LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 19
Date of Decision: 2011-02-03
IN THE MATTER OF AN OPPOSITION by Spin Master Ltd. to application No. 1,283,656 for the trade-mark MASTERMOVES in the name of Tri-X Medical Centers of Excellence Inc.
[1] On December 19, 2005, Tri-X Medical Centers of Excellence Inc. (the Applicant) filed an application to register the trade-mark MASTERMOVES (the Mark) based upon proposed use of the Mark in Canada. The statement of wares and services currently reads:
wares: abdominal belts, abdominal corsets, abdominal pads,
rubber action balls, ankle and wrist weights for exercise, athletic equipment
namely, exercise platforms, batons, mats and clothing, prerecorded video cassettes,
not containing software, on the subjects of diet, exercise, nutrition,
relaxation and recreation, prerecorded audio discs, not containing software, on
the subjects of diet, exercise, nutrition, relaxation and recreation, all
purpose athletic bags, all purpose sport bags, gym bags, wrist bands( exercise
and gymnastic) banners, book, manuals on subjects of exercise, diet, nutrition
and relaxation techniques, booklets on subjects of exercise, diet, nutrition
and relaxation techniques, exercise books on subjects of exercise, diet,
nutrition and relaxation techniques, books educational on subjects of exercise,
diet, nutrition and relaxation techniques, cardboard boxes, prerecorded compact
discs, not containing software, on the subjects of diet, exercise, nutrition,
relaxation and recreation, prerecorded digital audio tape, not containing
software, on the subjects of diet, exercise, nutrition, relaxation and
recreation, prerecorded digital audio discs, not containing software, on the
subjects of diet, exercise, nutrition, relaxation and recreation, point of
purchase displays, elbow guards for athletic use, elbow pads for athletic use,
exercise bars, exercise books, exercise doorway gym bars, exercise platforms
namely rotating or spinning or exercise disks, exercise platforms for lateral
movement in a twisting motion, exercise platforms - twisting, tilting or
spinning, exercise mats, food bars (ready-to-eat cereal derived), food
beverages (grain-based), food beverages (herbal), food beverages
(vegetable-based), food supplements namely meal replacement bars, beverages,
and vitamins, food supplements (dietary) namely meal replacement bars,
beverages, and vitamins, fruit drinks (non-alcoholic), gym shorts, gym suits,
gymnasium exercise mats, gymnastic training stools, platforms, disks, gymnastic
apparatus namely balance platforms or twisting disks or platforms, head bands,
herbal food beverages, non-medicinal, jump ropes, leg weights for athletic use,
leg weights for exercising, gymnasium exercise mats, meal replacement bars,
meal replacement drinks, meal replacement powders, exercising pulleys, jump
ropes, shorts, shorts (bermuda), shorts (boxer), shorts (gym), shorts (sweat),
sport shirts, spring bar, tension sets for use in exercising, spring bars for
exercising, support structures for dance and other exercises (portable), swivel
mechanisms (boxing bag), swivels (boxing), tables (exercise), tote bags,
training stools (gymnastic), trampolines (exercise), treadmills (exercise),
treadmills for running (exercising equipment, namely powered), weight cuffs
(exercise), weight lifting belts, weight lifting benches, weight lifting
gloves, weight lifting machines (exercising equipment namely,) weights
(exercise wrist), weights (exercise), weights (leg), weights for exercise (ankle
and wrist), wood, metal or plastic exercise batons.
services: arranging and conducting conferences concerning rehabilitation of
alcohol addicted patients, arranging and conducting educational conferences in
the field of exercise, diet, nutrition, wellness and lifestyle, arranging and
conducting trade show exhibitions in the field of exercise, diet, nutrition,
wellness and lifestyle, arranging and conducting award programs to promote
exercise, diet, nutrition, wellness and lifestyle, conducting employee
incentive awards programs namely to people, organizations, corporations to
demonstrate the benefits of excellence in the fields of exercise, diet,
nutrition, wellness and lifestyle awareness, conducting workshops and seminars
in personal exercise, diet, nutrition, wellness, lifestyle and awareness of the
need for personal exercise, diet, nutrition, wellness and lifestyle awareness,
arranging and conducting programs promoting public health and awareness, career
counseling, conducting employee incentive award programs to promote on the job
in the field of exercise, diet, nutrition, wellness, lifestyle, safety,
quality, and productivity, conducting workshops and seminars in the field of
exercise, diet, nutrition, wellness and lifestyle, consultation (personnel
management), consultation (physical fitness), counseling (nutrition), dance
schools, dance studios, administration of employee benefit plans, employee
incentive award programs to promote in the field of exercise, diet, nutrition,
wellness and lifestyle, safety, quality, productivity, conducting fitness
consultations, physical fitness instruction, provide physical health
information, personnel management consultation, physical education services,
physical fitness consultation, physical fitness instruction, physical
rehabilitation, physical therapy, on the job safety, quality and productivity,
conducting employee incentive award programs to promote public awareness in the
field of exercise, diet, nutrition, wellness and lifestyle self-awareness,
conducting workshops and seminars in field of self-awareness, conducting
workshops and trade show exhibitions in the field of exercise, diet, nutrition,
wellness and lifestyle, arranging and conducting of trade shows in the field of
exercise, diet, nutrition, wellness and lifestyle, conducting weight reduction
diet planning and supervision seminars and workshops.
