Docket: T-1958-15
Citation:
2016 FC 971
Ottawa, Ontario, August 26, 2016
PRESENT: The
Honourable Madam Justice McDonald
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BETWEEN:
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TRADEMARK TOOLS
INC.
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Applicant
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and
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MILLER THOMSON
LLP
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Respondent
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JUDGMENT AND REASONS
I.
Introduction
[1]
Pursuant to subsection 45(1) of the Trade-Marks
Act (the Act), the owner of a trade-mark may be called upon by the
Registrar of Trade-marks to provide evidence of the use of the trade‑mark
within a specified time frame.
[2]
TradeMark Tools Inc. (TT) is the owner of the
LOGIX design trade-mark. At the request of the Respondent’s solicitors, a
notice was issued by the Registrar to TT requiring it to provide evidence of
use of the trade-mark for the three year period from December 19, 2011 to
December 19, 2014 (the relevant period).
[3]
TT requested two extensions of time to file this
evidence. On September 22, 2015, the Registrar denied TT’s third request for
an extension of time and pursuant to ss. 45(4) of the Act, the Registrar
expunged TT’s registration for failure to show use.
[4]
TT appeals the Registrar’s decision and relies
upon an Affidavit from its warehouse manager, Robert Cesar Olivera, as evidence
that the trade-mark was used within the relevant period.
[5]
The following issues arise:
A.
Is the Olivera affidavit admissible?
B.
Does the Olivera affidavit provide evidence of
use?
C.
Does use of a variation of the trade-mark
qualify as use?
D.
Are there special circumstances?
[6]
For the reasons that follow, I find that the
evidence relied upon by TT does not establish use of the LOGIX trade-mark
during the relevant period. The decision of the Registrar is therefore upheld.
II.
Analysis
A.
Is the Olivera Affidavit admissible?
[7]
A procedure under section 45 of the Act is
intended to be simple, summary and expeditious and is designed to remove deadwood
from the trademark registry. The burden of proof is on the registered owner of
the trade-mark to demonstrate use in order to maintain a trade-mark on the
register. The burden is not a stringent one. The owner must only establish a prima
facie case of use within the meaning of section 4 of the Act (Saks &
Co v Canada (Registrar of Trade-Marks) (1989), 24 CPR (3d) 49 (FCTD); Philip
Morris Inc v Imperial Tobacco Ltd et al. (No.2) (1987), 17 CPR (3d) 237,
[1987] FCJ No. 848 (FCA); Levi Strauss & Co v Canada (Registrar of
Trade-Marks), 2006 FC 654, and Brouillette Kosie Prince v Orange
Cove-Sanger Citrus Association, 2007 FC 1229).
[8]
This Court may consider additional evidence,
even in cases like this where the applicant did not put any evidence before the
Registrar: Austin Nichols & Co, Inc (doing business under the trade name
Orangina International Company) v Cinnabon Inc, [1998] 4 FC 569 (FCA), at
paras 8-10, 22; Vêtement Multi-Wear Inc v Riches, Mckenzie & Herbert LLP,
2008 FC 1237, at paras 17-18.
[9]
The decision of the Registrar would normally be
reviewed on a standard of reasonableness. However, when evidence is adduced
before this Court which was not before the Registrar, this Court may substitute
its own findings for that of the Registrar. In other words, this Court must
render the decision that it believes to be appropriate, on the basis of the
additional evidence filed which was not before the Registrar (see: Molson
Breweries v John Labatt Ltd, [2000] 3 FC 145 (FCA) at para 51.).
[10]
If the new evidence could have changed the
decision of the Registrar, the Court will consider the matter de novo,
apply the standard of correctness, and arrive at its own conclusion on the
issues to which the new evidence pertains: Sport Maska Inc v Bauer Hockey
Corp, 2016 FCA 44 at para 54.
[11]
For the purposes of defending a trademark from
expungement under section 45, evidence of use can take the form of a single
commercial transaction in the ordinary course of business (see: Les Sols R.
Isabelle Inc v Stikeman Elliot LLP, 2011 FC 59 at para 17). Evidentiary
ambiguities will be resolved in favour of the registered owner: Messrs.
Bereskin & Parr v Fairweather Ltd, 2006 FC 1248 at para 41.
[12]
The evidence relied upon by TT is contained in
the Affidavit of Robert Olivera, which was affirmed on December 17, 2015. Mr.
Olivera states that he has been employed as a warehouse manager with TT since
October 27, 2014. He explains that TT is a supplier of tools and other
consumer goods. He states that he is involved in the shipping and invoicing of
the goods that bear the LOGIX trade-mark. Mr. Olivera deposes that much of the
information contained in his Affidavit was obtained from TT’s standard
accounting software.
[13]
The Respondent argues that the affidavit is not
admissible as most of the evidence in the affidavit is hearsay and it is not
information about which Mr. Olivera has firsthand knowledge, particularly as he
had only been employed by TT for less than 2 months during the relevant period.
[14]
I am mindful that the threshold for receipt of
evidence on a section 45 claim is low. (Les Sols R. Isabelle Inc, above,
at para 16.) I am also mindful that by stepping into the shoes of the
Registrar, this Court should be prepared to accept evidence of the same nature
and kind that the Registrar could accept (Fraser Sea Food Corp v Fasken
Martineau Dumoulin LLP, 2011 FC 893 at para 2).
