IN THE MATTER OF AN OPPOSITION
by 3103-2964 Quebec Inc. to application
no. 1189237 for the trade-mark F21 filed
by Philhobar Design Canada Ltd.
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On September 16, 2003, Philhobar Design Canada Ltd. filed an application to register the
trade-mark F21, based on proposed use in Canada, in association with the following wares:
ladies', men's, girls', boys' and children's clothing, namely, t‑shirts, polo shirts, sweaters, shirts, blouses, pants, overalls, shorts, skirts, coats, jackets, vests, turtlenecks, undergarments, sleepwear, robes; blankets, pillows.
The Examination Section of the Trade-marks Office raised a number of objections to the application as initially filed, including the objection that the applied for mark is confusing with the registered trade-mark FOREVER 21 standing in the name of 3103-2964 Quebec Inc. The cited registered mark covers the wares women’s and girls’ tops, blouses, dresses, skirts and pants. The applicant responded to the Examination Section by
(i) searching the trade-marks register and noting that there were “a number of entities which own trade-marks on the Register for trade-marks registered for clothing items where the trade-mark contains the component ‘21’.” The applicant’s submissions cited nine such registrations. I note that of the nine cited registrations, two marks are comprised in part of the component “21ST,” one is comprised in part of the component “21E,” one is comprised in part of the component “T21,” and two are comprised in part of the word components “TWENTY-ONE,”
(ii) arguing that the applied for mark F21 and the cited mark FOREVER 21 differed “in sound, appearance and the idea conveyed.”
The subject mark was advertised for opposition purposes in the Trade-marks Journal issue dated June 30, 2004, and was opposed by 3103-2964 Quebec Inc. ( the owner of the cited mark FOREVER 21) on August 30, 2004. The Registrar forwarded a copy of the statement of opposition to the applicant on September 9, 2004, as required by Section 38(5) of the Trade-marks Act. The applicant responded by filing and serving a counter statement.
Statement of Opposition
Various grounds of opposition are pleaded in what appears to be “boilerplate” copy. Such pleadings are to be discouraged because, among other things, they distract from a party’s legitimate concerns. At the oral hearing, new counsel for the opponent advised that only three of the grounds were being pursued. I note that those grounds, summarized below, are the only grounds which have been supported by evidence.
(1) The applied for mark F21 is not registrable, pursuant to Section 12(1)(d) of the Trade-marks Act, because it is confusing with the opponent’s mark FOREVER 21, regn. no. 569326, used in association with clothing.
(2) The applicant is not entitled to register the applied for mark F21, pursuant to Section 16 of the Act, because at the date of filing the application, the mark F21 was confusing with the opponent’s mark FOREVER 21 which had previously been used or made known in Canada by the opponent.
(3) The applied for mark F21 is not adapted to distinguish the applicant’s wares from the wares of the opponent sold in association with the opponent’s mark FOREVER 21.
The opponent’s evidence consists of the affidavit of Freddy Twik, President of the opponent company; and a certified copy of the opponent’s trade-mark registration for its mark FOREVER 21. The applicant’s evidence consists of the affidavits of Herbert McPhail, trade-marks searcher; P. Clair Gorden, law clerk; and Cindy Lu, student at law. Only the applicant filed a written argument, however, only the opponent was represented at an oral hearing.
Opponent’s Evidence
Mr. Twik’s evidence may be summarized as follows. The opponent has been operating as a manufacturer and distributor of clothing for men, women and children since 1993. The opponent has been selling tops, blouses, dresses, skirts and pants under its trade-mark
FOREVER 21 since at least as early as 2001. The dollar value of sales of such clothing has ranged from about $344,000 to $1.56 million annually over the four year period 2001 - 2004. Sales for the first five months in 2005 amounted to about $486,000. The opponent’s wares are identified by a hang tag or sewn in label featuring the mark FOREVER 21.
Applicant’s Evidence
Mr. McPhail’s affidavit concerns the state of the trade-marks register. Copies of eighteen trade-mark registrations and eleven trade-mark applications are attached as exhibits to his affidavit. My inspection of the registrations and applications reveals that they generally cover the wares clothing and/or footwear. The eighteen registered marks stand in the names of 13 different owners, while the eleven applications stand in the names of 6 different owners. Seven of the registrations and six of the applications are comprised in whole or in part of the letter F and a number including, for example, SYNTECH F9, F355 CHALLENGE, F9, F-16 FIGHTING FALCON and 2F3FABRIC. The remaining registrations and applications are comprised in part of the number 21, for example, CENTURY 21, BOURGONUOVO 21, PRO-T21 and FOREVER 21, FOREVER XXI, FORLOVE21, respectively. The last three cited applications are owned by the entity Forever 21, Inc.
