LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 18
Date of Decision: 2011-01-31
IN THE MATTER OF AN OPPOSITION by Kelemata S.p.A. to application No. 1,275,888 for the trade-mark GILLETTE VENUS in the name of The Gillette Company
[1] On October 17, 2005, The Gillette Company (the Applicant), filed an application for the trade-mark GILLETTE VENUS (the Mark) based upon proposed use of the Mark in Canada. The statement of wares currently reads:
Depilatories; body washes and soaps for personal use; face, hand and body lotions namely, creams, moisturizers and gels; sunless tanners, namely, creams, gels, lotions, oils and foams; pre and after shaving preparations, namely shaving foams, oils, gels and lotions.
[2] The application was advertised for opposition purposes in the Trade-marks Journal of September 20, 2006.
[3] On November 23, 2006, Kelemata S.p.A. (the Opponent) filed a statement of opposition against the application. The grounds of opposition are as follows:
1. Contrary to Sections 38(2)(a) and 30(e) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), the Applicant never intended, itself, or through a licensee, or by itself and through a licensee, to use the trade-mark in Canada in association with all of the wares and/or services covered by the trade-mark application. Specifically, the Applicant was aware of the terms of a Settlement Agreement between the parties first executed 21 January, 2002 which preclude it from adopting, using and applying to register any trade-mark in Canada incorporating the word “VENUS” for certain of the goods which are listed in the application.
2. Contrary to Sections 38(2)(a) and 30(i) of the Act, at the date of filing of the application, the Applicant could not properly have been satisfied that it was entitled to use the trade-mark in Canada in association with the wares or services described in the application. Specifically, the Applicant was aware of the terms of the Settlement Agreement between the parties first executed 21 January, 2002 which preclude it from adopting, using and applying to register any trade-mark in Canada incorporating the word “VENUS” for certain of the goods which are listed in the application.
3. The Applicant is not the person entitled to registration of the proposed trade-mark in view of Sections 38(2)(c), 16(3)(a) and 16(5) of the Act because, at the date of filing of the application, the proposed trade-mark was confusing with the trade-mark VENUS & Design (shown below), which the Opponent had previously used or made known in Canada in association with goods similar to those intended to be sold by the Applicant and which was not abandoned at the date of advertisement of the Applicant’s application.
4. The Applicant is not the person entitled to registration of the proposed trade-mark in view of Sections 38(2)(c), 16(3)(b) and 16(4) of the Act because, at the date of filing of the application, the proposed trade-mark was confusing with the trade-mark VENUS & Design which is the subject of previously filed application Serial No. 1,191,804 which was pending at the date of advertisement of the Applicant’s application.
5. The trade-mark applied for is not distinctive, having regard to the provisions of Sections 38(2)(d) and 2 of the Act, because it is not capable of distinguishing the Applicant’s wares or services from the wares or services of others, particularly the wares sold by the Opponent under the trade-mark VENUS & Design, nor is it adapted to so distinguish them.
[4] The Applicant filed and served a counter statement, in which it denied the Opponent’s allegations.
[5] The Opponent elected not to file any evidence. The Applicant’s evidence consists of the affidavits of Lynda Palmer and Thomas Louderback. Neither affiant was cross-examined.
[6] Only the Applicant filed a written argument. An oral hearing was not conducted.
Onus and Material Dates
[7] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. There is however an initial burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Ltd v. Molson Companies Ltd. (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298; Dion Neckwear Ltd. v. Christian Dior, S.A. et al. (2002), 20 C.P.R. (4th) 155 (F.C.A.)].
[8] The material dates that apply to the grounds of opposition are as follows:
• s. 38(2)(a)/s. 30 - the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.) at 475];
• s. 38(2)(c)/s. 16(3) - the filing date of the application [see s. 16(3)];
• non-distinctiveness - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Section 16(3)(b) Ground of Opposition
[9] With respect to the s. 16(3)(b) ground of opposition, the Opponent did not evidence its application No. 1,191,804. However, I have exercised my discretion and checked the Trade-marks Office records for that application [see Royal Appliance Mfg. Co. v. Iona Appliances Inc. (1990), 32 C.P.R.(3d) 525 at 529 (T.M.O.B.)]. I confirm that application No. 1,191,804 was filed by the Opponent on September 24, 2003, and was still pending on September 20, 2006, as is required by s. 16(4) of the Act.
