Digests

Uvex Toko Canada Ltd. v. Performance Apparel Corp.

T-2115-02

2004 FC 448, Russell J.

25/3/04

25 pp.

Application pursuant to Trade-marks Act, s. 56(1) to appeal Registrar of Trade-marks' decision granting respondent's request under Act, s. 45 to expunge registration of trade-mark "Hot Chilly's" for use in association with clothing and accessories--Registrar holding unsworn affidavit not evidence of use for purposes of s. 45 proceeding--Importance of "showing", as opposed to "telling" use in s. 45 proceeding-- On one hand, Registrar should be satisfied by relatively low threshold of use--As to meaning of "relatively low threshold of use", in Union Electric Supply Co. Ltd. v. Registrar of Trade Marks, [1982] 2 F.C. 263 (T.D.), Mahoney J. stated "absolutely no justification in putting a trade-mark owner to the expense and trouble of showing his use of the trade mark by evidentiary overkill when it can be readily proved in a simple, straightforward, fashion"--On other hand, Plough (Canada) Ltd. v. Aerosol Fillers Inc., [1981] 1 F.C. 679 (C.A.) holding affidavit or statutory declaration required to describe use being made of trade-mark within definition of "trade- mark" in s. 2 and "use" in s. 4, i.e. not merely state, but show, use--Mere assertion by owner that trade-mark in use not sufficient and owner must show how, when and where trade-mark used--Need sufficient evidence to be able to form opinion under s. 45 and apply provision--At same time, need to maintain sense of proportion and avoid evidentiary overkill--Required evidence will vary from case to case, depending upon range of factors such as trade-mark owners' business and merchandising practices--Applicant not showing use of trade-mark in association with pants--Evidence little more than bald assertions--Because all clothing items bundled together, but "representative" samples only provided for some of items, not clear representative samples cover pants --As number of items in trade-mark description relatively few, not evidentiary overkill to require affiant to "show" examples for each item--Applicant not establishing use in association with turtlenecks, vests and shirts--Only sales evidence for relevant period in invoices refers to "Solarmax Top"--No evidence in invoices regarding turtlenecks and vests--Invoices refer to crew tops--Examination of crew neck garment revealed it was thermal underwear--Even taking into account current vagaries of fashion, decision to wear it as shirt would be decision to wear underwear as shirt--As to use in association with neck warmers, hats and scarves, only evidence refers to "Hot Hood" which applicant said was combined neck warmer, woven hat, knitted hat and scarf-- Court found it was balaclava intended to cover whole head and neck--Neckwarmer not covering head--If anything, "Hot Hood" is hat, or knitted balaclava--Applicant says distinction between woven and knitted too detailed for s. 45 proceedings, but Court of view people clearly know difference between knitted and woven hat--Applicant showing use of trade-mark in association with knitted hat for relevant period-- Application dismissed--Registration valid for socks, underwear, suspenders and knitted hats--Registration expunged for all other wares and services--Trade-marks Act, R.S.C., 1985, c. T-13, ss. 2 "trade-mark" 4 "use", 45 (as am. by S.C. 1994, c. 47, s. 200), 56(1).