LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2016 TMOB 29
Date of Decision: 2016-02-22
IN THE MATTER OF AN OPPOSITION
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Spanner Limited |
Opponent |
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and |
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Persona Limited |
Applicant |
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1,590,531
for INSPIRING STYLE |
Application |
Introduction
[1] Spanner Limited (the Opponent) opposes registration of the trade-mark INSPIRING STYLE (the Mark). The application covers the following goods:
jewellery, namely beads, bracelets and charms (the Goods).
[2] The application was originally filed by JPL Limited (JPL) on August 17, 2012 on the basis of proposed use in Canada. On December 3, 2012 the Registrar recorded the assignment of this application from JPL to Persona Limited (the Applicant).
[3] The Opponent filed a statement of opposition on May 31, 2013 under section 38 of the Trade-marks Act, RSC 1985, c T-13 (the Act). The grounds of opposition pleaded are based on sections: 30(i) (requirements), 12(1)(d) (registrability), 16 (non-entitlement), and 2 (distinctiveness). Except for the ground based on section 30 of the Act, they all turn on the issue of likelihood of confusion with the Opponent’s trade-mark INSIPRED STYLE.
[4] For the reasons explained below, I refuse in part the application.
The Record
[5] The application was advertised in the Trade-marks Journal on May 8, 2013. The Opponent filed its statement of opposition on May 31, 2013. The Applicant filed and served a counter statement on June 19, 2013 denying each ground of opposition pleaded by the Opponent.
[6] The Opponent filed as evidence the affidavits of Donald Stubbs sworn on October 17, 2013 and of Jennifer Richardson sworn on October 18, 2013. They were both cross-examined and the transcripts are part of the record. During the hearing, I mentioned to the parties that the exhibits filed during the cross-examination of Mr. Stubbs had not been produced in the record. Since the parties agreed that such situation was an oversight, I authorized the filing of a copy of those exhibits and I received them after the hearing. They are now part of the record.
[7] Also, by letter dated March 19, 2014, prior to the cross-examination of Mr. Stubbs, the Opponent informed the Applicant that the sales figures enumerated in paragraph 6 of his affidavit were for the sale of apparel accessories only. The sales of apparel and apparel accessories in Canada for the years 2010 to 2012 inclusive were provided in the aforesaid letter. Consequently, the cross-examination was held with the understanding that such figures were an integral part of Mr. Stubbs’ affidavit. The letter was filed as an exhibit to his cross-examination.
[8] The Applicant filed as its evidence the affidavit of Neil Travis sworn on September 18, 2014. The Opponent filed as reply evidence a second affidavit of Jennifer Richardson sworn on October 21, 2014.
[9] Both parties filed written arguments and were represented at the hearing.
Preliminary remarks
[10] I wish to point out that in reaching my decision I have considered all the evidence in the file but I will only refer in my reasons for this decision to the relevant portions of the evidence.
[11] In its written argument and during the hearing, the Applicant raised objections concerning the admissibility of the Opponent’s evidence. I shall deal with those objections when summarizing the content of the affidavits filed by the Opponent.
The Opponent’s evidence
The Stubbs affidavit and his cross-examination
[12] Mr. Stubbs has been the Director of Finance and Human Resources for the Opponent since September 2010. He states that on December 8, 2010 the Opponent filed an application to register the trade-mark INSPIRED STYLE in association with the following goods:
Apparel namely, sweaters, shirts, t-shirts, tank-tops, skirts, pants, coats, shawls, scarves, capes, jackets, blazers, shorts, walking shorts, vests, coats, beach cover-ups, trousers, jeans, sweat pants, camisoles, dresses; apparel accessories, namely handbags, purses, hats, gloves, belts. (the Opponent’s Products).
[13] The application matured to registration on October 25, 2011 under registration number TMA810,116 and he filed a certified copy of that registration.
[14] Mr. Stubbs explains that the Opponent operates four retail outlets in the Province of Ontario, where it offers apparel and apparel accessories for sale to the public together with a collection of jewellery products, including bracelets. Those stores are operated under the trade-mark SPANNER as it appears from a photograph of the exterior sign of one of those stores filed as part of exhibit C. He states that the Opponent also distributes its goods for sale to the public via a network of at least 450 independent retailers located in all provinces of Canada.
[15] Mr. Stubbs provides the annual sales figures of the Opponent’s clothing and clothing accessories between January 1, 2010 and December 31, 2012 which vary from over 10 million dollars to 14 million dollars. The annual sales of clothing accessories only vary between $55,000 to close to $125,000. There is no indication if those sales figures relate to the trade-mark INSPIRED STYLE only or if they include sales of clothing and clothing accessories in association with other marks such as SPANNER.
[16] Mr. Stubbs admitted, in an answer to an undertaking, that it is impossible to break down the figures provided to determine the annual sales of jewellery alone. They are included in the sales figures for clothing accessories.
[17] Mr. Stubbs mentioned, during his cross-examination, that the majority of the Opponent’s sales are for clothing (over 90%) and jewellery might be 0.5% of the total sales (pages 52-54).
