Docket: T-334-15
Citation:
2015 FC 1000
Vancouver, British Columbia, August 24, 2015
PRESENT: The
Honourable Mr. Justice Beaudry
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BETWEEN:
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CAMERON IP
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Applicant
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and
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HALDEX AB
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Respondent
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JUDGMENT AND REASONS
[1]
This is an appeal of a decision by a Hearing
Officer of the Trade-Marks Opposition Board dated December 30, 2014. In her
decision, the Officer maintained in part the registration Nos. TMA693, 747 and
TMA667, 821 for the trade –marks HALDEX and HALDEX & DESIGN [the marks]
shown below, owned by Haldex AB:
I.
Factual Background
[2]
On May 29, 2012, the applicant sent notice to
the Registrar of Trade-marks pursuant to s 45 of the Trade-marks Act,
RSC 1985, c T-13 [the Act]. As a result of this notice the respondent
was required to provide evidence showing that it had used the marks in Canada
at any time between May 29, 2009 and May 29, 2012 [the relevant period].
[3]
On January 24, 2013, the respondent provided as
evidence two affidavits, a brochure and three invoices attesting to the
use of the marks in Canada during the relevant period.
[4]
In her decision, the Hearing Officer explained
the rationale behind the expungement provisions of the Act. She also
noted that in order to prove that the marks were still in use during the
relevant period sufficient evidence needed to be adduced citing Uvex Toko
Canada Ltd v Performance Apparel Corp, 2004 FC 448.
[5]
She went on to discuss the affidavits of Brian
Bowerman, Director, North American Aftermarket Sales for Haldex Limited [the
Affidavits]. Mr. Bowerman explained that in Canada, Haldex Inc. is responsible
for the manufacturing of parts associated with the Haldex brand, whereas Haldex
Limited is responsible for the sales of those manufactured parts. In his
affidavits Mr. Boweman also attested to the use of the marks during the
relevant period. The two Affidavits are substantially the same, the only
difference being to which of the marks they refer. As evidence of use, the
affiant produced a copy of a brochure entitled Aftermarket Product Lines
[the Brochure] bearing the HALDEX and DESIGN mark on the front page; and,
copies of invoices issued by Haldex Limited [the Invoices].
[6]
The Hearing Officer agreed with the respondent’s
arguments pertaining to the use of the marks on the invoices provided by the
affiant. Relying on case law, she noted that the affiant “provided statements clearly attesting to the Registrant’s
control over the character and quality of all of the products sold by Haldex
Limited” and therefore accepted that “any such
use enures to the benefit of the Registrant”. In addition, she accepted
that the use of the mark HALDEX & DESIGN might constitute use of each of
the marks.
[7]
Where the Hearing Officer disagreed with the respondent
was on the use of the marks for the goods and services for which they are registered.
She observed that evidence of use was lacking for some of the goods and
services. Therefore, she determined that the goods and services for which no
use had been demonstrated would be deleted from the respective registrations.
II.
Issues
[8]
The issues raised by the applicant in the appeal
are the following:
(1)
Has the respondent established use with respect
to goods?
(2)
Has the respondent established use with respect
to services?
III.
Applicant’s Arguments
A.
Use with respect to goods
[9]
The applicant argues that the Hearing Officer
did not properly assess the brochure evidence submitted. In fact, he contends
that the Federal Court of Appeal in Nissan Canada Inc v BMW Canada Inc,
2007 FCA 255 has held that the proof of use through brochures or other
advertising material requires that the owner of the mark “also supply evidence that the brochures were provided at the
time of transfer of the property or possession of the good”. This
conclusion also found application in the following cases: Baker &
McKenzie LLP v Dart Industries Ltd, 2012 TMOB 20 and Grapha-Holding AG v
Illinois Tool Works Inc, 2008 FC 959. However, in the present case, the
respondent provided no evidence that the brochure relied upon to prove the use
of the marks was provided at the time of transfer of the property.
[10]
With respect to the invoice evidence, the applicant
notes that “if [a mark is] used in the body of an
invoice, it will generally be accepted that the mark is being used to describe
the goods. However, if placed on top of the invoice, it will not”. In
the present case, the marks are displayed on top of the invoices. In addition,
these invoices contain products associated with other trade-marks. Therefore,
the invoices are not acceptable evidence as they contain ambiguous information
pertaining to the use of the marks.
B.
Use with respect to services
[11]
The applicant submits that the Hearing Officer
erred when concluding that the combined use of the marks on the invoices and brochure
showed use in association with the services.
IV.
