Main Takeaway
Use of Mark in association with wines is considered sufficient to maintain the registration in respect of wines and liquors based on the principle that an owner only needs to establish a prima facie case of use in the context of a cancellation proceeding, that reasonable inferences can be made from evidence, and that one need not be astutely meticulous when dealing with the language used in a statement of goods.
Background
At the request of VanTek Intellectual Property LLP (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act in respect of Registration No. TMDA21087 for the trademark HERMIT (the Mark), registered in association with “Wines and liquors, not including whiskey” (the Goods), to Arterra Wines Canada, Inc. (the Owner).
Decision
In VanTek Intellectual Property LLP and Arterra Wines Canada, Inc., 2023 TMOB 213 (CanLII), the Registrar of Trademarks maintained the registration for the Mark in respect of all goods.
Reasoning
In response to the Registrar’s notice, the Owner filed affidavit evidence demonstrating use of the Mark in association with three types of alcoholic beverages, namely, sherry, port wine and fortified wine. The Board therefore concluded that the evidence, which comprised photographs of the Goods with labelling bearing the Mark for sale on store shelves, copies of archived website screenshots from various provincial liquor boards showing the Goods offered for sale online during the Relevant Period, copies of archived website screenshots from the Prince Edward Island Liquor Control Commission listing various stores in the province that offered the Goods for sale during the Relevant Period, sales figures for the Goods in several provinces for years falling within the Relevant Period, and total sales revenue for the Goods in Canada for years falling between the Relevant Period.
The only pertinent issue was whether the registration for the Mark should be maintained in respect of both of the Goods covered by the registration, namely, wines and liquors. The Board considered that, since an owner only needs to establish a prima facie case of use, that reasonable inferences can be made from the evidence provided and that the case law consistently states that one is not to be astutely meticulous when dealing with the language used in a statement of goods. As such the Board was willing to infer that the sales evidenced by the Owner cover both the goods “wines” and “liquors” and, accordingly, the registration was maintained in full.
