LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 222
Date of Decision: 2010-12-21
IN THE MATTER OF AN OPPOSITION by Buksesnedkeren APS to application No. 1,283,475 for the trade-mark H2OFF Logo in the name of Toray Kabushiki Kaisha a/t/a Toray Industries, Inc.
[1] On December 12, 2005, Toray Kabushiki Kaisha a/t/a Toray Industries, Inc. (the Applicant) filed an application to register the trade-mark H2OFF Logo (the Mark), shown below:
[2] The Mark was applied for registration for the following wares on the following bases:
(a) “Woven textile fabrics for use in the manufacture of outer clothing; coats, pants, jackets, windbreakers and blousons” based on proposed use;
(b) “Windbreakers for sports” based on use and registration in Japan under number 2370317 dated January 31, 1992;
(c) “Woven textile fabrics for use in the manufacture of outer clothing” based on use and registration in Japan under number 2393227 dated March 31, 1992; and
(d) “Coats, pants, jackets, windbreakers and blousons” based on use and registration in Japan under number 2452855 dated September 30, 1992.
[3] Where appropriate, I will hereinafter refer to the above-mentioned wares together as the Wares.
[4] The application was advertised for opposition purposes in the Trade-marks Journal of January 10, 2007.
[5] On October 10, 2007, Buksesnedkeren APS (the Opponent) filed a statement of opposition. The grounds of opposition can be summarized as follows:
(a) The Mark is not registrable pursuant to s. 38(2)(b) and s. 12(1)(d) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) because it is confusing with the Opponent’s registered trade-marks, set out below:
i. H2O & Design (registration No. TMA339,264), shown below, registered generally for various types of clothing:
ii. H2O Design (registration No. TMA596,335), shown below, registered generally for various types of clothing, footwear and bags:
(hereinafter collectively referred to as the Opponent’s Marks)
(b) The Applicant is not the person entitled to registration of the Mark since, contrary to the provisions of s. 38(2)(c) and s. 16(1)(a) of the Act, as of the date of filing the application, the Mark was confusing with the Opponent’s Marks, which have been previously used and made known in Canada by the Opponent since as early as January 14, 1983.
(c) The Mark is not distinctive within the meaning of s. 2 of the Act, contrary to the provisions of s. 38(2)(d), 16(1) and 2 of the Act since the Mark is both confusing with the Opponent’s Marks and is intended to be used in association with wares that overlap those of the Opponent. The Mark is not adapted to distinguish the Wares from the wares of the Opponent.
[6] The Applicant served and filed a counter statement on March 19, 2008 in which it denied the Opponent’s allegations.
[7] In support of its opposition, the Opponent filed the affidavits of Erica Langwost sworn October 20, 2008, with Exhibits A through D and Jean Choquette sworn October 20, 2008 with Exhibits A through E as its evidence pursuant to r. 41 of the Trade-marks Regulations SOR/96-195 (the Regulations). On March 9, 2009, the Opponent was granted leave pursuant to r. 44 of the Regulations, to file the affidavit of Mats Peter Nihlén sworn December 15, 2008 as additional evidence.
[8] In support of its application, the Applicant filed an affidavit of Kazuhiko Shuto, sworn June 1, 2009, with Exhibits A through E.
[9] Only the Applicant filed a written argument. Neither party requested an oral hearing.
Evidence
[10] I note that, in reviewing the evidence, I will not refer to or place any weight on any statements which constitute the opinions of the affiants on issues that go to the merit of the oppositions [see British Drug Houses Ltd. v. Battle Pharmaceuticals (1944), 4 C.P.R. 48 (Ex. Ct.) at 53 and Les Marchands Deco Inc. v. Society Chimique Laurentide Inc. (1984), 2 C.P.R. (3d) 25 (T.M.O.B.)].
Opponent’s Evidence
Erica Langwost
[11] Ms. Langwost is a legal assistant with the Opponent’s agent.
[12] Ms. Langwost attaches to her affidavit a certified copy of registration No. TMA596,335 for the trade-mark H2O Design, owned by the Opponent (Exhibit A).
