2012 TMOB 2 (January 13, 2012)
Overview
In a section 45 proceeding, Country Fresh Enterprises Inc., the registered owner of the COUNTRY FRESH & Design mark, submitted evidence of use of the COUNTRY FRESH & Design mark in the form of sample labels and packaging that it asserted were representative of those used during the preceding three-year period. The party requesting the section 45 proceeding challenged the registrant's evidence, asserting that it was unclear whether the sample labels and packaging were actually used in Canada during the relevant period because they did not comply with Canadian labelling legislation. The Hearing Officer rejected the requesting party's argument and upheld the registration. This decision is important as it confirms that compliance with statutes apart from the Trademarks Act is not a relevant consideration in section 45 proceedings.
Abstract
In response to receipt of a section 45 notice, Country Fresh Enterprises Inc. ("Country Fresh") submitted representative package labels and packaging that it asserted were used in Canada during the relevant period. Blake Cassels & Graydon (the "requesting party") challenged Country Fresh's evidence on the basis that none of the labels or product packages included a best-before date or production date, perhaps as required by Canadian labelling legislation, and therefore, the evidence did not support Country Fresh's assertion that the relevant products were sold during the relevant period. The Hearing Officer rejected this argument and in doing so, noted that "compliance with statutes other than the [Trademarks] Act is not a relevant consideration in proceedings under section 45 of the Act."
Case summary
Facts. The COUNTRY FRESH & Design mark (TMA546,011) shown below was registered for use in association with "Baked goods, namely: breads, rolls, buns, muffins, cookies, waffles, cakes, cereals, pizza shells and croissants; and bread crumbs, candies, nut butters, jams, salad dressings": 
On May 7, 2009, at the request of the requesting party, the Registrar of Trademarks forwarded a section 45 notice to Country Fresh with respect to the COUNTRY FRESH & Design mark.
Pursuant to section 45, Country Fresh was required to show whether the COUNTRY FRESH & Design mark had been used in Canada in association with each of the wares listed in the registration at any time during the three-year period preceding the date of the section 45 notice (the "Relevant Period"). To this end, Country Fresh filed the affidavit of Mr. Dhanoa, the President of the registrant. Mr. Dhanoa indicated that the registrant was a Canadian manufacturer that had been manufacturing baked goods, cereals and nut butters since 1994. The affiant also submitted samples of representative package labels and packaging used in the sale of cereal, nut butters, cookies and bread (the "products") that it asserted were used during the Relevant Period. Country Fresh also provided sample sales invoices. Importantly, Country Fresh's evidence included an explanation of the link between the products associated with the representative labels and packages, and the items listed in the sales invoices.
The requesting party submitted two primary arguments. First, the requesting party argued that it was unclear whether the package labels and packaging were used in Canada during the Relevant Period. Second, the requesting party submitted that none of the labels or packages included a date that one would expect to see displayed on such packaging, for example, a best-before date or production date, perhaps required by legislation. As such, the requesting party submitted, the evidence did not support Country Fresh's assertion that the products were sold during the Relevant Period.
Analysis. With respect to the first issue of whether the packaging and labels submitted by Country Fresh are representative of those used in Canada during the Relevant Period, the Hearing Officer was persuaded by the linkage between the package labels and packaging, and the sales invoices. Specifically, the Hearing Officer was persuaded that the sales invoices demonstrated sales of the products associated with the representative packaging in Canada during the Relevant Period.
The Hearing Officer dismissed the requesting party's second argument holding that: "compliance with statutes other than the [Trademarks] Act is not a relevant consideration in proceedings under s. 45 of the Act." The Hearing Officer relied upon the decision of the Federal Court of Canada in Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr (1988), 21 C.P.R. (3d) 483 (F.C.T.D.) ("Lewis Thomson v. Rogers, Bereskin & Parr"), an appeal of a decision by the Registrar of Trademarks, in which the Court held that it is not open to the Registrar of Trademarks or a court in a section 45 proceeding to pronounce on whether product labels, submitted by the owner of the challenged trademark as evidence of use of the trademark, complied with food labelling laws as such a consideration is irrelevant to the question of use of the trademark under the Trademarks Act. The Hearing Officer accepted Country Fresh's affiant's sworn statement that the package labels and packaging are representative of those used during the Relevant Period, in the absence of evidence to the contrary.
In the result, Country Fresh's registration was maintained for "breads, cookies, cereals and nut butters." The Hearing Officer found that Country Fresh's evidence was silent with respect to the use of the remaining wares during the Relevant Period, and these wares were therefore deleted from Country Fresh's registration.
At first blush, it seems obvious that the only consideration in a section 45 proceeding should be whether the registered owner has satisfied the requirements of the Trademarks Act and that whether it has complied with other laws should be irrelevant to the outcome of the proceeding. It is therefore interesting to consider why a party would even raise the issue. While not entirely clear, it appears that in both the present case and in Lewis and Thomson v. Rogers, Bereskin & Parr, the issue was raised in an attempt to cast doubt on the trademark owner's assertion that the proffered labels were representative of those used in Canada during the Relevant Period. More specifically, the argument seems to be that if the proffered labels are indeed representative of the labels used in Canada, one would expect that they would comply with Canadian labelling laws; to the extent that they do not, it suggests that the labels are not in fact representative of those used in Canada.
In rejecting the above argument on at least two occasions, the Federal Court of Canada (Trial Division) and the Trademarks Opposition Board have clearly indicated that a section 45 proceeding is not the proper forum for determining whether laws other than the Trademarks Act have been complied with.
Conclusion
This case confirms that in a section 45 proceeding, the Registrar of Trademarks is unlikely to be receptive to the argument that items submitted as evidence of use of the subject trademark do not comply with other laws and therefore the items do not demonstrate the required use.
Cheryl M. Ng, Toronto
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