TMOB: All Smiles for Registrant - Smart & Biggar LLP and Maranda Rampersaud

This matter involves a decision in a summary expungement proceeding under section 45 of the Canadian Trademarks Act, RSC 1985, c T-13 (the Act) concerning registration No. TMA1,022,113 for the trademark Fresh Smile Spa (the “Mark”), owned by Maranda Rampersaud (the “Owner”). Ultimately, following the submission of evidence and written argument by the Owner, the Trademarks Opposition Board (the “Board”) held that registration should be maintained.

The mark was registered in association with the services “dental laboratories; dental technician services” and “dental clinics; dental hygienist services” (the “Services”)

In its evidence and argument, the Owner, an individual, noted that she is a dental hygienist operating a clinic in the Calgary area called “Fresh Smile Spa”, which routinely offered dental services including teeth cleaning and dental check-ups, orthodontics, local anesthetic, periodontal therapy, prescriptions, laser gum therapy, teeth whitening, and oral radiology, as well as fabricating and adjusting teeth whitening trays and sports guards, during the relevant period. The Owner explained that these services are routinely offered in dental clinics and by dental hygienists and fall under the general categories of dental laboratory services and dental technician services.

In her affidavit, the Owner attached images of the Mark as it was displayed during the relevant period on signage at her clinic and in the clinic’s dental laboratory, on bus stop bench signage in Calgary advertising the clinic, on her social media accounts advertising the clinic (which showed engagement from customers and members of the public), and on statements of account showing that the Owner provided the services described in her affidavit during the relevant period. The Board held that the Owner showed how the Mark would have been displayed in the course of performance and advertising of the registered services in Canada during the relevant period, and was therefore satisfied that use of the Mark was shown within the meaning of the Act in association with each of the registered services.

In terms of practice points, the Board noted that:

• It is improper to introduce evidence via written argument, as attempted by the Owner, and that  only the facts/evidence included in the Owner’s affidavit should  be considered. Accordingly, those facts/evidence were not considered in the Board’s decision;
• The Owner had requested disclosure of the “party on whose behalf [the requesting party] may have requested the section 45 notice” due to alleged improper purposes behind the issuance of the notice. The Board stated that nothing prevented the Requesting Party from requesting that the Registrar issue the notice. The sole issue in the proceeding is whether a trademark has been used within the meaning of the Act; and as such, the motivation of the Requesting Party is generally not a consideration[1]; and
• The Owner had requested costs be awarded in her favour; however, the Board noted that the Act does not currently include any provision allowing the Registrar to award costs in a section 45 proceeding.