[13] Ms. Langwost also attaches to her affidavit printouts from various websites. Specifically, Ms. Langwost attaches materials which she states were obtained from: (i) the Opponent’s website found at www.H20-sportswear.com printed on August 29, 2008 (Exhibit B); (ii) the website for The Sports Experts, which Ms. Langwost states is the sports store of the Opponent’s Canadian Distributor, Le Forzani Group Ltd. (Forzani) found at http://sportsexperts.ca printed on October 17, 2008 (Exhibit C); and (iii) the Opponent’s website found at www.buksesnedkeren.dk printed on October 20, 2008 (Exhibit D).
[14] The Opponent has not made any submissions as to what it wishes to evidence by adducing these website printouts. As a result, I am unable to make much of this evidence. Furthermore, I note that Ms. Langwost’s statement regarding the connection between The Sports Experts and Forzani constitutes hearsay. In any event, I note that the law is clear that printouts of websites cannot be adduced as evidence of the truth of the statements made thereon [see Candrug Health Solutions Inc. v. Thorkelson (2007), 60 C.P.R. (4th) 35 (F.C.T.D.), reversed (2008), 64 C.P.R. (4th) 431 (F.C.A.), (Candrug)]. As a result, the most that could be inferred from the website printouts attached to Ms. Langwost’s affidavit is that the website pages existed on the dates that they were printed, as set out above.
Jean Choquette
[15] Mr. Choquette is a private investigator employed by Groupe Canaprobe, a private investigations firm headquartered in the Province of Quebec. Mr. Choquette states that, among other activities, Groupe Canaprobe undertakes investigative services on behalf of parties in intellectual property disputes. Mr. Choquette states that he has ten years of experience working on investigative matters.
[16] In his affidavit, Mr. Choquette states that he visited the retailer “Sports Experts” on October 17, 2008 and purchased two items bearing the trade-mark H2O Design, namely a men’s jacket and a ladies’ jacket. Mr. Choquette attaches to his affidavit a photocopy of a receipt for the purchase which he made at the 7275 Sherbrooke East, Montreal, Quebec location of Sports Experts (Exhibit A).
[17] Mr. Choquette attaches to his affidavit photocopies of the “hang tag[s]” which were affixed to these jackets at the time of purchase (Exhibits B and C). I note that the hang tags clearly display the trade-mark H2O Design.
[18] Mr. Choquette attaches to his affidavit a photocopy of a product tag which was affixed to the ladies’ jacket at the time of purchase. He states that it references the price of the jacket ($149.99) and the particular model of jacket, namely H2O “CELINA”, along with the barcode of the retailer, Sports Experts (Exhibit D). I note that the image clearly displays the price and the serial number; however the quality of the image is poor such that I cannot clearly make out the trade-mark H2O Design or the model name CELINA. In any event, Mr. Choquette attaches to his affidavit a series of photocopies of photographs of the ladies’ jacket (Exhibit E). I note that the ladies’ jacket shown in the photographs clearly displays the trade-mark H2O Design.
Mats Peter Nihlén
[19] Mr. Nihlén has been the Managing Director of the Opponent since March 2008.
[20] Mr. Nihlén states that the Opponent began designing, manufacturing, distributing and marketing products under the Opponent’s Marks in 1982.
[21] Mr. Nihlén states that the Opponent is represented in more than 15 countries and promotes and distributes its products throughout the world, including in Canada.
[22] Mr. Nihlén states that the Opponent currently owns registration No. TMA596,335 for the trade-mark H2O Design. I note that Mr. Nihlén does not make any specific reference to registration No. TMA339,264 for the trade-mark H2O & Design.
[23] Mr. Nihlén states that “[i]n 1982, the H2O Marks first came into existence to emphasize high quality, functionality and the “perfect fit” while promoting the Opponent’s values of “water, Scandinavia, social lifestyle and sport”.”
[24] Mr. Nihlén states that since 1982 the Opponent has been designing clothing intended for men and women of all ages and for all weather conditions including outerwear and accessories (the Opponent’s H2O Products). Mr. Nihlén states that the Opponent’s mission statement for its H2O Products is to “design and manufacture sportswear with a functional purpose and a contemporary look to inspire people to live an active life”.
[25] Mr. Nihlén states that since as early as 1982, the Opponent and/or its licensees have actively promoted, marketed and advertised the Opponent’s H2O Products throughout Canada through placement of advertisements in flyers and other promotions emanating from the Opponent’s exclusive Canadian distributor, The Forzani Group Ltd./Le Forzani Group Ltd. (Forzani).