[18] Concerning the use of the trade-mark INSPIRED STYLE, Mr. Stubbs alleges that the Opponent has used it since January 1, 2010 in Canada in association with apparel and apparel accessories. He filed as exhibit B a hangtag bearing the Opponent’s trade-mark, which is attached to the Opponent’s goods and visible to purchasers at the point of sale since at least January 1, 2010.
[19] During his cross-examination Mr. Stubbs stated that he did not know if INSPIRED STYLE was used in association with jewellery as early as January 1, 2010 (page 29) and he admitted that the Opponent’s registration for the trade-mark INSPIRED STYLE does not include ‘jewellery’. Moreover, during his cross-examination and as an answer to an undertaking, Mr. Stubbs confirmed that the Opponent sells its jewellery only in its four retail stores and under the trade-mark SPANNER and not INSPIRED STYLE (see on page 13 of 51, as part of exhibit C to his affidavit, a hang tag bearing the trade-mark SPANNER attached to a bracelet). He also confirmed the Opponent does not sell charm bracelets or beads or charms (see pages 70-71 of the transcript and pages 13 to 19 of 51 of exhibit C).
[20] Mr. Stubbs filed as exhibit D screenshots of three websites used to promote the Opponent’s business in Canada located at <spanner.ca>, <spannerstyle.com> and <inspiredstyle.ca> on which he alleges the mark INSPIRED STYLE has been prominently displayed since at least 2009. During his cross-examination, the Applicant tried to introduce what has been described as pages from the website located at <spanner.ca>. Any questions on those documents were objected to by the Opponent on the basis that Mr. Stubbs did not have the opportunity to see these documents prior to his cross-examination and that if the Applicant wanted to introduce those documents into the record, it could have done so as part of its evidence.
[21] Since Mr. Stubbs filed some pages of the Opponent’s website, it could have been relevant for the Applicant to have him identified those pages. Therefore, I dismiss the objections. Consequently, from questions 318 and following, I draw the following negative inference:
• if jewellery was illustrated on the Opponent’s website, the pertinent extracts would have been produced by Mr. Stubbs.
[22] Mr. Stubbs filed as exhibit E a true copy of a gift card on which INSPIRED STYLE is displayed. He alleges that at least 800 of such gift cards have been sold to consumers by the Opponent in each of its retail outlets since January 1, 2010. He explains that they can only be redeemed by purchasing the Opponent’s apparel and apparel accessories at one of its four retail outlets.
[23] Mr. Stubbs filed as exhibit F a true copy of the Opponent’s letterhead on which INSPIRED STYLE is displayed at the top of the page. He states that it has been used by the Opponent for routine business correspondence since 2009.
[24] Exhibit G to Mr. Stubbs’ affidavit is a true copy of a brochure and the cover pages of several catalogues featuring the Opponent’s Products and on which the trade-mark INSPIRED STYLE is displayed. He states that each issue of the catalogues has been delivered to at least 400 independent retailers in Canada since at least 2010.
[25] Exhibit H to Mr. Stubbs’ affidavit is a true copy of woven clothing labels for the Opponent’s Products on which the trade-mark INSPIRED STYLE is displayed. He alleges that those labels were going to be attached to all of the Opponent’s Products sold in Canada starting in 2014.
[26] The Applicant takes the position that the content of Mr. Stubbs’ affidavit should not be considered as:
• he did not draft his affidavit; and
• for some of the answers to undertakings provided, he had to consult Mr. Lago, the CEO of the Opponent.
[27] Concerning the argument that Mr. Stubbs did not actually draft his affidavit, I do not consider such fact per se to be conclusive. The deponent must attest the veracity of the content of the affidavit. At the beginning of his affidavit it is written:
‘I, DONALD STUBBS, of the City of Kitchener in the Province of Ontario, MAKE OATH AND SAY AS FOLLOWS:’.
Moreover in paragraph 2 of his affidavit he states:
2. The facts recited in this affidavit come from my own personal knowledge, from my personal involvement in this matter, or upon information and belief. I declare that all the facts and allegations contained in this affidavit are true to the best of my own knowledge and that all statements made on information and belief are believed to be true.
[28] Mr. Stubbs stated during his cross-examination that a first draft of his affidavit was submitted to him and he edited it.
[29] In all, I conclude that the objection made by the Applicant based on the fact that Mr. Stubbs did not write the content of his affidavit himself is ill-founded. There is no requirement that the text of an affidavit be written by the deponent himself. Mr. Stubbs has met all the requirements namely:
• he read his affidavit before signing it;
• he was sworn in before signing his affidavit;
• he stated in his affidavit that the facts described therein were from his own personal knowledge, or upon information and belief, and were true.
[30] The Applicant’s second argument is that, on certain issues, Mr. Stubbs had to be informed by the CEO of the Opponent in order to provide answers to questions asked at the cross-examination.
[31] Firstly, Mr. Stubbs has been with the Opponent since September 2010 as stated in his affidavit. Therefore it is normal that he had to inform himself to obtain answers to questions relating to facts that occurred before September, 2010. As appears from a reading of the transcript, overall Mr. Stubbs had personal knowledge of the Opponent’s business. Generally, it seems to me that Mr. Stubbs was in a position, from his experience with the Opponent, to have or had knowledge of what he deposed. It is unfair to expect from Mr. Stubbs to have all the answers to all possible questions he could be asked during a cross-examination. Mr. Stubbs undertook to obtain the answers to certain questions to which he could not respond. He verified with another officer of the Opponent, identified the officer who provided him the answer, and furnished, as reply to undertakings, the answers to the questions asked.
