrar that a trade-mark, either
with respect to all of the wares or services specified in the registration or
with respect to any of those wares or services, was not used in Canada at any
time during the three year period immediately preceding the date of the
notice and that the absence of use has not been due to special circumstances
that excuse the absence of use, the registration of the trade-mark is liable
to be expunged or amended accordingly.
(4) When
the Registrar reaches a decision whether or not the registration of a
trade-mark ought to be expunged or amended, he shall give notice of his
decision with the reasons therefor to the registered owner of the trade-mark
and to the person at whose request the notice referred to in subsection (1)
was given.
(5) The
Registrar shall act in accordance with his decision if no appeal therefrom is
taken within the time limited by this Act or, if an appeal is taken, shall
act in accordance with the final judgment given in the appeal.
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45. (1) Le
registraire peut, et doit sur demande écrite présentée après trois années à
compter de la date de l’enregistrement d’une marque de commerce, par une
personne qui verse les droits prescrits, à moins qu’il ne voie une raison
valable à l’effet contraire, donner au propriétaire inscrit un avis lui
enjoignant de fournir, dans les trois mois, un affidavit ou une déclaration
solennelle indiquant, à l’égard de chacune des marchandises ou de chacun des
services que spécifie l’enregistrement, si la marque de commerce a été employée
au Canada à un moment quelconque au cours des trois ans précédant la date de
l’avis et, dans la négative, la date où elle a été ainsi employée en dernier
lieu et la raison de son défaut d’emploi depuis cette date.
(2) Le
registraire ne peut recevoir aucune preuve autre que cet affidavit ou cette
déclaration solennelle, mais il peut entendre des représentations faites par
le propriétaire inscrit de la marque de commerce ou pour celui-ci ou par la
personne à la demande de qui l’avis a été donné ou pour celle-ci.
(3) Lorsqu’il
apparaît au registraire, en raison de la preuve qui lui est fournie ou du
défaut de fournir une telle preuve, que la marque de commerce, soit à l’égard
de la totalité des marchandises ou services spécifiés dans l’enregistrement,
soit à l’égard de l’une de ces marchandises ou de l’un de ces services, n’a
été employée au Canada à aucun moment au cours des trois ans précédant la
date de l’avis et que le défaut d’emploi n’a pas été attribuable à des
circonstances spéciales qui le justifient, l’enregistrement de cette marque
de commerce est susceptible de radiation ou de modification en conséquence.
(4) Lorsque
le registraire décide ou non de radier ou de modifier l’enregistrement de la
marque de commerce, il notifie sa décision, avec les motifs pertinents, au
propriétaire inscrit de la marque de commerce et à la personne à la demande
de qui l’avis visé au paragraphe (1) a été donné.
(5) Le
registraire agit en conformité avec sa décision si aucun appel n’en est
interjeté dans le délai prévu par la présente loi ou, si un appel est
interjeté, il agit en conformité avec le jugement définitif rendu dans cet
appel.
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