[2] The application was advertised for opposition purposes in the Trade-marks Journal of September 20, 2006.
[3] On February 20, 2007, Spin Master Ltd. (the Opponent) filed a statement of opposition. The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
[4] Pursuant to r. 41 of the Trade-marks Regulations, SOR/96-195, the Opponent filed an affidavit of Adam M. Tracey. Pursuant to r. 42, the Applicant filed an affidavit of Roger Lawrence. The Opponent obtained an order for the cross-examination of Mr. Lawrence on his affidavit, but a cross-examination was not conducted.
[5] Only the Applicant filed a written argument. An oral hearing was originally requested but ultimately an oral hearing was not held.
[6] The Opponent has pleaded grounds of opposition under s. 38(2)(a) and (d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act), namely:
1) pursuant to s. 38(2)(a), the Opponent pleads that the application does not comply with the requirements of s. 30 in that:
a) the statements of wares and services in the application are not in ordinary commercial terms;
b) the Applicant did not and does not intend to use the Mark as alleged in the application or at all;
c) alternatively, the Applicant has used the Mark prior to the filing date whereas the application has been filed on an intent to use basis;
2) pursuant to s. 38(2)(d), the Opponent pleads that the Mark is not distinctive and is also not adapted to distinguish the wares and services in association with which it is proposed to be used by the Applicant from the wares and services of others in Canada. In particular, third parties such as OK Initiatives, Inc. have been using the trade-mark MASTERMOVES in Canada in association with the same and/or similar goods and services (exercise equipment, health and fitness programs).
[7] The material date for assessing the s. 30 grounds of opposition is the filing date of the application whereas the material date for assessing distinctiveness is the filing date of the opposition [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.); Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
[8] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v. The Molson Companies Limited (1990), 30 C.P.R. (3d) 293 (F.C.T.D.) at 298].
[9] The Opponent has not met its initial burden with respect to any of the grounds of opposition. The only evidence that it has filed is the affidavit of Mr. Tracey, who was a student-at-law employed by the Opponent’s trade-mark agents. An opponent ought not to base its case on evidence from an employee of the firm that represents it because of the lack of objectivity of such an individual [see Cross-Canada Auto Body Supply v. Hyundai (2006), 53 C.P.R. (4th) 286 (F.C.A.)]. Even if this was not the case, I would find Mr. Tracey’s evidence to be of no assistance in meeting the Opponent’s burden because he has simply provided as exhibits a large pile of pages that he printed off the Internet using www.archive.org and www.mastermoves.com. There is no explanation either in his affidavit or in written argument concerning what the relevance of these pages might be. It is certainly not readily apparent that they show that the Applicant’s wares/services are not in ordinary commercial terms, or that the Applicant did not intend to use its Mark as alleged, or that the Applicant used its Mark prior to filing the present application, or that another party had acquired a sufficient reputation in association with a similar mark in Canada as of the filing of the present opposition. The contents of the printouts provided are subject to hearsay objections; at most, Mr. Tracey has evidenced that these pages existed – he has not evidenced the truth of their contents. Equally important is the fact that there is no evidence that any one in Canada ever saw any of these web pages. Overall, there is no evidence that as of February 20, 2007 another party had a reputation in Canada that would impact on the distinctiveness of the Applicant’s Mark [see Bojangles' International LLC v. Bojangles Café Ltd. (2006), 48 C.P.R. (4th) 427 (F.C.)].
[10] As the Opponent has not met its evidentiary burden, there is no case for the Applicant to answer and all of the grounds of opposition fail.
[11] Pursuant to the authority delegated to me under s. 63(3) of the Act, I reject the opposition pursuant to s. 38(8) of the Act.
______________________________
Jill W. Bradbury
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office