[32] I therefore dismiss the objections made by the Applicant concerning the admissibility of the entire content or portions of Mr. Stubbs’ affidavit.
The Richardson affidavit and cross-examination
[33] Ms. Richardson is a legal assistant employed by the Opponent’s agent firm. She attended two businesses (independent retailers) to whom the Opponent has sold clothing products in the past. She was provided with the identity of those two stores by Mr. Stubbs. The stores are located in Waterdown and Ancaster, Ontario.
[34] Ms. Richardson filed pictures as exhibit A of the retail outlet she visited in Waterdown on October 17, 2013 which show displays of clothing for sale together with multiple displays of jewellery for sale. She also filed as exhibit B a true copy of a photograph taken at the same retail outlet on which she appears together with clothing products distributed by the Opponent in association with the mark INSPIRED STYLE. She confirms that the hang tag appearing on that picture is identical to the hang tag reproduced at exhibit B to the Stubbs affidavit.
[35] She filed as exhibit C a true copy of photographs taken on October 18, 2013 at the retail outlet located in Ancaster, on which appear displays of clothing for sale together with multiple displays of jewellery for sale. I note that there is no reference to the mark INSPIRED STYLE on those photographs.
[36] During her cross-examination she stated that:
• there were no signs in the stores visited with the mark INSPIRED STYLE;
• the mark INSPIRED STYLE was not on any jewellery she saw in the stores;
• there were no charms or charm bracelets in the stores she visited;
• on page 5 of 12 of her affidavit (part of exhibit A), the picture taken was requested by Ms. Ballagh and none of the bracelets bear a mark, let alone INSPIRED STYLE;
• on the picture at page 6 of 12 of her affidavit (part of exhibit A), there is no jewellery in the clothing section and the hang tag is hidden. However, there was clothing in the back with a table on which there was jewellery on display;
• on exhibit B to her affidavit, the reference to the hand tag should read INSPIRED STYLE instead of the Mark;
• on the picture appearing on page 10 of 12 of her affidavit (part of exhibit C), there are Opponent’s clothing as well as jewellery in the same area;
• on the picture at page 11 of 12 of her affidavit (part of exhibit C), there are jewellery branded names but not the mark INSPIRED STYLE;
• the second store she visited did not have any INSPIRED STYLE clothing.
[37] The Applicant objects to the content of Ms. Richardson’s affidavit on the basis that she is a staff employee of the Opponent’s agent firm and that the content of her affidavit is related to a contested issue, namely the parties’ channels of trade and the alleged relationship between clothing and jewellery.
[38] In Cross-Canada Auto Body Supply (Windsor) Ltd v Hyundai Auto Canada, 2006 FCA 133, 53 CPR (4th) 286 the Federal Court of Appeal mentioned that, in most cases, investigation evidence can be conducted by objective non-employees. The lawyer who relies on members or employees of the firm to provide such evidence runs a risk that lesser weight may be given to such evidence.
[39] Under the circumstances, and given that, as it will appear later in my decision, the channels of trade and the nature of the parties’ goods are key issues in this file, I am affording little weight to the content of Ms. Richardson’s affidavit executed on October 18, 2013.
The Applicant’s evidence
The Travis affidavit
[40] Mr. Travis is First Jewelry Limited’s President (First Jewelry). First Jewelry is a distributor of jewellery products for the Applicant in Canada. The products that First Jewelry distributes in Canada are charms, as well as bracelets, necklaces and earrings on which are placed charms. He alleges that the Applicant, through First Jewelry and other distributors, sell charms and bracelets, necklaces and earrings in Canada. These are the only products sold in association with the Mark in Canada.
[41] Mr. Travis alleges that First Jewelry creates all of the marketing and promotional materials to support the sale of the Applicant’s products in Canada both at wholesale and consumer levels. He further states that the Applicant’s advertising using the Mark commenced at least as early as October 2012, and First Jewelry created and used advertisement material in association with the Applicant’s Mark for the sale of the Goods in Canada. He filed the following material:
• exhibit A: The Persona Bead Inspired and Bead Dazzling floor banners featuring the Fall 2012 collection which were used in various consumer shows, media events and retail stores. Mr. Travis has not identified any of them;
• exhibit B: Eblast sent in November 2012 to Applicant’s Club members and Facebook followers. However we have no information on the number of members to the Applicant’s Club and the number of Facebook followers;
• exhibit C: Fall 2012 Applicant’s Brochure of which 133,000 copies were printed and distributed for consumers to take from counter-top stands in approximately 48 Hudson Bay department stores, 150 Peoples Jewellers stores, 38 Doucet/Latendresse stores and 150 plus independent jewellery stores across Canada;
• exhibit D: October 2012 Applicant’s coupon distributed by Peoples Jewellers to its customers;
• exhibit E: Order confirmation dated October 2012 for branded products in association with the Mark, sent by email when a consumer orders from the Applicant’s website. The website would also display the Mark on the landing page from October 2012 to today. I note that no copy of these webpages was provided;
• exhibit F: Billboard Fall 2012, posted in November 2012 to early 2013. 227 billboards were bought across the country. The Applicant received bonuses such that a total of 439 billboards were posted with the number of impressions estimated to be 636,152,000. No details have been furnished to explain what ‘impressions’ meant and how this number was calculated;
• exhibits G to N: Advertisements in various fashion magazines such as Fashion, Cosmopolitan, Harper Bazaar, InStyle and Flare, all published in November and December 2012.
