IN THE MATTER OF AN OPPOSITION by Zenith Electronics Corporation to application No. 691,926 for the mark ZENITH filed by ZENITH INTERNATIONAL S.A., une société anonyme
On October 18, 1991, the applicant, ZENITH INTERNATIONAL S.A., une société anonyme, filed an application to register the trade-mark ZENITH based on use in Canada by the applicant and its predecessors-in-title, FABRIQUE DES MONTRES ZENITH GEORGES FAVRE-JACOT ET CO., FABRIQUES DES MONTRES ZENITH S.A., ZENITH MOVADO LE LOCLE S.A., and ZENITH INTERNATIONAL S.A., since at least as early as 1905 in association with:
“Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres; articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes.”
[Translation: Components and component parts for watchmaking and clockmaking, namely: chronometers, chronographs, watches, watchworks, watch cases, watch faces and bands; jewellery, gold and silver jewellery and fine jewellery items, namely: earrings, necklaces, bracelets, rings, tie clips and cuff links.]
The present application was advertised for opposition purposes in the Trade-marks Journal of August 25, 1993 and the opponent, Zenith Electronics Corporation, filed a statement of opposition on April 25, 1994, a copy of which was forwarded to the applicant on June 21, 1994. The applicant served and filed a counter statement on July 6, 1994 in which it effectively denied the opponent’s grounds of opposition. The opponent submitted as its evidence the affidavit of David J. Crowley who was cross-examined on his affidavit, the transcript of the cross-examination and the responses to undertakings given during the cross-examination forming part of the opposition record. The applicant elected not file any evidence in support of its application. The opponent alone filed a written argument and both parties were represented at an oral hearing.
The grounds of opposition relied upon by the opponent are the following:
a) The present application does not comply with Section 30 of the Trade-marks Act:
I) since the applicant has not used the trade-mark in Canada as of the date set out and claimed in the application;
ii) since the applicant could not have been satisfied at the date of application that it had used the trade-mark in Canada and that it is, or was, entitled to use the trade-mark in Canada in association with the wares described therein, in view of the prior use by the opponent and its predecessors-in-title of its trade-marks:
Trade-mark Registration No.
ZENITH TMDA 9935
ZENITH & Design UCA 5532
ZENITH NFLD 2494
ZENITH 112,259
ZENITH 120,697
ZENITH 243,966
ZENITH 359,914
ZENITH & Design 385,868
iii) since the applicant could not have been satisfied at the date of application that it had used the trade-mark in Canada and that it is, or was, entitled to use the trade-mark in Canada in association with the wares described therein, in view of the 1978 Agreement between the applicant and the opponent.
b) The applied-for trade-mark is not registrable in view of Paragraph 12(1)(d) of the Trade-marks Act in that it was and is confusing with the prior registrations of the opponent identified above.
c) The applicant is not the person entitled to registration of the trade-mark ZENITH in that, under Paragraph 16(1)(a) of the Trade-marks Act, the applicant’s trade-mark was confusing as of the alleged date of first use with the opponent’s trade-mark ZENITH which had been previously used in Canada by the opponent and its predecessors-in-title.
d) The applicant is not the person entitled to registration of the trade-mark ZENITH in that, under Paragraph 16(1)(a) of the Trade-marks Act, the applicant’s trade-mark was confusing as of the alleged date of first use with the opponent’s trade-mark ZENITH which had been previously made known in Canada by the opponent and its predecessors-in-title.
e) The applicant is not the person entitled to registration of the trade-mark ZENITH in that, under Paragraph 16(1)(c) of the Trade-marks Act, the applicant’s trade-mark was confusing as of the alleged date of first use with the opponent’s trade-name ZENITH.
f) The applicant’s trade-mark is not distinctive or capable of becoming distinctive of, nor is it adapted so as to distinguish, the wares of the applicant from the wares of the opponent in association with its marks referred to above. By virtue of the long and extensive use of the trade-marks comprised of the word ZENITH, or a design incorporating the word ZENITH, and the long and extensive use of the trade-name ZENITH by the opponent and its predecessors-in-title at the date of the statement of opposition, the word ZENITH has become and is now famous in Canada as denoting wares and services sold and performed by the opponent and is, therefore, incapable of denoting the wares of the applicant.
