Docket: T-1617-16
Citation:
2017 FC 289
Ottawa, Ontario, March 17, 2017
PRESENT: The
Honourable Mr. Justice Fothergill
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BETWEEN:
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LUCITE
INTERNATIONAL, INC.
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Applicant
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and
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CROLL & CO.
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Respondent
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JUDGMENT AND REASONS
UPON the appeal of Lucite International
Inc [Lucite] pursuant to s 56(1) of the Trade-marks Act, RSC 1985, c
T-13 of a decision of the Trade-marks Opposition Board of the Canadian
Intellectual Property Office on behalf of the Registrar of Trade-marks [the
Registrar], dated July 20, 2016 and recorded as 2016 TMOB 127;
AND UPON reading the Application Record
of Lucite filed on January 27, 2017;
AND CONSIDERING that Croll & Co, the
party that requested that Notice be issued to Lucite pursuant to s 45 of the Trade-marks
Act, does not contest the appeal;
AND UPON being satisfied that the appeal
is suitable for determination on the basis of the written record and without
personal appearance of counsel;
AND CONSIDERING the following:
[1]
Lucite describes itself as the global leader in
the design, development and manufacture of acrylic-based products. It claims to
be the world’s largest supplier of methyl methacrylate, the essential building
block for all acrylics. Lucite manufactures and sells methyl methacrylate,
acrylic resins in both unprocessed and bead forms and acrylic sheets in
association with the trade-mark LUCITE, Registration No. TMA667,621 [the Mark].
These goods are subsequently sold to third party industrial processors that
manufacture finished consumer products.
[2]
The Mark was registered in Canada on July 14,
2006 in connection with a broad range of goods [the Registered Goods]. On
January 31, 2014, the Registrar issued Notice pursuant to s 45 of the Trade-marks
Act requiring Lucite to provide evidence of use of the Mark in Canada in
association with the Registered Goods in the preceding three years, namely from
January 31, 2011 to January 31, 2014 [the Relevant Period].
[3]
Following receipt of the Notice, Lucite
voluntarily amended the registration of the Mark to restrict the statement of
Registered Goods.
[4]
The Hearings Officer was satisfied that Lucite
had demonstrated use of the Mark during the Relevant Period in association with
“unprocessed acrylic resin for use in manufacturing of
solid shapes”. However, the Hearings Officer was not satisfied that
Lucite had demonstrated use of the Mark in association with “moulding powders for use in industry” or “resin beads”. The Hearings Officer considered these
goods to be broader than “unprocessed acrylic resin for
use in manufacturing solid shapes”, and to potentially encompass
products that are not acrylic-based.
[5]
The Hearings Officer found that Lucite had
provided no evidence relating to any of the “other
identified “end products”, such as aquariums, signs and dental implants”.
The Hearings Officer held that Lucite had not demonstrated use of the Mark in
association with any of the remaining goods, nor submitted any evidence of
special circumstances excusing the absence of such use.
[6]
The Hearings Officer therefore amended the
registration of the Mark to restrict the statement of Registered Goods to the
following:
(1) Unprocessed acrylic resin for use in manufacturing of solid shapes;
chemical reagents namely methyl methacrylate.
(2) Acrylic sheets.
(3)
Baths, showers, shower cubicles, shower trays.
[7]
In this appeal, Lucite seeks to restore only “resin beads” to the list of Registered Goods.
[8]
Lucite has submitted new evidence pursuant to s
56(5) of the Trade-marks Act, specifically the affidavit of Brent Long,
Lucite’s Business Director for Sheet and Resins. Mr. Long attests that
Lucite sold resin beads to Canadian customers throughout the Relevant Period.
He includes as exhibits to his affidavit a photograph of a label bearing the
Mark affixed to a drum containing resin beads; a Safety Data Sheet from the
Relevant Period bearing the Mark and the resin bead grade shown in the
photograph; and an invoice from the Relevant Period demonstrating sale of the
product in Canada.
[9]
Section 45 of the Trade-marks Act is a
housekeeping measure that is intended to rid “deadwood”
from registration (Mcdowell v Laverana GmbH & Co KG, 2016 FC 1276 at
para 19 [Mcdowell]; Saks & Co v Canada (Registrar of Trade Marks),
[1989] FCJ No 28 (TD) at para 44). The evidentiary threshold to demonstrate use
of a trade-mark is therefore low (Union Electric Supply Co Ltd v Canada
(Registrar of Trade Marks), [1982] 2 FC 263 at para 3 (TD).
[10]
Where new evidence filed in support of an appeal
from a decision of the Registrar under s 45 of the Trade-marks Act is
material, the decision must be reviewed in light of all the evidence and the
Court must come to its own conclusion (Mövenpick Holding AG v Exxon Mobil
Corp, 2011 FC 1397 at para 10; Shell Canada Ltd v PT Sari Incofood Corp,
2008 FCA 279 at para 22; Mcdowell at para 13). The deference owed to a
Hearings Officer’s expertise is reduced but not eliminated (Mcdowell at
para 12; Mattel, Inc v 3894207 Canada Inc, 2006 SCC 22 at para 37).
[11]
I am satisfied that the new evidence is material
to the appeal and demonstrates use of the Mark during the Relevant Period in
association with “resin beads”. The appeal is
therefore allowed, and the Registrar is directed to amend the registration to
include “resin beads”.
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