[26] Mr. Nihlén states that the Opponent sold $326,000 (USD) worth of the Opponent’s H2O Products to Forzani for the 2008 season and $195,922 (USD) for the Spring 2009 season for sale to consumers in Canada.
[27] Mr. Nihlén states that the Opponent markets its H2O Products throughout Canada and the world on its website located at www.H2O-sportswear.com. Mr. Nihlén states that the Opponent’s website provides information on where to find the Opponent’s H2O Products at retail locations throughout the world, including a link to Forzani’s website and Forzani’s physical address in Laval, Quebec.
[28] Mr. Nihlén states that there is a wide market for the Opponent’s H2O Products in Canada and throughout the world. Mr. Nihlén states that the Opponent’s customers range from persons interested in purchasing “children’s, ladies, and/or men’s fashionable and functional leisurewear” to “competitive athletes and golfers seeking quality clothing for use in any weather condition”.
Applicant’s Evidence: Kazuhiko Shuto
[29] Mr. Shuto is the General Manager of the Sports Wear & Clothing Materials Fabrics Department of the Applicant. Mr. Shuto states that he has been employed by the Applicant since 1980 and has held the position of General Manager since 2008.
[30] Mr. Shuto states that the Applicant, a Japanese chemical manufacturer, was founded in 1926. Mr. Shuto states that, at the time of swearing his affidavit (June 2009) the Applicant’s business covered various fields including “fibers and textiles”, “plastics and chemicals”, “IT-related products”, “carbon fiber composite materials”, “environment and engineering” and “life science (pharmaceuticals, medical products and others)”. Mr. Shuto attaches to his affidavit a page printed from the Applicant’s website which mentions these various fields (Exhibit A).
[31] Mr. Shuto states that around 1980, the Applicant developed “innovative woven fabrics” which he states have the characteristics of “durable water repellency”, “water resistance without coating or adhesives”, “superior breathability”, “natural and soft handfeel” and “easy care and cleaning” (the Applicant’s Fabrics). Mr. Shuto states that the Applicant’s Fabrics are suitable for use in the manufacture of clothing for “sports, outdoor and casual use”. Mr. Shuto states that the Applicant coined the word “H2OFF” and developed the Mark for use with the Applicant’s Fabrics. Mr. Shuto attaches to his affidavit a printout from the Applicant’s website promoting the Applicant’s Fabrics (Exhibit B).
[32] Mr. Shuto states that the Applicant began selling the Applicant’s Fabrics in Japan in 1989 and has continuously sold them to manufacturers of clothing for sports, outdoor and casual use since then. Mr. Shuto provides sales figures for sales of the Applicant’s Fabrics in Japan for the years 2003 to 2008. These sales figures are not relevant to the present proceeding as they do not relate to Canada. As a result, I will not be placing any weight on the Japanese sales figures adduced in the Shuto affidavit.
[33] Mr. Shuto states that the Applicant has developed a “promotion policy” in Japan whereby clothing manufacturers who purchase the Applicant’s Fabrics attach a “swing tag” featuring the Mark to their finished products in order to give notice to purchasers that the clothing is made from the Applicant’s Fabrics. I am of the view that this promotion policy could be classified as a “co-branding” advertising scheme. Mr. Shuto attaches to his affidavit a sample swing tag displaying the Mark (Exhibit C) which he states is representative of the swing tags used in Japan. Since the clothing manufacturers do not operate as distributors of the Applicant’s Fabrics but rather use the Applicant’s Fabrics as raw materials to manufacture their own branded clothing, the display of the Mark on the swing tags attached to this clothing would at best be use of the Mark by a third party. The only way such use could revert to the Applicant would be if the Applicant licensed these third parties to use the Mark. In the present case, the Applicant has not provided any information as to whether any such licenses exist, and as a result, I must conclude that they do not. Thus the sample swing tag does not evidence use of the Mark by the Applicant. In any event, I note that Mr. Shuto specified that the sample swing tag is representative of those used in Japan, not in Canada. Finally, even if I were to accept the swing tag as evidence of the mark in a co-branding advertising scheme, I note that use of the Mark in advertising is not in itself sufficient to constitute use in association with wares [see BMW Canada Inc. v. Nissan Canada Inc. (2007), 60 C.P.R. (4th) 181 (F.C.A.), (BMW)].