[42] Mr. Travis alleges that some of the magazines filed are American Edition that had significant circulation in Canada.
[43] Mr. Travis states that at no time him or anyone else have been made aware of any instances of confusion with the Opponent’s trade-mark INSPIRED STYLE. He alleges that First Jewelry has a very specific market for charms and charms-related jewellery, and none of its customers has ever questioned whether, for example, their charms and charm jewellery products were related to the Opponent’s clothing or clothing accessories.
[44] He states that the Applicant’s Goods are sold in department stores such as Hudson’s Bay, chain jewellery stores such as Peoples Jewellers and Mappins Jewellers, single store and multi-store independent jewellers, and online retailers such as Personaworld.com and PeopleJewelers.com.
[45] Mr. Travis affirms that First Jewelry does not sell products bearing the Mark to clothing stores, nor are they sold in clothing stores. He adds that First Jewelry does not sell to the Opponent, nor does it sell to any of the stores that were mentioned in the cross-examination of Mr. Stubbs. Therefore, he concludes that an ordinary consumer would never see the Applicant’s Goods and the Opponent’s Products in the same stores.
[46] He alleges that it is extremely unlikely that a consumer would be seeing and be aware of both the Applicant’s Mark and the Opponent's INSPIRED STYLE trade-mark. I am giving very little weight to this statement as it is his personal opinion. Mr. Travis is not an independent witness.
[47] I wish to point out that I am not considering the content of paragraph 9 of his affidavit wherein he states he does not believe that any of the retailers and other trade purchasers he deals with, as a distributor of the Applicant’s Goods, are aware of the Opponent’s Products. This statement is hearsay evidence.
[48] I am also giving very little weight to the opinions contained in paragraphs 10, 11 and 19 of his affidavit. These opinions relate to the differences in the parties’ channels of trade, the nature of the parties’ goods and on the likelihood of confusion between the marks in issue. Again, Mr. Travis is not an independent witness. In any event, all these issues must be decided by the undersigned, applying the relevant legal principles to be described later.
[49] There are allegations made by Mr. Travis concerning the nature of the parties’ goods and their channels of trade. I will describe them when assessing those criteria later on.
The Opponent’s reply evidence
[50] On October 20, 2014, Ms. Richardson attended the Hudson’s Bay department store located in Hamilton, Ontario. Although she did not find jewellery sold under the Applicant’s Mark, she found multiple displays of jewellery for sale. She filed photographs taken inside the store which show those displays located directly across the aisle from clothing and other fashion accessories like belts, hats and shoes.
[51] On that day, she purchased, in Hamilton, the November issues of InStyle, Flare and Harper’s Bazaar magazines. She filed as exhibits B, C and D the cover page, index and select advertisements taken from of each of these magazines. These extracts show jewellery, clothing and other fashion accessories like belts, hats, and shoes advertised on the same page or on facing pages.
[52] At the hearing, the Applicant objected to the content of Ms. Richardson’s reply affidavit on the basis of the common law rule of evidence set out in Browne v Dunn (1893), 6 R 67, at 70-71 (HL). The Applicant referred me to some extracts of The Law of Evidence in Canada, Lexis, section 16.179.
[53] I read the relevant portions. It appears that the cited case relates to evidence in reply in situations where the other side was cross-examined before the introduction of the evidence in reply. I quote from the extract:
It appears that, if the cross-examiner intends to impeach the credibility of a witness by means of extrinsic evidence, he or she must give that witness notice of his intention.(…)
Accordingly, if counsel is considering the impeachment of the credibility of a witness by calling independent evidence, the witness must be confronted with this evidence in cross-examination while he or she is still in the witness box.
[54] Such rule does not apply to our case. Firstly, I do not consider the content of Ms. Richardson’s affidavit to contradict any of the statements made by Mr. Travis. The fact that the Applicant’s Goods were not offered for sale in the Bay store she visited does not mean that they are not sold in any of the Bay stores in Canada.
[55] However, I give little weight for the same reasons discussed before when I summarized the content of her affidavit filed as part of the Opponent’s evidence. She is an employee of the Opponent’s agent firm and the content of her affidavit in reply still relates to the nature of the parties’ goods and their channels of trade.
[56] In any event, I can take judicial notice of the fact that department stores such as the Bay and Sears, sell a wide range of goods from clothing, to jewellery, to electronic equipment, household furniture, etc.
