TAG HEUER mark removed from register

In proceedings under Section 45 of the Trademarks Act, the Trademarks Opposition Board has ordered that the trademark TAG HEUER (and design) be removed from the register (July 2 2008, only recently released and still unreported).
Swiss company Tag Heuer SA registered the TAG HEUER mark in Canada in 1998 (Registration TMA 505,469) in association with the following goods:

leather and imitations of leather, namely suitcases, valises, belts, wallets, purses, toilet bags, handbags, key chains, agendas, animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Tag Heuer did not have a retail presence in Canada, but had sold goods bearing its trademark in Canada by mail order from its fully-owned US subsidiaries.
Before the board, Tag Heuer provided an affidavit asserting that the mark had been used in association with the goods in Canada during the relevant period. Only minimal documentary evidence was provided in support of the affidavit, consisting of:
  • invoices showing that during the relevant period, articles bearing the mark were sold and shipped to Canada by US companies alleged to be wholly owned subsidiaries of Tag Heuer; and
  • samples of how the mark was displayed on the goods.
The board concluded that Tag Heuer had provided insufficient evidence in support of the affidavit. Specifically, the board was critical of the following shortcomings:
  • Aside from indicating that goods were sold and shipped to Canada through US subsidiaries, Tag Heuer had provided few details about its normal course of trade;
  • Tag Heuer had failed to explain who the subsidiaries were or what their relationship was to the registered owner and each other;
  • Tag Heuer had provided no information about the companies identified on sales documents or their role, if any, in shipping or selling goods to Canada; and
  • Tag Heuer had provided no clarification about how the articles in the invoices were related to those in the registration.
The board found the evidence, as a whole, insufficient to prove that the goods listed in the registration bore the TAG HEUER mark, or that they were actually sold in Canada during the relevant period by the registered owner. The registration was thus expunged.
The decision illustrates that although only minimal use needs to be shown in Section 45 proceedings, the evidence provided must clearly establish such use in association with each of the goods or services covered by registration.
Gordon J Zimmerman and Daniel Brinza, Borden Ladner Gervais LLP, Toronto

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