[34] Mr. Shuto states that the Applicant began selling the Applicant’s Fabrics to countries other than Japan in approximately 1992. Mr. Shuto provides sales figures for the Applicant’s Fabrics “in the foreign trade” for the years 2003 to 2008. While I find it reasonable to infer that Mr. Shuto’s reference to the “foreign trade” includes Canada, he does not specify the countries these sales figures relate to. Since it is not clear whether these sales figures specifically relate to Canada, they are not relevant and as a result I will not be placing any weight on the foreign sales figures adduced in the Shuto affidavit.
[35] Mr. Shuto states that the most important international customers for the Applicant’s Fabrics are L.L. Bean Inc. of Maine, USA (L.L. Bean) and J. Lindeberg AB of Stockholm, Sweden (J. Lindeberg). Mr. Shuto states that the Applicant has sold approximately two million meters of the Applicant’s Fabrics to L.L. Bean and approximately 380 thousand meters to J. Lindeberg since 1992. I note that neither of these customers is located in Canada. Mr. Shuto makes a number of hearsay statements regarding the business carried on by these customers and their use of the Applicant’s Fabrics in manufacturing clothing. Mr. Shuto states that the Applicant is engaged in a “promotion policy” similar to the one carried out in Japan in the foreign markets as well. Mr. Shuto attaches to his affidavit a sample “promotion tag” which he states is akin to a swing tag and which is used in the Applicant’s promotion policy in the foreign markets (Exhibit D). Mr. Shuto states that the promotion tag would be used in conjunction with sales to customers in the foreign markets, including to L.L. Bean and J. Lindeberg. As discussed previously, the presence of the Mark on such tags does not constitute use of the Mark by the Applicant in accordance with s. 4(1) of the Act. Ultimately, based on the foregoing, I am not placing any weight on Mr. Shuto’s statements regarding the business carried on by either L.L. Bean or J. Lindeberg.
[36] Mr. Shuto states that he has not been informed of any instances of confusion between the parties’ marks from any of the Applicant’s customers, including L.L. Bean and J. Lindberg.
[37] In summary, I find that the Shuto affidavit does not provide any evidence of use or making known of the Mark in Canada.
Onus
[38] 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].
Section 12(1)(d) Ground of Opposition
[39] The material date for assessing confusion between the Mark and the Opponent’s Marks pursuant to s. 12(1)(d) of the Act is the date of my decision [see Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. and The Registrar of Trade Marks (1991), 37 C.P.R. (3d) 413 (F.C.A.)].
[40] I have exercised the Registrar’s discretion to confirm that the registrations for the Opponent’s Marks are in good standing as of today’s date. Since the Opponent has discharged its initial burden with respect to this ground of opposition, the burden of proof lies on the Applicant to convince the Registrar, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and one or more of the Opponent’s Marks.
[41] I note that the Opponent has provided evidence of the trade-mark H2O Design, but no evidence of the trade-mark H2O & Design. As a result, I consider the Opponent's case to be strongest with respect to registration No. TMA596,335 for the trade-mark H2O Design and I will thus focus my discussion thereon unless otherwise indicated. The success or failure of this ground will therefore turn on the issue of confusion with this registration.
[42] The test for confusion is one of first impression and imperfect recollection. Section 6(2) of the Act indicates that use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would be likely to lead to the inference that the wares or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the wares or services are of the same general class.
[43] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in s. 6(5) of the Act, namely: (a) the inherent distinctiveness of the trade-marks and the extent to which they have become known; (b) the length of time each has been in use; (c) the nature of the wares, services or business; (d) the nature of the trade; and (e) the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them. These enumerated factors need not be attributed equal weight. [See, in general, Mattel, Inc. v. 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).]
6(5)(a) – the inherent distinctiveness of the trade-marks and the extent to which they have become known
[44] The trade-mark H2O Design features the H2O word element along with intrinsic design elements consisting merely of a stylistic font. With respect to the degree of inherent distinctiveness of the trade-mark H2O Design, the Applicant submits that the trade-mark H2O Design can be given two interpretations, either (a) “the widely understood molecular formula for water which every Canadian learns in high school” or (b) “a mere assemblage of letters and numerals”.