[10] I note that this application was ultimately abandoned on July 26, 2010. However, such factor is irrelevant as far as the s. 16(3)(b) ground of opposition is concerned. In this regard, the Act, by setting the material date for entitlement as the date of filing of the applicant's application, appears to preclude consideration of whether such third party applications ultimately succeed in proceeding to registration [see Con-Agra, Inc. v. McCain Foods Ltd. (2001), 14 C.P.R. (4th) 288 (F.C.T.D.)]. In any case, pursuant to s. 16(4), it is relevant whether or not such application was pending at the date of advertisement of the Applicant's application and the application was pending at that date.
test for confusion
[11] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class. In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known; b) the length of time each has been in use; c) the nature of the wares, services or business; d) the nature of the trade; and e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight.
[12] The Supreme Court of Canada has discussed the appropriate process for assessing all the surrounding circumstances to be considered in determining whether two trade-marks are confusing in its decisions in Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 and Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée et al. (2006), 49 C.P.R. (4th) 401. It is with these general principles in mind that I shall now assess all of the surrounding circumstances.
s. 6(5)(a) - inherent distinctiveness of the trade-marks and the extent to which each trade-mark has become known
[13] I consider both the Mark and the Opponent’s mark to be inherently distinctive. With respect to the extent to which the trade-marks have become known, the Applicant submits that it has built a substantial reputation in its GILLETTE mark as a result of the long use and promotion of this mark in association with a variety of goods. The evidence shows that the GILLETTE mark has been used in Canada in association with razors and razor blades for over 100 years. The Applicant has also been using and promoting the VENUS trade-mark and various VENUS branded products since 2001.
[14] Neither the Applicant nor the Opponent, however, has shown that the marks at issue have become known at all in Canada as of the relevant date. This factor therefore does not favour either party.
s. 6(5)(b) - the length of time each trade-mark has been in use
[15] While the Opponent’s application is based on use in Canada since September 16, 2003, the Opponent has filed no evidence to support such claim. This factor therefore does not favor either party.
s. 6(5)(c) and (d) - the nature of the wares, services or business; the nature of the trade
[16] When considering the wares, services and trades of the parties, it is the statement of wares in the parties' trade-mark applications that govern in respect of the issue of confusion [Henkel Kommanditgesellschaft auf Aktien v. Super Dragon Import Export Inc. (1986), 12 C.P.R. (3d) 110 (F.C.A.); Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.); Miss Universe Inc. v. Bohna (1994), 58 C.P.R. (3d) 381 (F.C.A.)].
[17] Many of the Applicant’s wares are either identical to or overlap with the Opponent’s wares. In this regard, the Opponent’s application No. 1,191,804 was applied for with respect to the following wares: Face soaps, soaps for personal use, perfumes, essential oils for personal use; cosmetics, namely mascara, foundation make up, lipsticks, eyeliner, face packs, eye shadow; body creams, body milks and body lotions; face creams, face milks and face lotions, hair lotions and dentifrices. The parties’ channels of trade would therefore have presumably overlapped.
s. 6(5)(e) - the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[18] The most crucial or dominant factor in determining the issue of confusion is the degree of resemblance between the trade-marks (see Beverley Bedding & Upholstery Co. v. Regal Bedding & Upholstering Ltd. (1980), 47 C.P.R. (2d) 145(F.C.T.D.) at 149. It is also a well-accepted principle that the first portion of a trade-mark is the most relevant for the purposes of distinction [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.)].
