IN THE MATTER OF AN OPPOSITION by David Haggarty and Bob Gallo c.o.b. in partnership as LTM Productions to application No. 657,384 for the trade-mark KID SAFE & Design filed by National Child Safety Council
On May 10, 1990, the applicant, National Child Safety Council, filed an application for registration of the trade-mark KID SAFE & Design, a representation of which is set out below, for use in association with:
comprehensive educational books, workbooks and printed programs designed for educating children as to: simple medical procedures; precautionary measures to minimize dangers of kidnapping and molestation; procedures to follow in the event of an emergency; child safety; accident prevention; fire prevention and fire safety; drug abuse.
The application was based on proposed use of the trade-mark in Canada and also upon a prior registration obtained by the applicant’s predecessor-in-title in 1987 in the United States of America. While the applicant did not specifically claim that it has used its trade-mark either in the United States of America or in any other country, the applicant amended its application at the examination stage to include in its Section 16(2) basis for registration its claim that it has used the trade-mark in Canada. It appears to me that a Section 16(2) basis for registration claiming use of the trade-mark KID SAFE & Design in Canada may not be consistent with the applicant’s claim that, as of the filing date of its application, the applicant intended to use the trade-mark in Canada for the same wares. In any event, the opponent has not raised a Section 30 ground of opposition in this proceeding and I need not therefore consider this issue further. Also, the applicant’s amended application included a disclaimer to the right to the exclusive use of the word KID apart from the trade-mark as a whole.
The trade-mark KID SAFE & Design was advertised for opposition purposes in the Trade-marks Journal of September 25, 1991 and the opponent, David Haggarty and Bob Gallo c.o.b. in partnership as LTM Productions, filed a statement of opposition on April 27, 1992, a copy of which was forwarded to the applicant on May 28, 1992. The opponent raised three grounds of opposition. First of all, the opponent alleges that the applicant is not the person entitled to registration pursuant to Section 16(3)(a) of the Trade-marks Act because the applicant’s mark was, at the date of filing the application, confusing with the opponent’s trade-mark KEEP KIDS SAFE previously used and made known in Canada in association with a broad range of wares and services. The second ground is based on Section 16(3)(b) of the Act and alleges that the applicant is not the person entitled to registration because, at the time of filing the application, the mark was confusing with the opponent’s previously filed trade-mark application for KEEP KIDS SAFE, Serial No. 615,732. The third ground of opposition is that the applicant’s mark is not distinctive because it is confusing with the opponent’s trade-mark.
The applicant filed a counterstatement denying the allegations set forth in the statement of opposition. The opponent submitted a statement indicating that it would not be filing any evidence while the applicant filed as its evidence the affidavits of Fay Cosgrove, a law clerk for the agents of the applicant, which was filed to introduce state of the register evidence, and Barbara Ghannan, the Director of Research and Development with the applicant, who indicated that she had no knowledge of any confusion ever having occurred between the applicant’s mark and any other mark comprising the word “kid” or “child” in Canada or the United States. The applicant was the only party to file a written argument and neither party requested an oral hearing.
With regard to the first ground of opposition, there is an initial evidentiary burden on the opponent to prove that its mark had been previously used or made known in Canada as of the date the applicant filed the application. The opponent must also prove that the mark KEEP KIDS SAFE had not been abandoned as at the date the applicant’s mark was advertised, pursuant to Sections 16(5) and 17(1) of the Trade-marks Act. Once the opponent has met this burden, the applicant must establish that there would be no reasonable likelihood of confusion between the trade-marks at issue. However, as the opponent did not file any evidence in this case, this first ground of opposition must fail as the opponent has not met the aforesaid evidentiary burden upon it.
The opponent also has an evidential burden to put forth sufficient evidence to support its allegation that the applicant’s trade-mark is not distinctive. As the opponent has not presented any evidence of use or making known of its mark that would substantiate its claim that the applicant’s mark is not distinctive as of the date of filing the statement of opposition, the third ground of opposition based on non-distinctiveness must also fail.