[45] With respect to the first interpretation, the Applicant submits that the Registrar should take judicial notice of the fact that H2O has become a synonym for water as was done by the Federal Court in 17394 Alberta Ltd. v. H2O Co. Beverages Ltd. (2005), 38 C.P.R. (4th) 537. I need not follow the reasoning in the cited case as I may refer myself to a dictionary to determine the meaning of words [see Insurance Co. of Prince Edward Island v. Prince Edward Island Insurance Co. (1999), 2 C.P.R. (4th) 103 (T.M.O.B.)]. I have looked into the Canadian Oxford Dictionary and found the following definition for the term “water”: a noun meaning “the liquid which forms the seas, lakes, rivers, and rain and is the basis of the fluids of living organisms; chemical formula: H2O” (my emphasis). Based on the foregoing, I find it reasonable to conclude that H2O means water.
[46] The Applicant submits that if the trade-mark H2O Design is interpreted as meaning water, it is suggestive of the associated wares. The Applicant bases this submission in part on paragraphs 9 and 15 of the Nihlén affidavit which state that the clothing sold under the trade-mark H2O Design is designed for all weather conditions. The Applicant submits that this would be understood to include rain and snow. I also note that in paragraph 8 of his affidavit Mr. Nihlén states that the Opponent’s company values include water. The Applicant submits that the trade-mark H2O Design would thus be understood to suggest “impermeable, water-resistant or water-transporting qualities”. While I am not willing to make such a detailed inference, I am willing to accept that the trade-mark H2O Design, when considered with the associated wares, could be suggestive of a quality of the Opponent’s wares, namely that the products may repel water.
[47] The Applicant submits that if the trade-mark H2O Design is interpreted as being a mere assemblage of letters and numerals it would also be considered to be a weak mark for which only small differences will be sufficient to distinguish it from other marks [see GSW Ltd. v. Great West Steel Industries Ltd. et al. (1975), 22 C.P.R. (2d) 154 (F.C.T.D.)]. I agree.
[48] I find that both interpretations of the trade-mark H2O Design are acceptable and regardless of which one is adopted, the end result is the same, namely that the trade-mark H2O Design is a weak mark possessing little inherent distinctiveness.
[49] The Applicant submits, and I agree, that the Mark is a coined word. While the Mark incorporates the non-distinctive H2O element, the Mark would likely be pronounced as “H-2-OFF” and as a result I find that the Mark possesses some degree of inherent distinctiveness as I find that it has no meaning. The Mark also possesses intrinsic design features in the form of fanciful script and an embellishment to the letter “O”. I do not, however, consider the design features to add to the distinctiveness of the Mark since the fanciful script and embellishments are intrinsic to the word element [see Canadian Jewish Review Ltd. v. The Registrar of Trade-marks (1961), 37 C.P.R. 89 (Ex. Crt.); CanWest Global Communications Corp. v. TV Globo Ltda., 2007 CarswellNat 1061 (T.M.O.B.)].
[50] As the strength of a trade-mark may be increased by means of it becoming known in Canada through promotion or use, I will now turn to the extent to which the trade-marks have become known in Canada.
[51] As concluded above, I find that the Shuto affidavit does not support a finding that the Mark has become known to any extent in Canada.
[52] The Opponent has adduced, through the Choquette and Nihlén affidavits, evidence of use of the trade-mark H2O Design in Canada. Specifically, Mr. Choquette provides a specimen of use of the trade-mark H2O Design on a ladies’ jacket purchased in Canada in October 2008. Furthermore, in his affidavit, Mr. Nihlén makes the sworn statement that the Opponent has sold its products in association with the trade-mark H2O Design through its Canadian distributor, Forzani, since as early as 1982. Finally, Mr. Nihlén states that Forzani purchased $326,000 (USD) worth of wares from the Opponent for sale to Canadian customers in 2008 and $195,922 (USD) in Spring 2009.
[53] As a result I find that the Opponent’s H2O Design Mark has become known to some extent in Canada.
[54] Based on the foregoing, I find that the overall consideration of this factor does not significantly favour either party.
6(5)(b) – the length of time each has been in use
[55] The Mark was applied for on December 12, 2005 on the dual basis of proposed use in Canada and use and registration in Japan. As discussed in further detail above, the Applicant has not established that the Mark has been used in Canada.
