KISS MY FACE CORPORATION Applicant v. LAPOINTE ROSENSTEIN MARCHAND, 2011 FC 151

Federal Court Cour fédérale Date: 20110209 Docket: T-480-10 Citation: 2011 FC 151 Ottawa, Ontario , February 9, 2011 PRESENT: The Honourable Madam Justice Simpson BETWEEN: KISS MY FACE CORPORATION Applicant and LAPOINTE ROSENSTEIN MARCHAND MELANÇON, 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.

TMA574,850 (the Registration) for the trademark ​KISS KIDS​ (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 modification: the deletion of clothing namely, knitted tops, knitted shirts and t-shirts. [ 3 ] This application in 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 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 qu​avis 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 l​exécution oul​annonce 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 Registrar​s 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 body soaps and hair care products. [9] The Applicant submits that the affidavit of Robert McLeod, sworn in New York City on May 7, 2010 (the McLeodAffidavit) provides evidence of substantial sales of the wares in Canada. Mr. McLeod has been President of the Applicant since itsincorporation in 1978.

His Affidavit shows that the wares were manufactured to the Applicant​s specifications. The McLeod Affidavitexhibits photographs showing that the wares were packaged in containers which bore labels which prominently displayed the Mark. TheMcLeod Affidavit also lists the distributors and retailers of the wares and exhibits invoices proving that the sales were made in Canada. Ihave no doubt that these transactions were genuine. CONCLUSIONS

[ 10 ] I am satisfied that the Mark was used in Canada in the Relevant Period. [ 11 ] For all these reasons, the appeal will be allowed. JUDGMENT THIS COURT​S JUDGMENT is that 1. The application is granted. 2. The Registrar of Trade-marks shall reinstate the KISS KIDS Registration with the following modifications: delete clothing namely, knitted tops, knitted shirts and t-shirts. 3. There shall be no costs awarded on this application. ​Sandra J. Simpson​ Judge FEDERAL COURT SOLICITORS OF RECORD DOCKET: T-480-10 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