In proceedings under Section 45 of the Canadian Trademark Act, the relevant Appeals Board has ordered that the trademark and design TAG HEUER be removed from the register. The decision, dated 2 July 2008, has only now been released.
The TAG HEUER mark was registered by the Swiss company Tag Heuer SA back in 1998 for 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.”
(Registration Number 505,469). However, Tag Heuer does not have a retail presence in Canada, although goods bearing their trademark were impoorted from the US subsidiaries by mail order.
Although Tag Heuer provided an affidavit asserting that the mark had been used in association with the goods in Canada during the relevant period, the documentary evidence provided consisting of invoices showing that 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 was considered insufficient.
The decision is similar to Israel’s recent CarGlass ruling in that although only minimal use needs to be shown it must clearly establish use of the goods or services covered by registration.
One interesting point though, is that Tag Heuer probably qualifies as a well known mark that would be protected even without registration.