[56] The trade-mark H2O Design proceeded to registration No. TMA596,335 on December 3, 2003 based on foreign use and registration. By virtue of the Opponent’s registration for the trade-mark H2O Design, I am permitted to assume at least de minimis use of the trade-mark H2O Design [see Entre Computer Centers, Inc. v. Global Upholstery Co. (1991), 40 C.P.R. (3d) 427 (T.M.O.B.)]. In addition, the Opponent claims use of the Mark through the Choquette and Nihlén affidavits, most importantly, by featuring a specimen of use of the trade-mark H2O Design from 2008.
[57] Based on the foregoing, I find that this factor favours the Opponent.
6(5)(c) and (d) – the nature of the wares and the nature of the trade
[58] When considering the nature of the wares and the nature of the trade of the parties, it is the statement of wares in the application and the statement of wares in the registration that govern the assessment of the likelihood of confusion under s. 12(1)(d) of the Act [see Esprit International v. Alcohol Countermeasure Systems Corp. (1997), 84 C.P.R. (3d) 89 (T.M.O.B.)].
[59] The Applicant has applied for the Mark in association with “woven textile fabrics for use in the manufacture of outer clothing; coats, pants, jackets, windbreakers and blousons; windbreakers for sports”.
[60] The trade-mark H2O Design is registered for the following wares:
(a) Clothing, namely, jackets, coats, suits, sweaters, shorts, pants, slacks, dresses, skirts, shirts, blouses, turtlenecks, tops, jeans, jean jackets, vests, blazers, cardigans, pullovers, jerseys, knit polo shirts, jogging suits, sweatshirts, sweatpants, warm-up suits, swim wear, raincoats, scarves, handkerchiefs, ties, hosiery, gloves, suspenders, pyjamas, robes, ponchos, jumpers and uniforms; footwear, namely, shoes, running shoes, sneakers, overshoes and boots; headgear, namely, hats, caps and headbands; and
(b) Valises, travelling bags, handbags, shoulder bags, beach bags, sport bags, backpacks and rucksacks; purses, pocket wallets, card cases, umbrellas and parasols.
(hereinafter referred to as the Opponent’s Registered Wares)
[61] There is a clear overlap between the Applicant’s clothing wares and the Opponent’s clothing wares.
[62] While the Applicant’s “woven textile fabrics” are not identical to the Opponent’s clothing wares, it is reasonable to infer that these types of wares are closely related. Specifically, the Registrar has held previously that “there is a close relationship between textile fabrics and articles of clothing such that the public perception is that both emanate from a common source of origin” [see Johnson & Johnson v. C.M.A. Distributors Ltd. (1982), 74 C.P.R. (2d) 121 (T.M.O.B) at 127]. This is especially true in the present case where the Applicant’s textile fabrics are specified as being “for use in the manufacture of outer clothing”. Furthermore, I find it reasonable to infer from the Applicant’s promotion policy in Japan that the Applicant intends to engage in similar co-branding schemes in Canada such that the Mark would be applied to clothing wares manufactured by third parties using the Applicant’s woven textile fabrics. This inference serves to further reinforce the relationship between the Applicant’s woven textile fabrics and the Opponent’s clothing wares.
[63] There is no evidence of record regarding the nature of the Applicant’s trade in Canada. Furthermore, the application for the Mark does not include any restriction on the channels of trade.
[64] Given the overlap in the parties’ wares, I may therefore conclude that the channels of trade associated with the Mark and the trade-mark H2O Design could also overlap with respect to the Applicant’s clothing wares.
[65] Based on the foregoing, these factors favour the Opponent.
6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[66] In most instances, the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested is the dominant factor and other factors play a subservient role in the overall surrounding circumstances [see Beverly Bedding & Upholstery Co. v. Regal Bedding & Upholstery Ltd. (1980), 47 C.P.R. (2d) 145, conf. 60 C.P.R. (2d) 70 (F.C.T.D.)].
[67] It is relevant for the purposes of analyzing the degree of resemblance between the parties’ marks to note that the Mark incorporates the whole of the word portion of the trade-mark H2O Design.
[68] The parties’ marks both feature the H2O element as the first portions thereof. As discussed previously, the H2O element can either be interpreted as the chemical formula for water or an assemblage of letters and numbers. It is a well-accepted principle that the first portion of a trade-mark is the most relevant for the purposes of distinction [see Conde Nast Publications Inc. v. Union des Editions Modernes (1979), 46 C.P.R. (2d) 183 (F.C.T.D.) at 188]. However, the importance of the first element (H2O) is diminished in this case as it possesses little inherent distinctiveness [see Vancouver Sushiman Ltd. v. Sushiboy Foods Co. (2002), 22 C.P.R. (4th) 107 (T.M.O.B.); Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 (F.C.A.); Phantom Industries Inc. v. Sara Lee Corp. (2000), 8 C.P.R. (4th) 109 (T.M.O.B.)]. As a result, the focus will be placed on the additional elements to the parties’ marks.