The first three grounds of opposition are based on Subsections 30(b) and 30(i) of the Trade-marks Act. While the legal burden is upon the applicant to show that its application complies with Section 30 of the Trade-marks Act, there is an initial evidential burden on the opponent to establish the facts relied upon by it in support of its Section 30 grounds [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R.(3d) 293]. The material time for considering the circumstances respecting the issues of non-compliance with Section 30 of the Act is the filing date of the application [see Georgia-Pacific Corp. v. Scott Paper Ltd., 3 C.P.R.(3d) 469, at p. 475].
The first Section 30 ground is based on Subsection 30(b) of the Act, the opponent alleging that the applicant has not used its trade-mark in Canada since at least as early as 1905. While the legal burden is upon the applicant to show that its application complies with Subsection 30(b), there is, as noted above, an initial evidential burden on the opponent to establish the facts relied upon by it in support of this ground. In this regard, the evidential burden on the opponent respecting the issue of the applicant’s non-compliance with Subsection 30(b) of the Act is a light one [see Tune Masters v. Mr. P's Mastertune, 10 C.P.R.(3d) 84, at p. 89]. Furthermore, Subsection 30(b) requires that there be continuous use of the applied for trade-mark in the normal course of trade since the date claimed [see Labatt Brewing Company Limited v. Benson & Hedges (Canada) Limited and Molson Breweries, a Partnership, 67 C.P.R.(3d) 258, at p. 262 (F.C.T.D.)]. Finally, the opponent’s evidential burden can be met by reference to the applicant’s own evidence [see Labatt Brewing Company Limited v. Molson Breweries, a Partnership, 68 C.P.R.(3d) 216, at p. 230 (F.C.T.D.)].
In the present case, the opponent appears to be relying upon paragraphs 43 to 45 of the Crowley affidavit in support of this ground. However, paragraph 43 is based entirely on hearsay evidence, as confirmed by the responses to questions 268 to 273 appearing in the transcript of the Crowley cross-examination. Furthermore, the statements made by Mr. Crowley do not qualify as admissible hearsay because they do not satisfy the test of necessity in that no indication was given as to why Mr. Groves or Mr. Egli could not have given their own evidence. On the other hand, paragraph 44 of the Crowley affidavit and exhibit U to the affidavit establish that the opponent was the owner of the registered trade-mark ZENITH, registration No. TMDA 9935, covering “watches and parts of watches” from the date of registration of February 13, 1905 to the date the registration was expunged on May 20, 1988. Thus, during this time, the applicant’s alleged use of its trade-mark ZENITH as applied to its watches and component parts for watches in Canada would arguably have infringed the opponent’s then existing rights in its registration. Moreover, paragraph 45 and Exhibits V and W to the Crowley affidavit refer to the existence of a letter Agreement dated June 27, 1978 between Zenith Radio Corporation, the predecessor in name to the opponent, and Paul Castella and Michael John Pannett with respect to their purchase of assets from Zenith Time S.A. and Zenith Movado Time Corporation. In the Agreement, Messrs. Castella and Pannett, who were at the time officers of Zenith International S.A., agreed that they would not make use of the word “ZENITH” in the United States or Canada after the fourth anniversary of the asset purchase. I have concluded that this evidence is sufficient to meet the initial evidential burden on the opponent in relation to the Subsection 30(b) ground in that it casts doubt on the applicant’s claim that it has used its trade-mark ZENITH in Canada ‘continuously’ since 1905 in association with watches and component parts. As no evidence has been submitted by the applicant, I find that it has failed to meet its legal burden in relation to this ground as applied to the applicant’s “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres”. On the other hand, I do not consider that the existence of either the opponent’s previous registration or the Agreement referred to above is of relevance to the applicant’s claim that it has used its trade-mark ZENITH in Canada since 1905 in association with “articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes.” Thus, the Subsection 30(b) ground is successful, in part, as applied to: “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres” while the opponent has failed to meet its initial evidential burden in relation to this ground as applied to the remaining wares covered in the present application.