The parties’ respective burden of proof
[57] The legal onus is on the Applicant to show that its application does not contravene the provisions of the Act as alleged in the statement of opposition. This means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the Applicant. However, there is also an evidential burden on the Opponent to prove the facts inherent to its pleadings. The presence of an evidential burden on the Opponent means that in order for a ground of opposition to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that ground of opposition exist [see John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD); Dion Neckwear Ltd v Christian Dior, SA et al 2002 FCA 291, 20 CPR (4th) 155; and Wrangler Apparel Corp v The Timberland Company, 2005 FC 722, 41 CPR (4th) 223].
Ground of opposition summarily dismissed
[58] The Opponent first ground of opposition can be summarized as follows:
The application does not comply with the requirements of section 30(i) of the Act in that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the Goods since at the time of filing of the application, the Applicant was or should have been aware of the Opponent’s Canadian trade-mark registration and common law mark for INSPIRED STYLE and the Opponent’s prior use of this registered mark in Canada.
[59] Section 30(i) of the Act only requires an applicant to declare itself satisfied that it is entitled to use the mark applied for in Canada in association with the goods and services described in the application. Such a statement is included in the present application. An opponent may rely on section 30(i) in specific cases such as where bad faith on the part of the applicant is alleged [see Sapodilla Co Ltd v Bristol Myers Co (1974), 15 CPR (2d) 152 (TMOB)].
[60] The mere fact that the Applicant may have been aware of the Opponent’s trade-mark did not, by itself, preclude it from stating that it believed that it was entitled to use the Mark [see Woot, Inc v WootRestaurants Inc 2012 TMOB 197]. In any event, the Opponent has not filed any evidence to support such ground of opposition.
[61] Given that the Opponent has not met its initial burden, this ground of opposition is dismissed.
Grounds of opposition based on likelihood of confusion
[62] The other grounds of opposition turn on the issue of likelihood of confusion. They must be assessed at different dates:
• ground of opposition based on section 12(1)(d) of the Act: the date of the Registrar’s decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 at 424 (FCA];
• ground of opposition based on section 16(3)(a) of the Act: the filing date of the application (August 17, 2012) [see section 16(3) of the Act];
• ground of opposition based on lack of distinctiveness of the Mark: the filing date of the statement of opposition (May 31, 2013) [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc 2004 FC 1185, 34 CPR (4th) 317].
[63] I wish to point out that, in its statement of opposition, the Opponent did refer to section 16(1) instead of section 16(3) of the Act, as the application is based on proposed use. I consider such mistake to be a clerical error as, in the wording of the ground of opposition, the Opponent refers to the filing date of the application as the relevant date.
Registrability of the Mark under section 12(1)(d) of the Act
[64] With respect to section 12(1)(d) ground of opposition, Mr. Stubbs attached to his affidavit a copy of certificate of registration TMA810,116 for the trade-mark INSPIRED STYLE covering the Opponent’s Products. I exercised the Registrar’s decision and checked the register. I confirm that registration is extant. Therefore, the Opponent has met its initial burden.
[65] The test for confusion is outlined in section 6(2) of the Act. Some of the surrounding circumstances to be taken into consideration when assessing the likelihood of confusion between two trade-marks are described in section 6(5) of the Act: the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks or trade-names have been in use; the nature of the goods, services, or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or any ideas suggested by them. Those criteria are not exhaustive and it is not necessary to give each one of them equal weight [see Mattel Inc v 3894207 Canada Inc, 2006 SCC 22 (CanLII), 49 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, 2006 SCC 623(CanLII), 49 CPR (4th) 401 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc et al, 2011 SCC 27 (CanLII), 92 CPR (4th) 361 (SCC)].
[66] The test under section 6(2) of the Act does not concern the confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the question posed by section 6(2) is whether a consumer, with an imperfect recollection of the Opponent’s INSPIRED STYLE mark, who sees the Applicant’s Goods in association with the Mark, would think they emanate from, or are sponsored by, or approved by the Opponent.
[67] Most of the arguments centered on the nature of the parties’ goods and their channels of trade. Still, I have to review each of the relevant criteria.
Inherent distinctiveness of the trade-marks and the extent to which they have become known
[68] The Opponent has not discussed the inherent distinctiveness of the marks in issue. As for the Applicant, it states in its written argument that neither marks have high inherent distinctiveness as both marks suggest that ‘the wearer of the parties’ goods is inspired to have style’. I do not find one mark having more inherent distinctiveness over the other mark.
[69] The degree of distinctiveness of a trade-mark may be enhanced through its use or promotion in Canada. The application is based on proposed use. Since the relevant date is the date of my decision, I can take into consideration the evidence of use of the Mark since the filing date of the application which has been summarized above under the heading ‘The Applicant’s evidence’. I am satisfied that the evidence provided by Mr. Travis establishes use of the Mark in Canada in association with the Goods since October 2012. However, we have very little information to determine the extent to which the Mark is known in Canada at this date.
[70] As for the Opponent’s trade-mark INSPIRED STYLE, from the evidence described above, I conclude that such mark is more known than the Mark, but in association with clothing and, to a much lesser extent, with clothing accessories. It has been used by the Opponent in association with such products since at least January 1, 2010. As for jewellery, there is no evidence of use of the Opponent’s trade-mark INSPIRED STYLE in association with jewellery. In any event the Opponent’s registration does not cover jewellery.