[69] For the Mark, the additional element is the letters “FF” which serve to create a coined word pronounced “H-2-OFF”. By themselves, however, the letters “FF” are not inherently distinctive as they are merely a series of letters. For the trade-mark H2O Design the additional element is the design feature in the form of a stylized script. As discussed above, intrinsic design features of this nature do not add much to the distinctiveness of a mark.
[70] Ultimately, when considering the marks as a whole, I find that the inclusion in the Mark of the entire H2O word element creates visual and phonetic similarities. Furthermore, I find that the additional elements to the parties’ marks are not sufficiently distinctive to create a significant difference between the parties’ marks in terms of sound and appearance.
[71] The Mark suggests the idea of keeping “water” “off” of something. The trade-mark H2O Design suggests the idea of “water” in general. To the extent that the ideas suggested by both parties’ marks relate to water, there is some degree of overlap in the ideas suggested as well.
[72] Based on the foregoing, I find that the parties’ marks share similarities in sound, appearance and ideas suggested. These factors favour the Opponent.
Additional Surrounding Circumstance: Registration of the Mark in Other Countries
[73] Mr. Shuto states that the Applicant has registered the Mark in many countries and provides a chart of such registrations (Exhibit E). I note that in assessing the issue of confusion, foreign registrations are irrelevant and evidence thereof should be disregarded [see Pitman-Moore Ltd. v. Cyanamid of Canada Ltd. (1977), 38 C.P.R. (2d) 140 (T.M.O.B.)].
[74] As a result, I find that this does not form a relevant surrounding circumstance supporting the Applicant’s case.
Additional Surrounding Circumstance: No Actual Confusion
[75] The Applicant submits that the parties’ marks are used concurrently in numerous overlapping markets, particularly throughout Europe. The Applicant submits that the absence of any actual known instances of confusion despite concurrent use of the parties’ marks in international markets is a relevant surrounding circumstance. Given that the Applicant is located in Japan, I understand Mr. Shuto’s references to foreign or international markets to include Canada. As a result, I am considering the Applicant’s submissions on this point insofar as the reference to international markets includes Canada.
[76] Mr. Shuto states that he has not been informed of any instances of confusion between the parties’ marks from any of the Applicant’s customers, including L.L. Bean and J. Lindeberg. However, as discussed previously, there is no evidence of record of the coexistence of the parties’ marks. In fact, as discussed previously, the Applicant has not provided any evidence of use of the Mark in Canada whatsoever.
[77] Based on the foregoing, I find that this does not form a relevant surrounding circumstance supporting the Applicant’s case.
Additional Surrounding Circumstance: Opponent’s Marks Not Cited During Prosecution
[78] The Applicant further submits that throughout the years, the Applicant has not encountered the Opponent’s Marks in the course of the prosecution of its applications around the world as alleged by Mr. Shuto. Again, I am considering the Applicant’s submissions on this point insofar as the reference to applications filed around the world includes Canada.
[79] This argument is of no assistance to the Applicant’s case. A decision by an Examiner of the Canadian Intellectual Property Office does not have precedential value for the Board because both the onus and evidence before an Examiner differs from that before the Board [see Thomas J. Lipton Inc. v. Boyd Coffee Co. (1991), 40 C.P.R. (3d) 272 (T.M.O.B.) at 277 and Procter & Gamble Inc. v. Morlee Corp. (1993), 48 C.P.R. (3d) 377 (T.M.O.B.) at 386].
[80] Based on the foregoing, this does not constitute a relevant surrounding circumstance supporting the Applicant’s case.
Conclusion re s. 12(1)(d) of the Act
[81] In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. Having considered all of the surrounding circumstances, in particular the extent to which the marks have become known, the length of time the trade-marks have been in use, the nature of the wares and trade and the similarities in sound, appearance, and ideas suggested, I am not satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and registration No. TMA596,335 for the trade-mark H2O Design.