The opponent next alleged that the applicant could not have been satisfied at the date of application that it had used the trade-mark ZENITH in Canada and that it is, or was, entitled to use the trade-mark in Canada in association with the wares covered in the present application in view of the prior use by the opponent and its predecessors-in-title of its trade-marks:
Trade-mark Registration No.
ZENITH TMDA 9935
ZENITH & Design UCA 5532
ZENITH NFLD 2494
ZENITH 112,259
ZENITH 120,697
ZENITH 243,966
ZENITH 359,914
ZENITH & Design 385,868
However, even were the applicant aware of the opponent’s trade-marks prior to filing the present application, no evidence has been adduced to show that the applicant could not properly have been satisfied that it was entitled to use its trade-mark ZENITH in Canada on the basis inter alia that its trade-mark is not confusing with the opponent’s trade-marks. Thus, the success of this ground would be contingent upon a finding that the applicant’s trade-mark is confusing with one, or more, of the opponent’s trade-marks [see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191, at p. 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152, at p. 155]. I will therefore consider the remaining grounds of opposition which are based on allegations of confusion between the applicant’s trade-mark and the opponent’s marks and name.
The final Section 30 ground is based on Subsection 30(i) of the Act, the opponent alleging that the applicant could not have been satisfied at the date of application that it had used the trade-mark in Canada and that it is, or was, entitled to use the trade-mark in Canada in association with the wares described therein, in view of the 1978 Agreement between the applicant and the opponent. As the Subsection 30(b) ground is successful in relation to the applicant’s watches and component parts, I consider it unnecessary to consider this ground as applied to the applicant’s “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres”. Further, the allegations relied upon do not support a Subsection 30(i) ground as applied to the applicant’s “articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes.”
The remaining grounds of opposition are based on allegations of confusion between the applicant’s trade-mark ZENITH as applied to the wares covered in the present application and the opponent’s trade-marks ZENITH and ZENITH & Design as registered and previously used in Canada and its trade-name ZENITH as previously used in Canada. Accordingly, the determination of the issue of confusion will resolve all the remaining grounds in this proceeding. In assessing whether there would be a reasonable likelihood of confusion between the trade-marks and trade-name at issue, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the material date(s). With respect to the ground of opposition based on Paragraph 12(1)(d) of the Trade-marks Act, the material date is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks, 37 C.P.R. (3d) 413 (F.C.A.)]. Further, the material date for considering the non-distinctiveness issue is the date of opposition [April 25, 1994]. Finally, the material date in respect of the non-entitlement ground of opposition is the applicant's filing date in relation to the applicant’s watches and related components as the Subsection 30(b) ground is successful in relation to these wares while the material date in relation to the applicant’s “articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes” is the claimed date of first use which is considered for the purposes of the Section 16 grounds as being December 31, 1905.
As the opponent has failed to show any use or making known of its trade-marks in Canada prior to December 31, 1905 or any use of its trade-name ZENITH prior to this date, the opponent has failed to meet its burden under Subsections 16(5) and 17(1) of the Act in relation to the non-entitlement ground as applied to the applicant’s “articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes.” I have therefore dismissed this aspect of the Section 16 ground. On the other hand, the opponent has established that it has used its trade-marks ZENITH and ZENITH & Design and trade-name ZENITH in Canada prior to the applicant’s filing date and prior to the date of opposition in association with inter alia television receivers, video cassette recorders, clock radios, computers, speakers, remote controls and antennas. Further, the opponent’s evidence shows that it had not abandoned its trade-marks and trade-name as of the date of advertisement of the present application. Thus, the opponent has met its evidential burden in relation to the non-distinctiveness ground as applied to all the wares covered in the present application, as well as its burden under Subsections 16(5) and 17(1) of the Act in relation to the Section 16 grounds as applied to the applicant’s “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres”.
