Docket: T-310-16
Citation:
2016 FC 1109
Ottawa, Ontario, October 5, 2016
PRESENT: The
Honourable Mr. Justice Diner
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BETWEEN:
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THE BLACK &
DECKER CORPORATION
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Applicant
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And
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METHOD LAW
PROFESSIONAL CORPORATION
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Respondent
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JUDGMENT AND REASONS
(Delivered from the Bench at Ottawa, Ontario, on September 27, 2016)
[1]
The Applicant appeals, pursuant to section 45 of
the Trade-marks Act, a decision of the Registrar of Trade-marks [Registrar],
dated December 21, 2015 [Decision]. The Decision amended PIRANHA trade-mark
TMA330,222 [the Registration], which was originally registered for use in
association with “saw blades for power saws” [power
saw blades] and “circular saw blades” [the
Registered Wares] on July 17, 1987. The Registrar’s Decision found that the
Applicant’s evidence with respect to use of the Mark in association with power
saw blades was ambiguous, and as a result, ordered that part of the
registration be deleted.
I.
Background
[2]
PIRANHA branded circular saw blades are offered
in a range of sizes and material compositions and designed to be used with
circular power saws.
[3]
There was a significant amount of evidence regarding
these saw blades that was tendered before the Registrar, as contained in a 2014
Affidavit of Greg C. Weston [the 2014 Weston Affidavit]. Mr. Weston was, at
the time, a Commercial Marketing Manager with Stanley Black & Decker
Canada. This evidence was tendered to establish use by the Applicant of its
trade-mark in Canada of the Registered Wares in the preceding three years, namely
April 3, 2011 through April 3, 2014 [the Relevant Period].
[4]
Mr. Weston attested that during the Relevant
Period, the Mark had been in use by the Applicant in the normal course of trade
and in association with the Registered Wares. Evidence of use of the power saw
blades presented along with his Affidavit included:
•
Representative copies of jigsaw blade sets for
use on power saws, with the Mark displayed on the individual blades, the blade
set case, and packaging;
•
Sample Canadian Price Lists, effective January
1, 2011 and January 1, 2014, listing PIRANHA branded wares for sale;
•
Sales figures for PIRANHA circular and power
saws from the Relevant Period;
•
Copies of representative invoices showing sales
of the Registered Wares to various Canadian retailers for the Relevant Period,
specifically for the circular saws;
•
Printouts from the retail websites www.amazon.ca
and www.walmart.ca displaying the jigsaw and circular power saw blades
available for purchase in Canada;
[5]
The Registrar accepted that the Applicant had,
with respect to the rescinded Mark (for power saw blades), (i) shown use of it on
the Wares themselves, and (ii) made the Wares available for purchase to
Canadians from the online retailers. However, the Registrar nonetheless
concluded that there was no proof of sale, and therefore no actual use of the
Mark in Canada with respect to power saw blades. The Registrar ordered the
deletion for power saw blades from the Mark.
II.
New Evidence
[6]
Mr. Weston, the affiant before the Registrar,
has provided new evidence for this application, once again in the form of an
Affidavit [2016 Weston Affidavit]. Mr. Weston is now the Director of Product
and Brand Marketing for the Applicant.
[7]
The 2016 Weston Affidavit attaches Canadian
sales invoices for eighteen new power saw blades from the Relevant Period.
These sales exceed $70,000.
III.
Legislation
[8]
The relevant legislative provisions relating to
the Decision are as follows:
Registrar
may request evidence of user
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… give notice
to the registered owner of the trade-mark requiring the registered owner to
furnish … an affidavit or a statutory declaration showing, with respect to each
of the goods 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.
…
Effect of
non-use
(3) Where, by reason of the evidence
furnished … it appears to the Registrar that a trade-mark, either with respect
to all of the goods or services specified in the registration or with respect
to any of those goods 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.
[9]
Section 2 of the Act defines “use” as follows:
use, in relation to a trade-mark, means any
use that by section 4 is deemed to be a use in association with goods or
services;
[10]
Finally, subsection 4(1) of the Act reads as
follows:
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.
IV.
Analysis
[11]
While the deferential “reasonableness”
standard applies to s. 45 decisions, where additional evidence is adduced
before the Federal Court on appeal that would have materially affected the
Registrar’s findings of fact or the exercise of discretion, the standard of
correctness applies (Molson Breweries v John Labatt Ltd, [2000] 3 FCR
145 at para 51).
[12]
The purpose of s. 45 is to clear deadwood. It
is not to expunge or amend the scope of rights accorded to trade-marks known
and in use ( Guido Berlucchi & C Srl’s v Brouillette Kosie Prince, [2007]
FC J No 319 at para 15 [Prince]). The owner of a mark must simply establish
a prima facie case of use to satisfy use as defined under the Act [Prince
at para 18]. In other words, its burden of proof is not an onerous one. As
this Court has said, evidentiary overkill is to be avoided.
[13]
In my view, the 2014 Weston Affidavit provided
sufficient evidentiary support to establish a prima facie case that the
Mark was in use in association with power saw blades in Canada during the
Relevant Period, namely:
I.
representative copies showing that the Mark was
used on the jigsaw blades sets and associated packaging;
II.
copies of major retailer websites offering
PIRANHA jigsaw (power) blade sets for purchase in Canada;
III.
total sales figures from the Relevant Period
which Mr. Weston attested captured both the sales of the PIRANHA circular saw
blades as well as power saw blades.
[14]
The above evidence provided in 2014 showed that the
Mark was indeed use in association with all the Registered Wares during the
Relevant Period. The Federal Court has clearly stated that it is not necessary
to provide invoices in section 45 proceedings. Therefore, the failure to
provide those invoices should not have been determinative. The evidence
provided above, given the low threshold of proof required, and given the purpose
of s. 45, should have sufficed as proof of use (Diamant Elinor Inc v 88766
Canada Inc, 2010 FC 1184, at para 6).
[15]
Furthermore, any ambiguity as to use, should
there have indeed been any, should have been resolved in favour of the registered
owner, given the evidence that was provided by Mr. Weston in his 2014 Affidavit
(Fraser Sea Food Corp v Fasken Martineau Dumoulin LLP, 2011 FC 893 at
para 19).
[16]
Finally, to the extent that there was indeed any
legitimate ambiguity – which I do not feel that there was - that has been
cured by the new evidence, namely the 2016 Weston
Affidavit, has now provided sales through invoices exceeding $70,000, itemizing
the power saw blades. Those sales all took place during the Relevant Period.
[17] While use was impugned when the Registrar rescinded the Mark, I find
that this new evidence clarifies any ambiguity as to whether the Registered
Wares were actually sold in Canada during the Relevant Period. On this basis, I
find that the registration “saw blades for power saws”
(TMA330,222) should be reinstated.
V.
Conclusion
[18]
The evidence before the Registrar clearly
established a prima facie case of use in association with “saw blades for power saws”. I find the Registrar’s
decision to have been unreasonable based on the evidence presented at the
hearing. Furthermore, the new evidence presented to this Court for this
application clearly establishes use under the Act, without any ambiguity
whatsoever.
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