[82] Based on the foregoing, I find that the ground of opposition based on s. 12(1)(d) of the Act is successful.
Entitlement Grounds of Opposition
[83] As pleaded, the non-entitlement ground is based on s. 16(1)(a) of the Act despite the fact that the application for the Mark claims proposed use and use and registration in Japan. The appropriate sections under which a non-entitlement ground of opposition should be raised in the present case are s. 16(2)(a) and 16(3)(a). As a result, I dismiss the non-entitlement ground of opposition on the basis that it has been improperly pleaded.
[84] Even if I were to infer that the Applicant could have understood that the second ground of opposition was implicitly based on s. 16(2)(a) and 16(3)(a) of the Act and thus was properly pleaded, for the reasons that follow, I dismiss the non-entitlement ground on the basis that the Opponent has not met its evidential burden.
[85] The material date for considering the entitlement grounds of opposition is the date of filing the application for the Mark, namely, December 12, 2005 [see s. 16(2) and (3) of the Act].
[86] Despite the burden of proof on the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and the Opponent’s Marks, the Opponent has the initial onus of proving that the trade-mark alleged in support of its grounds of opposition based on s. 16(2)(a) and 16(3)(a) of the Act was being used and/or made known at the date of filing the application and had not been abandoned at the date of advertisement of the application, namely, January 10, 2007 [s. 16(5) of the Act].
[87] As discussed above, the Opponent has not provided any evidence of use or making known of the trade-mark H2O & Design. The Opponent has thus failed to meet its evidentiary burden with respect to the trade-mark H2O & Design Mark. With respect to the trade-mark H2O Design, I note that while Mr. Nihlén makes the sworn statement that the Opponent has used the trade-mark H2O Design since as early as 1982, the specimens of use of the trade-mark H2O Design adduced in the Choquette affidavit and the Canadian sales figures adduced in the Nihlén affidavit cover only 2008 and 2009, some three to four years after the material date.
[88] There is thus no evidence of record of demonstrating making known or use in Canada of the Opponent’s Marks by the Opponent in compliance with s. 4(1) of the Act in association with the Opponent’s wares prior to December 12, 2005.
[89] Based on the foregoing, I find that the Opponent did not discharge its burden of showing use or making known of the Opponent’s Marks prior to the filing date of the application for the Mark and I dismiss the non-entitlement ground of opposition accordingly.
Distinctiveness Ground of Opposition
[90] As a preliminary matter, I note that the Opponent made an error in making reference to s. 16(1) of the Act in its non-distinctiveness ground of opposition as pleaded. I find that it is reasonable to consider the reference to s. 16(1) in the non-distinctiveness ground as merely a technical deficiency or clerical error as I find that it does not prejudice the Applicant.
[91] While there is a legal onus on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its Wares from those of others throughout Canada [see Muffin Houses Incorporated v. The Muffin House Bakery Ltd. (1985), 4 C.P.R. (3d) 272 (T.M.O.B.)], there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the ground of non-distinctiveness. The material date for assessing distinctiveness is the date of filing of the opposition, namely, October 10, 2007 [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.), (MGM)].
[92] The Opponent must demonstrate that, as of the filing of the statement of opposition, one or more of the Opponent’s Marks had become known sufficiently to negate the distinctiveness of the Mark [see Bojangles’ International, LLC v. Bojangles Café Ltd. (2004), 40 C.P.R. (4th) 553, aff’d (2006), 48 C.P.R. (4th) 427 (F.C.T.D.); MGM, supra; Clarco Communications Ltd. v. Sassy Publishers Inc. (1994), 54 C.P.R. (3d) 418 at 431 (F.C.T.D.); Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at 424 (F.C.A.); and Re Andres Wines Ltd. and E. & J. Gallo Winery (1975), 25 C.P.R. (2d) 126 at 130 (F.C.A.)].
[93] As discussed above, the Opponent has not provided any evidence of use or reputation for the trade-mark H2O & Design and has only provided such evidence for 2008 and 2009 with respect to the trade-mark H2O Design.
[94] On this basis, the Opponent has not met its evidential burden to demonstrate that, as of the filing of the statement of opposition, the Opponent’s Marks had become known sufficiently to negate the distinctiveness of the Mark.
[95] Based on the foregoing, I reject the non-distinctiveness ground of opposition in its entirety.
Disposition
[96] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office