[71] Overall, this factor favours the Opponent.
The length of time the marks have been in use
[72] Given that the Opponent has used its mark since January 2010, and the Applicant has used the Mark since October 1, 2012, this factor favours the Opponent, but is not a determining factor in my decision.
The nature of the goods and their channels of trade
[73] I must compare the goods enumerated in the certificate of registration of the Opponent with the Goods [see Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA); Miss Universe Inc v Bohna (1994), 58 CPR (3d) 381 (FCA)]. Registration TMA810,116 covers articles of clothing and accessories, such as handbags, purses, hats, gloves and belts. There is no mention of jewellery or the like in the certificate of registration, nor has there been evidence of use of the trade-mark INSPIRED STYLE in association with jewellery.
[74] The question that remains is whether there is an overlap between the Opponent’s apparel accessories and the Applicant’s Goods.
[75] The Applicant argues that the application covers a certain type of jewellery, namely, charms, beads and bracelets for those charms and beads. I mentioned at the hearing that it was not the way I read the list of Goods. The application does not make reference specifically to bracelets for those beads and charms. If the Applicant wanted to restrict its application to only this type of bracelet, it could have done so in the description of the goods. Therefore, I interpret the application, as drafted, to cover all type of bracelets.
[76] The Applicant argues that the Applicant’s jewellery is more expensive than clothing accessories, including any bracelets that could be sold in association with the Opponent’s trade-mark INSPIRED STYLE. It further asserts that the un-contradicted evidence through the content of Mr. Travis’ affidavit shows that consumers, who purchase the Applicant’s Goods, are usually seeking them out specifically. In particular, once a charm and bracelet or other charm related jewellery item is purchased, the consumer or gift recipients of charms would normally be seeking out new charms to add to their collection, or someone would seek to purchase charms for another as a gift. Mr. Travis adds that a charm bracelet is not what one would consider a normal clothing accessory, like a piece of fashion jewellery, which is usually made of plated, non-precious metals with use of glass versus stones.
[77] Mr. Travis mentioned in his affidavit that the Applicant’s Goods are made of precious metal, namely sterling silver, as well as natural gemstones, Austrian crystals, Italian glass, hand-painted enamels and other similar materials in select models. As such, the Applicant argues that its products are higher quality than standard fashion jewellery.
[78] The Applicant contends that the kind of consumers who are shopping for charms or beads is different than the average consumer who would purchase clothing accessories in a hurried manner and without due consideration [see Park Avenue, op. cit. para 35].
[79] In Masterpiece, supra, the Honorable Rothstein J. dealt with this issue and concluded in the following terms:
[71] It is not relevant that, as the trial judge found, consumers are “unlikely to make choices based on first impressions” or that they “will generally take considerable time to inform themselves about the source of expensive goods and services” (para. 43). Both of these — subsequent research or consequent purchase — occur after the consumer encounters a mark in the marketplace.
[72] This distinction is important because even with this increased attentiveness, it may still be likely that a consumer shopping for expensive goods and services will be confused by the trade-marks they encounter. Careful research and deliberation may dispel any trade-mark confusion that may have arisen. However, that cannot mean that consumers of expensive goods, through their own caution and wariness, should lose the benefit of trade-mark protection. It is confusion when they encounter the trade-marks that is relevant. Careful research which may later remedy confusion does not mean that no confusion ever existed or that it will not continue to exist in the minds of consumers who did not carry out that research.
[73] Indeed, before source confusion is remedied, it may lead a consumer to seek out, consider or purchase the wares or services from a source they previously had no awareness of or interest in. Such diversion diminishes the value of the goodwill associated with the trade-mark and business the consumer initially thought he or she was encountering in seeing the trade-mark. Leading consumers astray in this way is one of the evils that trade-mark law seeks to remedy. Consumers of expensive wares or services and owners of the associated trade-marks are entitled to trade-mark guidance and protection as much as those acquiring and selling inexpensive wares or services.
[74] For these reasons, it was an error to discount the likelihood of confusion by considering what actions the consumer might take after encountering a mark in the marketplace. The trial judge should have instead limited his consideration to how a consumer, upon encountering the Alavida mark in the marketplace, with an imperfect recollection of the Masterpiece Inc. mark, would have reacted. Because consumers for expensive retirement residence accommodation may be expected to pay somewhat more attention when first encountering a trade-mark than consumers of less expensive wares or services, cost is not irrelevant. However, in circumstances where a strong resemblance suggests a likelihood of confusion, and the other s. 6(5) factors do not point strongly against a likelihood of confusion, then the cost is unlikely to lead to a different conclusion.
[80] Consequently, I am not prepared to give any weight to the argument raised by the Applicant based on the price difference in the parties’ respective goods.
[81] I already ruled that I am giving little weight to the content of Ms. Richardson’s affidavit, the content of which is used by the Opponent to argue that there is an overlap between jewellery and clothing accessories. I notice, however, that Mr. Stubbs was not able to provide sales figures for jewellery items only. They were incorporated in the Opponent’s sales figures of apparel accessories. It is a fact that supports a finding that bracelets in general can be considered as apparel accessories. I also remark that Mr. Travis admitted in paragraph 11 of his affidavit that jewellery can be considered as a clothing accessory. Finally, I note that bracelets can be viewed as apparel accessories as it appears from the photographs attached to Mr. Stubbs’ affidavit (see pages 17 to 19 of 51).