At the oral hearing, counsel for the opponent requested that I inspect the register of trade-marks to satisfy myself that several of the registrations and applications referred to by Mr. McPhail were no longer extant. I decline to do so. In opposition proceedings the Registrar will only exercise her discretion to inspect the register of trade-marks in very limited circumstances as discussed in Quaker Oats Co. of Canada v. Menu Foods Ltd. (1986), 11 C.P.R.(3d) 410 at 411 (TMOB) and Royal Appliance Mfg. Co. v. Iona Appliance Inc. (1990), 32 C.P.R.(3d) 525 at 529 (TMOB). Otherwise, it is the responsibility of the parties to submit evidence of the state of the register.
Ms. Gordon’s affidavit concerns a NUANS search for the corporation Forever XXI ULC which has been registered in several Canadian provinces. It appears that there is a connection between the Nova Scotia corporation and the above-mentioned entity Forever 21, Inc. However, the applicant has not explained how Ms. Gordon’s evidence supports the applicant’s case.
Ms. Lu’s affidavit testimony concerns a women’s retail apparel store that has been operating in Edmonton, Alberta under the trade-name and trade-mark FOREVER XXI since the year 2000.
Main Issue
The determinative issue in this proceeding is whether the applied for mark F21 is confusing with the opponent’s mark FOREVER 21. The material dates to assess the issue of confusion are (i) the date of my decision with respect to the ground of opposition alleging non‑registrability, (ii) the date of filing the application, that is, September 16, 2003, with respect to the ground of opposition alleging non‑entitlement, and (iii) the date of opposition, that is, August 30, 2004, with respect to the ground of opposition alleging non‑distinctiveness: for a review of case law concerning material dates in opposition proceedings see American Retired Persons v. Canadian Retired Persons (1998), 84 C.P.R.(3d) 198 at 206 - 209 (F.C.T.D.). In the instant case, nothing turns on whether the issue of confusion is assessed at a particular material date.
Legal Onus
The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2) of the Trade-marks Act, between the applied for mark F21and the opponent’s mark FOREVER 21. The presence of an onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd. (1990) 30 C.P.R.(3d) 293 at 297‑298 (F.C.T.D.). The test for confusion is one of first impression and imperfect recollection. Factors to be considered, in making an assessment as to whether two marks are confusing, are set out in Section 6(5) of the Trade-marks Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or the sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade‑marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.).
Discussion of Section 6(5) Factors
The opponent’s mark FOREVER 21 possesses a fairly low degree of inherent distinctiveness as it is comprised of a common word and a numerical value. Similarly, the applied for mark F21 possesses a low degree of inherent distinctiveness as it is comprised of a letter of the alphabet and a numerical value. The opponent’s mark FOREVER 21 would have acquired some distinctiveness at the earliest material date, and additional distinctiveness at the later material dates, through use of the mark beginning in the year 2001. There is no evidence that the applied for mark F21 acquired any distinctiveness at any material date. The parties’ wares are essentially the same or overlapping. In the absence of evidence to the contrary, I assume that the parties’ wares would travel through the same or overlapping channels of trade. The length of time that the marks in issue have been in use favours the opponent.
The parties’ marks resemble each other to some extent visually and in sounding as each mark is comprised in part of the number 21. However, numbers are not regarded as distinctive components of trade-marks (see GSW Ltd. v. Great West Steel Industries Ltd., (1975), 22 C.P.R.(2d) 154 (F.C.T.D.)) and it is the first portion or first syllable of a mark that is the more important for the purposes of distinction: see Conde Nast Publications Inc. v. Union Des Editions Modernes (1979) 26 C.P.R.(2d) 183 at 188 (F.C.T.D.). There is less resemblance between the marks in ideas suggested as the opponent’s mark FOREVER 21 suggests “everlasting youth” while the applied for mark F21 does not suggest any particular thought. The applicant seeks to rely on Ms. Gordon’s state of the register evidence to establish that the letter component F and the number component 21 are common elements of trade‑marks in the clothing industry, thereby further mitigating the significance of any resemblance between the marks in issue. Although there is some merit to this argument, I find Ms. Lu’s evidence of third party use of the mark FOREVER XXI of greater relevance in lessening the distinctiveness that can be attributed to the opponent’s mark.
Disposition
Having regard to all of the above, and keeping in mind that small differences can suffice to distinguish between marks of low distinctiveness (see GSW Ltd. v. Great West Steel Industries Ltd., above), I find that the applicant has met the onus on it to show, on a balance of probabilities, that there is no reasonable likelihood of confusion between the applied for mark
F21 and the opponent’s mark FOREVER 21. Accordingly, the opponent’s opposition is rejected.
This decision has been made pursuant to a delegation of authority under Section 63(3) of
the Trade-marks Act.
DATED AT VILLE DE GATINEAU, QUEBEC, THIS 15th DAY OF APRIL, 2009.
Myer Herzig,
Member, Trade‑marks Opposition Board