KISS MY FACE CORPORATION Applicant v. LAPOINTE ROSENSTEIN LLP, 2011 FC 150
Opinion
Federal Court Cour fédérale Date: 20110209 Docket: T-478-10 Citation: 2011 FC 150 Ottawa, Ontario , February 9, 2011 PRESENT: The Honourable Madam Justice Simpson BETWEEN: KISS MY FACE CORPORATION Applicant and LAPOINTE ROSENSTEIN LLP Respondent REASONS FOR JUDGMENT AND JUDGMENT [ 1 ] Pursuant to
section 56 of the Trade-marks Act , RSC 1985, c T-13 (the Act), KISS MY FACE Corporation (the Applicant) appeals a decision of the Registrar of Trade-marks (the Registrar) dated February 2, 2010 (the Decision) expunging Canadian Trade- mark Registration No.
TMA298,898 (the Registration) for the trademark KISS MY FACE (the Mark) for non-use pursuant to subsection 45(4) of the Act. [ 2 ] The Applicant seeks an order directing the Registrar to reinstate the Registration with the following modifications: the reference to baseball caps is to be deleted and all the services are to be deleted. [ 3 ] This application is unopposed and the Applicant does not seek costs. [ 4 ] Although no material was filed before the Registrar, evidence showing use of the Mark has now been filed and will be discussed below.
BACKGROUND [ 5 ] Subsection 45(1) of the Act provides that use in Canada must be shown at any time during the three year period immediately preceding the date of the notice requiring the owner of the trademark to furnish proof of use (the Notice). In this case, since the Notice was dated September 25, 2007, the relevant period runs from September 25, 2004 to the date of the Notice (the Relevant Period).
[6] Use for wares (not services) is described in
section 4 of the Act. It provides as follows: 4.
(1) A trade-mark is deemed to be used inassociation with wares if, at the time of thetransfer of the property in or possession of thewares, in the normal course of trade, it is markedon the wares themselves or on the packages inwhich they are distributed or it is in any othermanner so associated with the wares that noticeof the association is then given to the person towhom the property or possession is transferred. Idem
(2) A trade-mark is deemed to be used inassociation with services if it is used or displayedin the performance or advertising of thoseservices. Use by export
(3) A trade-mark that is marked in Canada onwares or on the packages in which they arecontained is, when the wares are exported fromCanada, deemed to be used in Canada inassociation with those wares. 4.
(1) Une marque de commerce est réputéeemployée en liaison avec des marchandises si,lors du transfert de la propriété ou de lapossession de ces marchandises, dans la pratiquenormale du commerce, elle est apposée sur lesmarchandises mêmes ou sur les colis danslesquels ces marchandises sont distribuées, ou sielle est, de toute autre manière, liée auxmarchandises à tel point quavis de liaison estalors donné à la personne à qui la propriété oupossession est transférée. Idem
(2) Une marque de commerce est réputéeemployée en liaison avec des services si elle estemployée ou montrée dans lexécution oulannonce de ces services. Emploi pour exportation
(3) Une marque de commerce mise au Canadasur des marchandises ou sur les colis qui lescontiennent est réputée, quand ces marchandisessont exportées du Canada, être employée dans cepays en liaison avec ces marchandises. [7] In Osler v Canada (Registrar of Trade-marks) (1997), (FC), 77 CPR (3d) 475, 139 FTR 64 (FCTD) atparagraphs 22 and 25, the Court said: 22. The nature of the proceeding before this Court under
section 56 of the Act is similar to a trial de novo in that the appellant has theright to adduce evidence which was not presented to the Registrar. The Court is not restricted to deciding whether the Registrar was rightor wrong. However, the Court should be circumspect about interfering with a Registrars decision. [] 25.
Evidence of a single sale, whether wholesale or retail, in the normal course of trade, can suffice so long as it follows the pattern of agenuine commercial transaction and is not seen as being deliberately manufactured or contrived to protect the registration of the mark. [8] The wares in this case are a variety of face, body, bath, deodorant and hair care products and t-shirts. [9] The Applicant submits that it has provided evidence of substantial sales in Canada in the affidavit of Robert McLeod, swornin New York City on May 7, 2010 (the McLeod Affidavit). Mr.
Mcleod has been President of the Applicant since its incorporation in1978. His affidavit provides that the wares (other than t-shirts) were manufactured to the Applicants specifications and that the t-shirtswere finished to the Applicants specifications. It also provides photographs of the wares with invoices showing their sales in Canada andit identifies the distributors and retailers who purchased and sold the wares. CONCLUSIONS
[ 10 ] I have heard the submissions of counsel and have reviewed the McLeod Affidavit and its exhibits and am satisfied that, in the Relevant Period, the Applicant sold the wares listed below in Canada (the Sales) and that all the products, except the t-shirts, were sold in packaging affixed with labels displaying the Mark. In the case of the t-shirts, the Mark was displayed on the front of the shirts.
In my view, the transactions were genuine and the Sales constituted use of the Mark. [ 11 ] The volumes sold in the Relevant Period were at least the following: Wares Sales (USD) Soap, bar soap, foaming soap, liquid soap 33,200 Shaving cream: moisture shave, shave-French 16,000 Deodorant: deodorant-French, stick deodorant 7,800 Exfoliating cream: scrub, body scrub, hand scrub, foot scrub 1,750 Skin lotion: hand crème, moisturizer, foot crème, body balm 14,350 Skin toner 1,200 AHA cream 3,900 Bath and shower gel 4,750 Crème rinses, hair conditioner 12,150 Cleansing masks: scrubs, masque 1,050 Shampoos 11,200 T-shirts 800 [ 12 ] For all these reasons, the appeal will be allowed.
JUDGMENT THIS COURTS JUDGMENT is that 1. The application is granted. 2. The Registrar of Trade-marks shall reinstate the KISS MY FACE Registration with the following modifications: the reference to baseball caps is deleted and the services are also deleted. 3. There shall be no costs awarded on this application. Sandra J. Simpson Judge FEDERAL COURT SOLICITORS OF RECORD DOCKET: T-478-10
STYLE OF CAUSE: KISS MY FACE v LAPOINTE ROSENSTEIN LLP PLACE OF HEARING: Toronto , Ontario DATE OF HEARING: October 25, 2010 REASONS FOR JUDGMENT: SIMPSON J. DATED: February 9, 2011 APPEARANCES : Paul V. Lomic FOR THE APPLICANT Matthew Norwood FOR THE APPLICANT SOLICITORS OF RECORD : Ridout & Maybee LLP Toronto, Ontario FOR THE APPLICANT Lapointe Rosenstein Marchand Melançon, LLP Montreal , Quebec FOR THE RESPONDENT
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