[82] I have not been convinced by the Applicant that, for bracelets in general, there would be no overlap between them and apparel accessories. Since, ultimately the burden is on the Applicant, to prove that the Mark is registrable I consider that there is a potential overlap between bracelets and apparel accessories [see Emillio Pucci International BV v El Corte Ingles SA, 2011 TMOB 32 (CanLII) at para 57]. However, given the nature of the Applicant’s beads and charms, I do not consider them to be clothing accessories.
[83] As for the parties’ channels of trade, Mr. Travis explains that the Goods are sold in chain jewellery stores, independent jewelers, online retailers and large department stores, such as the Bay. The Opponent sells its clothing in its 4 retail outlets as well as in 450 independent retail stores.
[84] The content of Mr. Stubbs’ affidavit does not provide a lot of information on the potential overlap in the parties’ channels of trade.
[85] Mr. Travis asserts that even if a consumer of clothing were to seek the Applicant’s charms or a charm bracelet, it would normally seek them out in a jewellery store, or jewellery department in a department store, and this would normally take place with the assistance of a sales associate as the Goods are usually kept under lock and key. It would not seek them out in a clothing store, or in the clothing department of a department store. Conversely, fashion accessories, such as that purportedly sold by the Opponent, are generally sold without the assistance of a sales associate to provide information about the products and are not kept under lock and key.
[86] The fact that the Applicant’s jewellery would be purchased with the assistance of a sale associate is not a relevant factor as discussed in Gurwith Products LLC v Groupe Marcelle Inc, 2014 TMOB 22.
[87] I have no evidence of actual overlap in the parties’ channels of trade. Even though, in theory, the Opponent’s clothing and clothing accessories bearing the mark INSPIRED STYLE could be sold in large department stores, such as The Bay for example, by their nature those stores can sell a wide variety of goods, including clothing and jewellery. This possibility is not sufficient to rule that there is a potential overlap between the Applicant’s beads and charms and the Opponent’s clothing and clothing accessories.
[88] As stated in Everex Systems Inc v Everdata Computer Inc (1992), 44 CPR (3d) 175 (FCTD), it is not necessary to prove that the goods are or have, in the past, been sold in the same places. Rather, I must determine if they could eventually be sold in the same places, provided that they are in the same general class. I already concluded that bracelets are part of apparel accessories.
[89] In all, I conclude that there is a difference in the nature of the parties’ goods and their channels of trade in so far as beads and charms are concerned. However, bracelets as listed in the application could be sold as a clothing accessory and there is no restriction mentioned in the application concerning the type of bracelets that could be sold in association with the Mark. Consequently, there could be an overlap in the parties’ goods and their channels of trade in so far as the Applicant’s bracelets and the Opponent’s apparel accessories are concerned.
Degree of resemblance
[90] The marks differ only in the tense of the verb ‘to inspire’.
[91] The Applicant argued, in its written argument and at the hearing, that the ideas suggested by the marks in issue are different. According to the Applicant, the Opponent’s trade-mark INSPIRED STYLE has a connotation of the good itself being stylish or having style. The Mark, on the other hand, would be more consumer-centric. It would suggest that the consumer has style and is involved in the process of creating style. Therefore, the Applicant asserts that an ordinary consumer would think of the marks in different ways.
[92] I agree with the Opponent that each mark suggests a positive fashion choice to consumers when used in association with the parties’ respective goods. I do not think, on a first impression basis, that the difference in the tense of the verb ‘to inspire’ is sufficient to create a distinction in the ideas suggested by the marks of the parties.
[93] In all, the marks do resemble one to another visually, phonetically and in the ideas suggested by them. This factor favours the Opponent.
No instances of actual confusion
[94] The Applicant points out that the evidence shows that there have been no instances of confusion. An opponent needs not to prove instances of actual confusion. The legal onus is on an applicant to demonstrate the absence of likelihood of confusion. In other words, the absence of evidence of confusion does not relieve the Applicant from its burden of proof. However, an adverse inference may be drawn from the lack of evidence of actual instances of confusion when there is evidence of extensive concurrent use of the marks [see Mattel Inc, supra at page 347]. The absence of instances of confusion could be explained by the absence of extensive sales of the Goods by the Applicant. Despite the fact that Mr. Travis has stated that the Applicant began selling the Goods in association with the Mark in January 2012, we have no information on the extent of those sales in Canada. Moreover the period during which both parties were selling their respective goods in association their marks is relatively short, namely from October 2012 to September 2014 (date of execution of the affidavit of Mr. Travis).
[95] Consequently, I do not consider such fact to be a relevant factor.
Marks in issue are secondary marks
[96] The Applicant argues that the evidence shows that the parties’ marks are used as secondary marks namely, the Applicant uses the Mark together with its primary mark PERSONA while the Opponent uses its mark together with its SPANNER trade-mark as appears from the exhibits in the record (see exhibit A to Travis affidavit and exhibit G to Stubbs affidavit).