[19] In the present case, the marks share some resemblance in appearance and sound because they both share the component VENUS. This component, however, is the second portion of the Mark and therefore is not as relevant as the first portion of its mark which is the word GILLETTE. The ideas suggested by the marks are also different in that the Opponent’s mark suggests the planet Venus while the Mark suggests that Venus is a product belonging to Gillette.
further surrounding circumstances
family of marks
[20] As a surrounding circumstance with respect to the issue of confusion, the Applicant has relied upon, inter alia, the adoption and use of an alleged family of GILLETTE trade-marks. The Applicant submits that since it has established the existence of a family of GILLETTE marks for similar wares, it follows that consumers would be more likely to assume that a new mark with the same first word for similar wares belongs to the Applicant as opposed to the Opponent.
[21] It is true that when trade-marks that have a common component or characteristic are all registered in the name of one owner, this gives rise to the presumption that these marks form a family of marks used by the one owner [see McDonald's Corp. v. Alberto-Culver Co. (1995), 61 C.P.R. (3d) 382 (T.M.O.B.); McDonald's Corp. v. Yogi Yogurt Ltd. (1982), 66 C.P.R. (2d) 101 (F.C.T.D.)]. In the present case, I am satisfied from the evidence furnished that the Applicant does have a family of GILLETTE marks, and has used and advertised such marks extensively in Canada. Thus the benefit bestowed by the family of marks doctrine is available to the Applicant.
state of the register evidence
[22] As an additional surrounding circumstance, the Applicant has relied on the state of the register evidence in the Palmer affidavit. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace [see Ports International Ltd. v. Dunlop Ltd. (1992), 41 C.P.R.(3d) 432 and Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R.(3d) 205 (F.C.T.D.)]. Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R.(3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
[23] Ms. Palmer conducted a search based on the word VENUS and found eight references. Further examination of these references, however, reveals that there are only six third party registrations for marks consisting of or containing the word VENUS that are related to the wares at issue in the present case. Given such small numbers, I am not able to infer that any of them are in active use such that consumers would be used to seeing such marks in the field of personal care products such as those of the parties at issue.
conclusion re likelihood of confusion
[24] In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. As stated at paragraph 33 of the Veuve Clicquot Ponsardin decision (supra), “Section 6(2) recognizes that the ordinary somewhat-hurried consumer may be misled into drawing the mistaken inference ‘whether or not the wares or services are of the same general class’, but it is still a question for the court as to whether in all the circumstances such consumers are likely to do so in a particular case.” Having considered all of the surrounding circumstances, I find that the Applicant has satisfied its onus to show that, on a balance of probabilities, confusion between the marks in the present case is unlikely. In view of my conclusions above, and keeping in mind in particular the reputation associated with the Applicant’s family of GILLETTE marks, the subsequent abandonment by the Opponent of its VENUS & Design application, and even bearing in mind that the wares and channels of trade would have been the same, I am satisfied that the degree of resemblance between these marks is not such that there would have been a reasonable likelihood of confusion between them at the material date. As a result, I have rejected the s. 16(3)(b) ground of opposition.
Remaining Grounds of Opposition
[25] With respect to the s. 30 grounds of opposition, the Opponent has not presented any evidence or argument in support of these grounds. As a result, the Opponent has failed to meet its evidential burden in relation to each ground. These grounds are accordingly dismissed.
[26] Considering next the s. 16(3)(a) ground, there is a burden on the Opponent to show that it used its trade-mark prior to the Applicant’s filing date, as well as to show that it had not abandoned its trade-mark as of the date of advertisement of the present application. In the present case, the Opponent has not adduced any evidence relating to its use of its trade-mark and has therefore failed to meet the burden on it under s. 16(5) and s. 17(1) of the Act. I have therefore dismissed this ground of opposition.
[27] With respect to the final ground, there is an evidential burden on the Opponent to establish the facts being relied upon by it in support of the alleged non-distinctiveness of the Mark. As no evidence has been furnished by the Opponent in support of this ground, the Opponent has not met the evidential burden on it. Consequently, this ground of opposition is also unsuccessful.
Disposition
[28] In view of the above, and pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
Cindy R. Folz
Member,
Trade-marks Opposition Board
Canadian Intellectual Property Office