Respondent’s Arguments
[12]
The respondent underscore that the decision of
the Hearing Officer was reasonable. In regards to the use with association with
goods, the respondent cites Hortilux Schreder BV v Iwasaki Electic Co,
2011 FC 967 aff’d 2012 FCA 321 [Hortilux], where Mr. Justice Russell
concluded that there are several factors that are relevant in determining if
invoices establish use of trade-marks. The factors, as summarized by the
respondent, are:
(1)
The prominence of the trade-mark at the top of
the invoice;
(2)
Whether the trade-mark is used in the context of
corporate identification;
(3)
Whether the goods of more than one manufacturer
are being sold;
(4)
The purchaser’s familiarity with the trade-mark
owner’s business;
(5) Whether any other trade-mark appears in the invoice in association
with the wares being sold;
[13]
The respondent applies these factors to the
present case and demonstrates how they justify the use of the invoice evidence.
[14]
On the issue of use of trade-marks with respect
to services, the respondent contends that LIDL Stiftung & Co KG v Thornbury
Grandview Farms Ltd, [2005] TMOB no 122, recognizes that “the display of a trademark on invoices can constitute use of
services”. The brochure and the sworn affidavit reinforce the decision
of the Hearing Officer. Therefore, it was reasonable for her to maintain the
marks.
V.
Analysis
[15]
The Court agrees with the parties that the
applicable standard of review for an appeal of a decision by the Registrar of
Trade-marks is reasonableness Scott Paper Limited v Smart & Biggar,
2008 FCA 129; Diamant Elinor Inc v 88766 Canada Inc, 2010 FC 1184. As
such, this Court will only intervene if the decision does not fall within a
range of possible, acceptable outcomes which are defensible in respect of the
facts and law Dunsmuir v New Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 at
para 47.
[16]
The critical or relevant period in this case for
a conclusion of use ran from May 29, 2009 to May 29,
2012.
[17]
Use is defined in section 2 of the Act as
“any use that by section 4 is deemed to be a use in
association with goods or services”.
[18]
Subsection 4 (1) of the Act establishes
the requirement for a trade-mark that is used in association with goods:
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4. (1) A
trade-mark is deemed to be used in association with goods if, at the time of
the transfer of the property in or possession of the goods, in the normal
course of trade, it is marked on the goods themselves or on the packages in
which they are distributed or it is in any other manner so associated with
the goods that notice of the association is then given to the person to whom
the property or possession is transferred.
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4. (1) Une marque de commerce est réputée employée en liaison avec
des produits si, lors du transfert de la propriété ou de la possession de ces
produits, dans la pratique normale du commerce, elle est apposée sur les produits
mêmes ou sur les emballages dans lesquels ces produits sont distribués, ou si
elle est, de toute autre manière, liée aux produits à tel point qu’avis de
liaison est alors donné à la personne à qui la propriété ou possession est
transférée.
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[19]
Therefore, it must be shown that the goods were
transferred, either in property or possession and that the mark was associated
with the goods in some way.
[20]
In the case at bar, the invoices are dated
August 16, 2010; November 23, 2010; and March 24, 2011; all of which fall
within the relevant period. It was therefore reasonable for the Hearing Officer
to conclude that the goods listed on the invoices were transferred during the
relevant period.
[21]
In his affidavits, Mr. Bowerman affirms that the
trade-mark was marked on the products themselves, displayed on the packaging,
displayed on the Brochure and displayed on the invoices. The Court is of the
opinion that the Hearing Officer’s conclusion that the mark was used in
association with the goods is reasonable.
[22]
Nowhere in the Hearing Officer’s reasons does it
appear that she relied on the Brochure alone as evidence to associate the marks
with the goods.
[23]
The Hearing Officer analysed the invoices
submitted by the respondent in conjunction with Mr. Bowerman’s attestations in
his affidavit and determined that the use of the marks had been established.
The Court has no reason to intervene here.
[24]
The factors in Hortilux cited at paragraph 12 of
the present decision, are simply factors to consider and do not form a strict
test. They are not to be applied in isolation.
[25]
Subsection 4 (2) of the Act establishes
the requirement for a trade-mark that is used in association with services:
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(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.
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(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.
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[26]
The Hearing Officer deleted most of the services
from the register. The amended statements of services for both marks are
limited to sales and distribution, and in the case of TMA667, 821, the
manufacture of motor vehicle parts.
[27]
The invoices and the brochure were all marked
with the Haldex mark. Furthermore, Mr. Bowerman’s affidavit states that the
products are manufactured by Haldex Inc., sold and distributed by Haldex
Limited.
[28]
Based on this evidence, it was in the province
of the Hearing Officer to conclude that the mark was used in association with
sales and distribution activities as well as the manufacture of motor vehicle
parts.
[29]
The Court concludes that the Hearing Officer’s
decision taken as a whole cannot be qualified as unreasonable.
[30]
The parties agreed that a lump sum for an amount
of $2,500.00 plus disbursements should be awarded for costs to the successful party.
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