[97] This fact could also explain the absence of actual cases of confusion as the primary marks could serve to distinguish the source of origin of the parties’ goods. However, the Opponent’s registration does not limit its use of the trade-mark INSPIRED STYLE as a secondary mark to its trade-mark SPANNER. The same holds true with the application for the registration of the Mark. Consequently, I do not consider such factor to be relevant in the assessment of the likelihood of confusion between the parties’ marks.
Conclusion
[98] From this analysis of all the relevant criteria, I conclude that the Applicant has discharged its burden to prove, on a balance of probabilities, that there is no likelihood of conclusion between the Mark and the Opponent’s trade-mark INSPIRED STYLE, in so far ‘beads’ and ‘charms’ are concerned.
[99] I reach this conclusion, despite the fact that the parties’ marks do resemble one another, based on my findings that the parties’ marks are not inherently distinctive strong marks; the difference in the nature of the goods of the respective parties and their channels of trade are sufficient to negate, on a balance of probabilities, any likelihood of confusion between the marks in so far as ‘beads’ and ‘charms’ are concerned.
[100] As for ‘bracelets’, they are not restricted for the purpose of incorporating beads and charms. They could very well be considered as a clothing accessory. I, therefore, conclude that the Applicant has not discharged its burden to prove, on a balance of probabilities, that there is no likelihood of confusion between the parties’ marks in issue when the Mark is used in association with ‘bracelets’ only.
[101] Consequently, I maintain in part this ground of opposition only with respect to bracelets.
Ground of opposition based on section 16(3) of the Act
[102] Under this ground of opposition the Opponent has the initial burden to prove that it has used its mark INSPIRED STYLE in Canada or that it had been known in Canada prior to the relevant date (August 17, 2012) and that it had not abandoned such use at the date of advertisement of the present application (May 8, 2013) [see section 16(5) of the Act].
[103] The Opponent, through the affidavit of Mr. Stubbs, has satisfied me that the Opponent’s mark INSPIRED STYLE has been used in Canada but only in association with clothing and clothing accessories. Mr. Stubbs has not been able to provide any sales record for jewellery in association with that mark. In fact, there is no evidence of use of the Opponent’s mark INSPIRED STYLE in association with jewellery.
[104] The Opponent has therefore met its initial burden with respect to apparel and apparel accessories. The outcome of an analysis of the likelihood of confusion between the Opponent’s trade-mark INSPIRED STYLE and the Mark would be the same as the one reached under the previous ground of opposition for the following reasons.
[105] The difference in the relevant dates between the previous ground of opposition and the present one affects only slightly the conclusions reached under each of the relevant factors analyzed above. Under the present ground of opposition, I cannot take into consideration the Applicant’s use of the Mark as it occurred after the relevant date. Moreover, I cannot consider the content of the affidavits of Ms. Richardson as they describe events that took place after the relevant date.
[106] Consequently, my analysis of the relevant factors under the previous ground of opposition would not be materially affected. My conclusion that there is no likelihood of confusion between the Mark and the Opponent’s trade-mark INSPIRED STYLE, in so far the beads and charms are concerned, still applies.
[107] I conclude that this ground of opposition is maintained in part only with respect to bracelets for the same reasons discussed under the previous ground of opposition. I also conclude that the Applicant has not discharged its burden to prove, on a balance of probabilities, that there is no likelihood of confusion between the parties’ marks when the Mark is used in association with ‘bracelets’ only.
[108] Therefore, I also maintain in part this ground of opposition, only with respect to bracelets.
Distinctiveness
[109] Under section 2 of the Act, the Opponent must show that its trade-mark INSPIRED STYLE had become sufficiently known in Canada on May 31, 2103 to negate any distinctiveness of the Mark [Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 at 58 (FCTD)].
[110] The evidence in Mr. Stubbs’ affidavit does establish that the Opponent’s trade-mark INSPIRED STYLE was known to some extent in Canada at the relevant date but only in so far clothing and clothing accessories are concerned, as concluded previously.
[111] The difference in the relevant dates with the previous ground of opposition would simply allow me to take into consideration some use of the Mark in Canada (up to May 31, 2013). However, it would not be sufficient to reach a different conclusion than the one reached under the previous ground.
[112] In all, for the same reasons outlined under the previous ground of opposition, I maintain in part this ground of opposition only with respect to bracelets.
Disposition
[113] Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse the application with respect to ‘bracelets’ and I reject the opposition with respect to the remainder goods, namely: jewellery, namely beads and charms, pursuant to section 38(8) of the Act [see Produits Ménagers Coronet Inc v Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 CPR (3d) 482 (FCTD) as authority for a split decision].
_____________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office
TRADE-MARKS OPPOSITION BOARD
CANADIAN INTELLECTUAL PROPERTY OFFICE
APPEARANCES AND AGENTS OF RECORD
___________________________________________________
HEARING DATE: 2016-01-28
APPEARANCES
Ms. Michele Ballagh FOR THE OPPONENT
Mr. Ken CLark FOR THE APPLICANT
Agents of Record
Ms. Michele Ballagh FOR THE OPPONENT
Aird & Berlis LLP FOR THE APPLICANT