The opposition will therefore be solely decided on the basis of the second ground of opposition based on Section 16(3)(b), namely, that the applicant is not the person entitled to registration of the trade-mark KID SAFE & Design because the mark was, at the date of filing the application, confusing with the trade-mark KEEP KIDS SAFE, an application for which had been previously filed in Canada. Having regard to the provisions of Section 16(4) of the Trade-marks Act, the opponent must also establish that its application was pending as of the date of advertisement of the present application [September 25, 1991]. The first issue to be determined is whether the opponent has met its evidential burden of proving the allegations of fact in support of this ground. While the opponent has filed no evidence in this matter, it has made reference to its application number in the statement of opposition. It is clear that in the case where an opponent is relying on the existence of a registered trade-mark but has filed no evidence of such, the Registrar has the discretion to check the register in order to confirm the existence of the registration [see Quaker Oats of Canada Ltd./La Compagnie Quaker Oats du Canada Ltée v. Menu Foods Ltd., 11 C.P.R. (3d) 410]. Likewise, the Registrar has the discretion to confirm the existence of the opponent’s application in order to consider the ground of opposition raised under Section 16(3)(b). In doing so, I noted that the opponent’s application for the trade-mark KEEP KIDS SAFE, application No. 615,732, was filed September 26, 1988, prior to the filing date of the present application, and further that the opponent’s application was still pending as of the date the present application was advertised for opposition purposes in the Trade-marks Journal. I would also note that Exhibit D to the Cosgrove affidavit confirms the existence of the opponent’s application.
In view of the above, the Registrar must consider whether the trade-marks at issue were confusing as of the applicant’s filing date and, in this regard, the applicant must meet the legal burden upon it of showing that there would be no reasonable likelihood of confusion between the trade-marks at issue. In applying the test for confusion set forth in Section 6(2) of the Trade-marks Act, consideration will be given to all the surrounding circumstances including those set out in Section 6(5) of the Act.
With regard to the inherent distinctiveness of the trade-marks at issue, the applicant’s mark is inherently distinctive given that it includes a unique design although the words KID SAFE, which comprise a relatively minor element of the mark, are highly suggestive of the fact that the applicant’s wares are directed at children’s safety and therefore add little inherent distinctiveness to the applicant’s trade-mark. The opponent’s mark is also inherently distinctive but much less so than the applicant’s in that it consists solely of the words “Keep Kids Safe” which are highly suggestive of the fact that the wares and services are intended to “keep kids safe” and the mark has no distinguishing design matter. This factor therefore clearly favours the applicant.
As neither party has filed any evidence of use or making known of the trade-marks at issue, I must assume that neither mark had become known in Canada as of the date the applicant’s application was filed. This also disposes of the second factor to be determined in Section 6, namely, the length of time the marks have been in use, as neither mark appears to have been used in Canada at the relevant date.
With regard to the nature of the wares, the applicant’s wares are stated to be educational books designed to help teach children about issues of safety. The statement of wares in application No. 615,732 includes a long list of unrelated items ranging from match book covers to bed linen, and are directed at children and adults. In reviewing the application, however, I note that there is no reference to books or workbooks although certain printed materials are included in the application. As a result, I find that the wares and services of the applicant and the opponent differ although certain of the wares covered in the opponent’s application such as diaries, calendars, memo pads, book marks and book covers are wares which might travel through the same channels of trade as the applicant’s wares.
With regard to the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them, the trade-marks bear relatively little similarity in appearance when considered in their entireties, bearing in mind that the design elements comprise a prominent part of the applicant’s mark. The trade-marks at issue bear some degree of similarity in sounding in that repeated use of the words KID SAFE in the applicant’s mark would be sounded in a similar manner to the opponent’s mark KEEP KIDS SAFE. While both trade-marks suggest the idea of children’s safety, I do not consider that any person would be entitled to a monopoly in respect of such an idea.
Apart from the above, I am also mindful of the fact that the opponent took no active part in this opposition subsequent to filing its statement of opposition. As a consequence, and bearing in mind the inherent weakness of the opponent’s trade-mark KEEP KIDS SAFE, I find that the applicant has discharged the legal burden upon it of proving that there would be no reasonable likelihood of confusion between the trade-marks at issue.
Having been delegated by the Registrar of Trade-marks pursuant to Section 63(3) of the Trade-marks Act, I reject the opponent’s opposition pursuant to Section 38(8) of the Act.
DATED AT HULL, QUEBEC THIS 19th DAY OF AUGUST, 1996
G.W. Partington,
Chairman,
Trade-marks Opposition Board.,