As noted above, in considering whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must consider all the surrounding circumstances, including those specifically enumerated in Subsection 6(5) of the Trade-marks Act. In this regard, both the applicant’s trade-mark ZENITH and the opponent’s trade-marks ZENITH and ZENITH & Design and trade-name ZENITH are inherently distinctive as applied to the respective wares of the parties. Further, the applicant’s trade-mark has not become known to any extent in Canada while the opponent’s evidence establishes that its ZENITH trade-marks and trade-name are well known in Canada particularly in association with its television receivers, and to a lesser extent as applied to video cassette recorders, clock radios and computers. Furthermore, the length of time the trade-marks at issue have been shown to have been in use in Canada weighs in the opponent’s favour in that the latter claims that it has used its trade-mark ZENITH in Canada since 1958 with annual sales figures being provided from 1980 to 1994 whereas no evidence of use of its trade-mark ZENITH has been adduced by the applicant.
The applicant’s “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres” bear at least some similarity to the opponent’s wares in that the opponent’s television receivers, video cassette recorders and computers incorporate a timekeeping function and its video cassette recorders display the time. As well, the opponent’s ZENITH clock radios include a clock as part of the unit. Further, as noted in paragraph 46 of his affidavit and in the responses to questions 292-297 appearing in the transcript of the Crowley cross-examination, many watches such as those produced by Casio and Sony are considered as consumer electronic items in that they incorporate calculators, televisions and television remote control functions. On the other hand, I find there to be no similarity between the opponent’s wares and the applicant’s “articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes.” Furthermore, and except to the extent that the applicant’s statement of wares could cover electronic watches incorporating televisions, calculators or the like, I consider there to be relatively little potential for overlap between the channels of trade of the parties. Finally, the trade-marks and trade-name at issue are essentially identical in appearance, sounding and in the ideas suggested.
In Zenith Electronics Corp. v. Massana, 57 C.P.R. (3d) 444, a decision of the Opposition Board involving an opposition by the present opponent to registration of the trade-mark ZENITH as applied to “watches and parts of watches”, the Board refused the application on the basis that the applicant’s mark was not distinctive in view of the opponent’s use of the trade-mark ZENITH for a variety of wares and services. In his decision, Board Member Herzig commented as follows:
“By virtue of the long and extensive use of the trade‑marks comprised of the word ZENITH or a design incorporating the word ZENITH and long and extensive use of the trade‑name ZENITH by the Opponent and its predecessors in title at the date of the Statement of Opposition herein, the word ZENITH has become and is now famous in Canada as denoting the wares and services sold and performed by the Opponent and is, therefore, incapable of denoting the wares of the applicant.
The applicant filed, and served, a counterstatement effectively denying the opponent's allegations.
The opponent's evidence consists of the affidavit of William S. Hall, vice‑president and general manager of Zenith Radio Canada, Ltd., which company is a wholly owned subsidiary of the opponent, and was a registered user of the opponent's above‑mentioned marks prior to the abolition of the registered user regime. The applicant did not file any evidence in support of its application. Only the opponent filed a written argument and neither party requested an oral hearing. In the absence of any indication to the contrary, I have assumed that Zenith Radio Canada, Ltd. was licensed to use the opponent's marks in accordance with s. 50(1) of the Trade‑marks Act, R.S.C. 1985, c. T‑13.
The onus or legal burden is on the applicant to show that its mark is adapted to distinguish or actually distinguishes its wares from those of others throughout Canada: see Muffin Houses Inc. v. Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272, 4 C.I.P.R. 86. In this context, the presence of a legal burden means that if a determinate conclusion cannot be reached once all the evidence has been considered, then the issue of distinctiveness must be decided against the applicant. The material time for considering the circumstances respecting the issue of distinctiveness is as of the filing of the opposition, in this case May 24, 1990: see Andres Wines Ltd. v. E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at p. 130, [1976] 2 F.C. 3, 11 N.R. 560 (C.A.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at p. 424, 130 N.R. 223, 28 A.C.W.S. (3d) 103 (F.C.A.). Further, I am permitted to take into account evidence of all the surrounding circumstances including, for example, the parties' sales and advertising under their respective marks and trade names, up to the material date: see Castle & Cooke, Inc. v. Popsicle Industries Ltd. (1990), 30 C.P.R. (3d) 158 (T.M. Opp. Bd.).
