Section 45 Cancellation Proceeding Decision Considers Requirements for Retaining Registration in Respect of all Registered Goods in a Trademark Registration
In Pelton Crane Inc. and KaVo Dental Technologies, LLC, 2023 TMOB 123, a summary expungement proceeding under section 45 of the Trademarks Act, RSC 1985, c T-13 (the Act) the Trademarks Opposition Board directed the Registrar of Trademarks to partially expunge Registration No. TMA896,796 for the trademark PELTON & CRANE (the Mark), owned by KaVo Dental Technologies, LLC, an Illinois limited liability company doing business as Pelton & Crane (the Owner).
The decision offers examples of the following key considerations when compiling and assessing evidence of use in the context of section 45 cancellation proceedings:
1) Generally, use evidenced with respect to one specific good cannot serve to maintain multiple goods in a registration. When particular goods are distinguished in a registration, an Owner is obligated to furnish evidence with respect to each of the listed goods accordingly.
2) There is no requirement for a trademark to be used in association with a “stand-alone” product. Rather, use within the meaning of the Act may be established where a mark is used in association with a component of a complete product.
3) It is not for the Registrar to speculate as to the nature of the goods or the trade under consideration. It is the responsibility of the registered owner to show the connection between the goods registered and those included in the evidence.
The decision also considered whether the COVID-19 pandemic amounted to special circumstances excusing non-use of certain goods. In this case, the Board Member noted that the Owner did not provide any specific evidence to demonstrate that, if not for the pandemic, it would have used the Mark in association with the noted goods. While the Owner provided a statement regarding a belief that dental offices were closed during the pandemic, thereby reducing demand for replacement parts, this was not sufficient. The Board reiterated that it is not enough for an owner to refer to the pandemic generally without providing sufficient details regarding its impact on the owner's operations (consistent with The Wonderful Company LLC and Fresh Trading Limited, 2023 TMOB 8 at paras 36-37). In this case, the Owner also failed to provide a date of last use or any evidence demonstrating a serious intention to shortly resume use as is required to establish special circumstances excusing non-use.
At the request of Pelton Crane Inc. (the Requesting Party), the Registrar of Trademarks issued a notice to the Owner under Section 45 of the Trademarks Act requiring the Owner to show whether the Mark had been used in Canada in association with each of the goods specified in the registration at any time within the three-year period immediately preceding the date of the notice (the “relevant period”) and, if not, the date when it was last in use and the reason for the absence of such use since that date.
The Mark was registered for use in association with the following goods:
Dental operatory furniture and equipment, namely: - dental cabinetry; dental chairs; dental stools; dental delivery systems consisting of dental irrigators; apparatus for providing compressed air and water, namely, air and water regulators, air and water flow control valves, air logic control valves, and air and water distribution blocks and manifolds, all for use in the field of dentistry; holders and trays for dental instruments; furniture for holding dental instruments; autoclaves for dental use; lamps for medical use in the field of dentistry; electric lighting fixtures, namely, intra-oral dental light system for medical use in the field of dentistry; water filtration systems for use in the field of dentistry; back upholstery and seat upholstery for dental chairs and stools; and seals and gaskets for autoclaves.
In response to the Registrar’s notice, the Owner furnished an affidavit in the name of the Vice President of the Owner. The evidence established that the Owner manufactures dental care equipment and furniture including dental chairs, operatory lights, delivery systems, and dental cabinetry for use by dental professionals and that that such goods are primarily sold through a worldwide network of dental distributor partners, and directly to dental practitioners and universities.
The affiant asserted that, during the relevant period, the Mark was displayed directly on the Owner’s goods, their packaging, on sales invoices, or on other printed materials such as manuals which accompanied the goods at the time they were sold, and provided images of the Mark displayed on certain goods and on manuals, with a statement that the images were representative of how the Mark was displayed on such goods or manuals in Canada during the relevant period. And, in support of the Affiant’s statements, materials were submitted comprising sales figures and invoices, a statement that the goods referenced in the invoices are included in the provided sales figures, and a chart correlating the registered goods with the products on specific invoices.
The affiant indicated that where no invoice number was indicated in the chart, no sales of the corresponding goods were made during the relevant period. The majority of the registered goods correlated with invoiced products; however the goods “furniture for holding dental instruments” were listed in the chart as “Not sold separately”, and were not specifically discussed elsewhere in the affidavit, and while the Board Member noted that a number of the goods sold by the Owner could be considered “furniture for holding dental instruments”, they were not prepared to accept this use to support use of the goods “furniture for holding dental instruments” on the basis that, having distinguished particular goods in the registration, the Owner was obligated to furnish evidence with respect to each of the listed goods accordingly [per John Labatt Ltd v Rainier Brewing Co (1984), 80 CPR (2d) 228 (FCA)].
In consideration of the goods “holders and trays for dental instruments”, the affiant explained that the Owner offers two types of dental delivery systems - one for a doctor/dentist and one for a dentist’s assistant, and while a tray is almost always included in the former system, one might also be sold separately or included as part of the assistant’s system on request. The Board Member agreed that nothing in the Act requires a trademark to be used in association with a “stand-alone” product; use within the meaning of the Act may be established where a Mark is used in association with a component of a complete product [see Gowling, Strathy & Henderson v Tundra Knitwear Ltd (2001), 13 CPR (4th) 559 (TMOB) at para 7; Gowling WLG (Canada) LLP v Pelican International Inc, 2016 TMOB 144 at paras 16-18].
With respect to the goods “apparatus for providing compressed air and water, namely, air and water regulators […], air logic control valves, air and water distribution blocks and manifolds” and “electric lighting fixtures, namely, intra-oral dental light system for medical use in the field of dentistry”, the affiant stated that these are component parts of “dental delivery systems consisting of dental irrigators” and are sold as replacement parts as needed, but did not indicate which, if any, of the invoiced items would have contained such components. The Board Member therefore noted that, it is not for the Registrar to speculate as to the nature of the goods or the trade; it is the responsibility of the registered owner to show the connection between the goods registered and those included in the evidence [Fraser Milner Casgrain LLP v Fabric Life Ltd, 2014 TMOB 135 at para 13]. In the absence of such evidence, the Board Member was not satisfied that the Owner had established use of the Mark within the meaning of sections 4 and 45 of the Act in association with these goods.
In consideration of all of the above, the Hearing Officer directed the Registrar to amend the Registration to delete various goods from the Registration, limiting the goods as follows:
Dental operatory furniture and equipment, namely: - dental cabinetry; dental chairs; dental stools; dental delivery systems consisting of dental irrigators; apparatus for providing compressed air and water, namely, air and water flow control valves, all for use in the field of dentistry; holders and trays for dental instruments; lamps for medical use in the field of dentistry; back upholstery and seat upholstery for dental chairs and stools; and seals and gaskets for autoclaves.