2011 TMOB 199 (October 25, 2011)
Overview
The trademark YOUR BEST BUY IS AT THE BRICK was maintained in a section 45 cancellation proceeding for use in association with services that included the operation of a retail store and other retail services. This case is of particular importance as it establishes that unique forms of advertising, such as an advertisement placed on the side of a delivery vehicle that displays the trademark can, under some circumstances, constitute use of a mark in association with services.
Abstract
In a section 45 cancellation proceeding, the Registrar held that the trademark YOUR BEST BUY IS AT THE BRICK (the "mark") in association with services that included the operation of a retail store and other retail services associated with home furnishings and related goods, should be maintained. In maintaining the registration, the Registrar held that the mark was in use in accordance with section 4(2) of the Trademarks Act (the "Act") because the mark appeared in advertisements placed on delivery trucks, and the delivery trucks were used to deliver goods purchased in the registrant's retail store to Canadian customers.
Case summary
Facts. On November 23, 2009, the Registrar, at the request of BBY Solutions, Inc. (the "requesting party") issued a section 45 notice to The Brick Warehouse LP (the "registrant"), in respect of TMA595,783 for the trademark YOUR BEST BUY IS AT THE BRICK, registered for use in association with the "operation of a retail store selling home furnishings, furniture, mattresses and box springs, appliances, televisions, radios, audio and video equipment, consumer electronics, and computers; retail services associated with selling home furnishings, furniture, mattresses and box springs, appliances, televisions, radios, audio and video equipment, consumer electronics, and computers through retail stores, by telephone, by catalogue and over the internet" (the "services").
Section 45 of the Act reads as follows:
The Registrar may at any time and, at the written request made after three years from the date of the registration of a trademark by any person who pays the prescribed fee shall, 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 wares or services specified in the registration, whether the trademark was in use in Canada at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
Therefore, the registrant was required to show use of the mark at any time between November 23, 2006 and November 23, 2009, (the "relevant period") in association with the services, and if not, provide the date when the mark was last in use and the reason for the absence of such use.
As evidence of use, the registrant filed the affidavit of Mr. Robert Gloweski, the Vice President of Advertising with the registrant. Mr. Gloweski stated in the affidavit that the registrant (and the registrant's franchisees) operates retail stores in a number of locations across Canada, and these stores sell a number of goods, including home furnishings, furniture, mattresses/box springs, appliances, televisions, radios, audio and video equipment, consumer electronics and computers under the house trademark THE BRICK.
The affiant further noted that the registrant operates over two million square feet of distribution space with six distribution centres across Canada. Further, the registrant and franchisees have a fleet of trucks used to deliver goods to customers in Canada who purchase goods from the registrant's retail store or by Internet order. With respect to the mark at issue, the affiant stated that the mark had been used on the delivery trucks to advertise and promote the goods sold by the registrant. Attached to the affiant's affidavit as exhibits were photographs of the sides of a delivery truck used by the registrant during the relevant period. The photographs showed that the mark was displayed on both sides of the truck under the house trademark THE BRICK, and the registrant's website address was also provided in the advertisements.
Both parties filed written arguments. However, an oral hearing was not requested.
Analysis. In setting out the basic principles in section 45 proceedings, the Registrar noted that while it is well established that mere assertions of use are not sufficient to demonstrate use in the context of a section 45 proceeding, evidentiary overkill is not required (para 5).
In considering all of the facts, the Registrar held that the advertisements on the delivery trucks fulfilled the requirement of use under section 4(2) of the Act. In particular, the Registrar pointed to the following factors that were influential in the decision:
- the advertising had taken place since 2001;
- the photographs were taken during the relevant period and were examples of use;
- it could be inferred, based on the size of the distribution space, that the registrant does substantial retail business, and the delivery trucks would have been seen across Canada.
The Registrar further stated that contrary to the requesting party's assertions, the display on the trucks functions the same way that billboard advertising would, and therefore constitutes use under the Act. Also, whether the fleet of trucks is owned by the registrant or its franchisees was held to be irrelevant.
As a result, the registration was maintained.
Conclusion
This decision emphasizes the Registrar's willingness to consider unique forms of advertising as constituting use in association with the services. In particular, when a trademark is displayed in an advertisement that appears on vehicles, and it is established that the vehicles have been seen across Canada, under at least some circumstances, the advertising constitutes use of the mark in association with services.
Heather E. Robertson, Toronto
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