Under the Canadian Trade-marks Act, one can request that the Registrar of Trade-marks commence Section 45 Proceedings to cancel a trademark registration for non-use. The Act states that the Registrar shall, upon the written request by any person (who pays the prescribed fee) after three years from the date of registration of a trademark, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trademark, requiring the registered owner to furnish within three months an affidavit or a statutory declaration, showing, with respect to each of the goods or services specified in the registration, that the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice.
Simply put, the Registrar of Trade-marks can require the registrant to show evidence of use of the registered mark in respect of the goods and services set out in the registration. One of the key points obviously is the goods and services set out in the registration. The mark may be in use, but perhaps not for the goods or services as registered.
This point was at the centre of a recent decision of the Canadian Trade-marks Office in Building Materials Investment Corporation (requesting party) and Stipsits Holdings Corp. (registered owner) for the registered trade-marks QUICKSTART and QUICKSTART HOMES.
The registrations were registered for use in association with goods, namely “construction of structurally complete homes, lacking interior finishing which can be customized by the buyer”. While the statement sounds like services, the registration issued for goods. The applicant intended the marks to be registered for goods (and not services). This was evident throughout the registration process, including when the marks were advertised.
The definition of use is set out in Section 4 of the Canadian Trade-marks Act. It differs depending upon whether the use is in association with goods or services. In respect of services, the mark is deemed to be used if it is used or displayed in the performance or advertising of those services. This is a lower burden to meet. However, in this case, the registration was not in respect of services.
Section 4 of the Canadian Trade-marks Act states that a trade-mark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred. As noted, this is a higher burden to meet. In respect of these registrations, the marks were registered for goods.
The registered owner did request that an amendment be made to the registrations “to change the designation of wares to services”. The Registrar held that it would not be appropriate to amend the registrations. Basically, the Registrar was of the view that it did not have the jurisdiction in the context of the Section 45 proceedings, to so amend the registration. The Registrar then went on to deal with the evidence filed by the registered owner in the context of goods (rather than services).
The registered owner provided advertising materials, in some instances displaying the marks generally and in some instances in association with particular features of homes. The Registrar stated that the real issue was whether the registered owner had provided evidence of transfers in the normal course of trade in association with the goods. The Registrar went on to hold that there was, in fact, no evidence of sales or transfer of the registered goods in Canada during the relevant period. There were no invoices, sales figures or attestations of any sales of houses in association with the marks. While advertisements were posted at the registered owner’s website, there was no evidence to demonstrate that the website was part of the purchasing process for the homes. At most, the advertising materials were distributed during the offering for sale process and not at the time of selling. There was no evidence of transfers of “structurally complete houses” in association with the marks.
Both registrations were struck from the Register. If an error is made in the identification of the goods as services or vice versa in the registration process, it can have dire consequences when cancellation proceedings are brought. Any use by the registrant of the marks may not be sufficient to maintain the registration for the goods or services as actually registered, as in this case.
