Main Takeaways
Evidence comprising use by an owner’s predecessor-in-title and/or sales representative can be admissible if the affiant can establish that they have the personal knowledge required to attest to the validity of the information provided.
Distribution and sale of an owner’s goods through entities along the distribution chain can constitute trademark use that enures to the owner’s benefit without the need for a license, so long as the owner has initiated the first link in the chain of transactions.
Background
At the request of Self-Portrait IP Limited (the Requesting Party), the Registrar of Trademarks issued a notice under section 45 of the Trademarks Act in respect of Registration No. TMA557,021 for the trademark PORTRAIT (the Mark), registered in association with coats, jackets, to J&J Lang Inc. / Gestion J&J Lang Inc. (the Owner).
Decision
In Self-Portrait IP Limited and J&J Lang Inc. / Gestion J&J Lang Inc., 2023 TMOB 214 (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 detailing the activities of the Owner, a company operating in the business of “arranging for the manufacture of, and the importation into Canada of, fashion clothing” as well as its predecessors‑in‑title (the Predecessors) and its sales representative (MC).
As part of its evidence, the Owner submitted internal sales documents, including from MC, purchase orders from several customers located in Canada, documents comprising specification sheets with manufacturing details stated to be used by MC in the course of selling and distributing “PORTRAIT garments” in Canada.
The Owner’s affidavit included statements that each and every product sold or distributed in Canada in the Owner’s normal course of trade, either by MC or by the Predecessors, had labels and hangtags bearing the Mark, and photographs depicting labels and a hangtag bearing the Mark, and three different outerwear products described as “garment[s] of the type sold in Canada during the Relevant Period by or on behalf of [the Owner]”
The Requesting Party submitted that all the MC‑related documents, that is the internal sales documents issued by MC and the purchase orders identifying MC as supplier, constituted inadmissible hearsay. However, the Board determined that, given the summary nature of section 45 proceedings, any concerns about the reliability of the affiant’s statements and the evidence would be assessed in terms of weight rather than admissibility. Furthermore, the Board determined that it was reasonable to assume that the president or owner of a business (i.e., the affiant in this case) would have knowledge of the manner in which the business’s products are distributed and therefore accepted that the purchase orders and internal sales documents were admissible in support of the affiant’s assertions of sales of the goods in Canada during the relevant period.
The Requesting Party also submitted that the documents from the Predecessors should also be disregarded on the basis that it was unclear as to how these documents were obtained and whether they were reliable. The Board considered that, because the Owner’s evidence established that the affiant was involved with the predecessors‑in‑title, he had the personal knowledge required to attest to the validity of the information contained in any of the documents issued by the Predecessors.
The Requesting Party argued that the Owner had not clearly established its normal course of trade and that the use relied upon did not enure to the Owner’s benefit. The Board noted that, while the evidence did not indicate what entity is the actual manufacturer of the goods, the lack of such information was inconsequential since the Act does not require a registered owner to be the actual manufacturer of goods for it to be considered the source of such goods and moreover, given the nature and purpose of section 45, it is proper to presume that a registered owner is the “source” of the goods in question, unless the evidence indicates otherwise.
The Board further considered that, as sales representative, MC is a point along the distribution chain from the Owner to the retailer and ultimately to the consumer and noted that it is well- established that distribution and sale of an owner’s goods through such entities can constitute trademark use that enures to the owner’s benefit without the need for a licence, so long as the owner has initiated the first link in the chain of transactions. Accordingly, the Board concluded that the use shown by the Predecessors and MC accrued to the Owner.
The Requesting Party alternatively argued that the evidence only showed use in association with coats and not jackets. In consideration, the Board relied upon the well‑established principle that, when interpreting a statement of goods or services in a section 45 proceeding, one is not to be “astutely meticulous when dealing with [the] language used” and noted that, while it remains that use in association with one specific good cannot generally serve to maintain multiple goods within the statement of goods, the evidence in this case contained many examples of coats along with examples which could reasonably be considered to correspond to a “jacket”, even though the specification sheet itself did not explicitly identify the garment as a jacket.
In view of the above, the Board maintained the registration in full.