I infer from Mr. Hall's evidence of sales of televisions, video cassette recorders, clock radios, and computers under the opponent's mark ZENITH, and from advertising expenditures for the above‑mentioned wares, from 1979 to the material date, that the opponent's mark ZENITH acquired a significant reputation in Canada by the material date May 24, 1990. There is no evidence that the applied‑for mark was known to any extent in Canada by the material date. The mark ZENITH possesses a fair degree of inherent distinctiveness when used in association with the parties' wares, however, the dictionary meaning of the word "zenith", i.e., ‑‑ "high point", is somewhat laudatory and therefore detracts from the inherent distinctiveness of the mark.
Mr. Hall's uncontradicted and unchallenged evidence is that in the period 1980 to 1990, "it has become increasingly the case that many watches are considered to be consumer electronic items". According to Mr. Hall, this perception has come about because the electronic technology which controls liquid crystal displays (LCDs) of watches are the same or similar to the electronic technology which controls the clock displays found in televisions, video cassette recorders, computers and clock radios. Of course, the description of wares in the subject application does not exclude watches having LCD components.
Considering that the applied‑for mark is identical to the opponent's mark, that the opponent's mark has acquired a significant reputation and is therefore entitled to a wide ambit of protection, and that the applicant's wares as specified in the application potentially include "electronic" watches, I find that, on the balance of probabilities, the average consumer would believe that the applicant's products are from the same source, or are made under license from, or with the approval of, the opponent. It follows that the applied‑for mark is not distinctive of the applicant's wares.
In view of the above, the applicant's application is refused.
I would add that the result in this proceeding would likely have been the same even if the applicant has restricted the wares to mechanical watches and mechanical replacement parts. In this regard, the reputation acquired by the opponent's mark ZENITH would have been sufficient to at least make me doubt whether the applied‑for mark ZENITH was distinctive of the applicant's wares. Thus, the applicant would not have met the legal onus on it to establish that its mark was distinctive of its wares, and the opposition would have been resolved in favour of the opponent.”
As in the previous opposition decision, the applicant in the present case has not adduced any evidence in support of its application and the statement of wares in the present application does not exclude watches having LCD components and therefore potentially includes electronic watches.
Having regard to the previous opposition decision and the fact that the opponent has adduced evidence in the present opposition showing that there has been significant use of its ZENITH and ZENITH & Design marks and ZENITH trade-name in Canada particularly in association with television receivers, I find that the applicant has failed to meet its legal burden of establishing that there would be no reasonable likelihood of confusion between its trade-mark ZENITH as applied to its “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres” and the opponent’s trade-marks and trade-name. On the other hand, I do not consider that there would be any reasonable likelihood of confusion between the applicant’s trade-mark ZENITH as applied to its “articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes” and the opponent’s marks and name. Thus, the applicant’s trade-mark ZENITH is not registrable and not distinctive, and the applicant is not the person entitled to registration of the trade-mark ZENITH as applied to “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres”.
In view of the above, and having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I refuse the present application pursuant to Subsection 38(8) of the Trade-marks Act as applied to “Pièces et parties de pièces d'horlogerie et de pendulerie, nommément: chronomètres, chronographes, montres, mouvements de montres, boîtes de montres, cadrans de montres et bracelets de montres” and otherwise reject the opponent's opposition to registration of the trade-mark ZENITH as applied to the following wares: “articles de bijouterie, d'orfèvrerie et de joaillerie, nommément: boucles d'oreilles, colliers, bracelets, bagues, pince‑cravates et boutons de manchettes”. In this regard, I would note the decision of the Federal Court, Trial Division in Produits Ménagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH, 10 C.P.R. (3d) 492 in respect of there being authority to render a split decision in a case such as the present.
DATED AT HULL, QUEBEC, THIS 18th DAY OF MAY, 1999.
G.W. Partington,
Chairperson,
Trade-marks Opposition Board