[15]
Mr. Olivera’s affidavit attaches copies of TT
invoices and depictions of the products sold by TT. As the warehouse manager,
he states that he is responsible for invoicing. In this position, he would
have familiarity with the accounting records relating to invoicing as these are
TT’s business records. I am satisfied this evidence meets the low threshold
requirement for acceptability on this type of an Application and would be
acceptable evidence within the business records exemption of the Evidence Act
(Movenpick Holding AG v Exxon Mobil Corporation , 2011 FC 1397 at paras
77-78).
[16]
The Affidavit of Mr. Olivera is admissible.
B.
Does the Olivera Affidavit provide evidence of use?
[17]
The registered design trade-mark is described as
a rectangular bar with a long vertical axis with the text “LOGIX” depicted as follows:
[18]
The colour claim feature of the trade-mark is
described as:
a white rectangular bar with narrow red
bands at the top and bottom thereof, the white band displaying the world LOGIX,
the ‘L’, ‘G’ and ‘X’ being black and the ‘O’ and ‘I’ being gray, with a red
umlaut over the ‘O’ and the dot over the ‘I’ being red; the top red band
displaying the letters LGX in black
[19]
The trade-mark is registered for use in
association with the goods described as:
tool bags, flashlights and tools, namely
hammers, saws, screw drivers, measuring tapes, hand-held drills, spirit levels,
pliers and wrenches, small electric kitchen appliances, kitchen carts, kitchen
towels, wine bottle openers, and spice racks
[20]
Counsel for TT acknowledges that there is no
evidence of use of the trade-mark in association with the following goods:
small electric kitchen appliances, kitchen carts, kitchen towels, wine bottle
openers, and spice racks.
[21]
Counsel also concedes that any invoices attached
to the Olivera Affidavit which are dated outside the relevant period are
irrelevant for consideration on this Application.
[22]
In his Affidavit, Mr. Olivera deposes that during
the relevant period, TT sold tire pressure gauges and digital tire gauges
bearing the LOGIX trade-mark. Attached to his affidavit are depictions of
these two products and copies of the invoices.
[23]
While the tire gauges depicted use a modified
LOGIX mark, the more important issue is whether tire gauges, digital or
otherwise, are a “good” covered within the
registered description. TT argues that the tire gauges would be covered within
the general description of tools. The Respondent argues that the general term “tools” in the registration enumerates a specific list
of tools, and that only evidence of use of the trade-mark in conjunction with
the tools specifically listed in the registration can be considered.
[24]
I agree with the respondent. The list of goods
covered by the trade-mark description (see paragraph 19 above) is specific and
relates to aids for carpentry tasks, rather than mechanical or automotive
tasks.
[25]
While the burden of proof on TT to establish use
is low, it still must provide at least one clear example of use of the LOGIX
design mark during the relevant period: Fraser Sea Food Corp, above, at
paras 18-19.
[26]
TT submitted evidence of goods which are “ready to market” with the LOGIX mark. As this
evidence post-dates the relevant period, it is not relevant and was not
considered.
[27]
The only evidence of use of the LOGIX trade-mark
is in conjunction with tire gauges. However as tire gauges are not goods
within the description as registered, this evidence is not evidence of use.
C.
Does use of a variation of the trademark qualify
as use?
[28]
The Olivera Affidavit attaches invoices and
product depictions for goods described in the invoices with the word LOGIX as
follows: tool bag, tape measure, plier set, bit driver set, cable tie set, hex
key set, fibreglass hammer, household twine, knife, and drill. Some of these
goods are included in the list of goods to which the trade-mark applies.
[29]
However paragraph 17 of the Olivera Affidavit
states that these goods “use a slightly updated LOGIX
trademark”.
[30]
It is well established in the case law that the
use of a variant of a registered trade-mark will be considered use of the mark
if the variant is not “substantially different”
from the registered mark and the “dominant features”
of the trade-mark have been preserved. See: Registrar of Trade Marks v CII
Honeywell Bull, S.A., [1985] 1 FC 406, at 525 (FCA); Honey Dew Limited v
Rudd & Flora Dew Co., [1929] 1 DLR 449, at p 453; Promafil Canada
Ltée v Munsingwear Inc (1992), 44 CPR (3d) 59 (FCA) at 71-72.
[31]
The updated Logix mark as depicted in the
exhibits at tab “E” to the Olivera Affidavit is different from the registered
trade-mark in the following ways:
•
different colors are used for the background
•
different colors are used for the letters
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a different font is used for the letters
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letters are lower case
•
the distinctive punctuation over the letter “o”
and “i” is absent
•
the 2 rectangular boxes framing the word logix
are absent
•
the word logix is displayed vertically.
[32]
The only remaining similarity between the
registered trade-mark and the updated use is the word and the spelling of “logix”. In all other respects, it is substantially
different.
[33]
I therefore find that the updated “Logix” mark
does not maintain the dominate features of the registered trade-mark.
D.
Are there special circumstances?
[34]
Finally, the Applicant has not demonstrated any
special circumstances which would excuse non-use of the mark at issue.
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