LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2010 TMOB 196
Date of Decision: 2010-11-22
IN THE MATTER OF AN OPPOSITION by Kamsut, Inc. to application No. 1,218,942 for the trade-mark KAMA SUTRA in the name of Jaymei Enterprises Inc.
[1] On June 2, 2004, Jaymei Enterprises Inc. (the Applicant) filed an application to register the trade-mark KAMA SUTRA (the Mark) based on proposed use in Canada in association with the following wares and services (the Wares and Services):
Wares: candles, scented waxes and oils, candle holders, wax and oil burners; potpourri; lamps; jewelry; cups, mugs, drinking glasses, beer mugs; key chains; stickers and decals; decorative accessories for the home; plant pots; cookie tins and jars; cooking ware and utensils; tea trays; spice containers; mirrors; book marks; mouse pads; clothing, namely, lingerie, sleepwear, underwear, tee shirts, aprons; bed linens, namely sheets, pillowcases, cushions, duvets and bed covers; curtains and decorative curtain rods; table cloths; placemats; food products, namely spices, tea, chocolate syrup, maple syrup, fruit syrups, jams, jellies, honey, preserved fruits and vegetables; non-alcoholic beverages, namely carbonated beverages, fruit juices, juice concentrates and bottled water; wine.
Services: retail sale of giftware, decorative accessories for the home, chocolates, food products and clothes; restaurant services.
[2] The Applicant independently submitted to the Canadian Intellectual Property Office (CIPO) that the word KAMA translates into English as “love or desire” and the word SUTRA as “manual”.
[3] The application was advertised for opposition purposes in the Trade-marks Journal of September 7, 2005.
[4] On February 7, 2006, Kamsut, Inc. (the Opponent) filed a statement of opposition. The grounds of opposition can be summarized as follows:
(a) Pursuant to s. 38(2)(a) of the Trade-marks Act, R.S.C. 1985, c. T-13 (the Act) the application for the Mark does not comply with s. 30(a) of the Act in that the application does not contain a statement in ordinary commercial terms of the specific wares and services in association with which the Mark is proposed to be used.
(b) Pursuant to s. 38(2)(a) of the Act the application for the Mark does not comply with s. 30(e) of the Act in that, at the date of filing the application, the Applicant never intended itself and/or through a licensee to use the Mark in Canada in association with all of the Wares and Services.
(c) Pursuant to s. 38(2)(a) of the Act the application for the Mark does not comply with s. 30(i) of the Act in that, at the date of filing the application, the Applicant could not have been properly satisfied that it was entitled to use the Mark in Canada having regard to the prior use, registration and making known in Canada and extensive reputation in Canada of the Opponent’s marks, KAMA SUTRA and KAMA SUTRA & Design, design shown below (hereinafter referred to together as the Opponent’s Marks):
(d) The Mark is not registrable pursuant to s. 12(1)(d) of the Act because it is confusing with the Opponent’s registered trade-mark KAMA SUTRA, registration No. TMA277,435 for “cosmetics, namely, face and body creams, bath salts and oils, cleansing lotions and creams, body powders; perfumery, toiletries, emulsions, namely lipstick; nail polish, lotions and body oils, shampoos, bath and beauty soap, beauty aids, namely face and eye make-up, mascara and rouge” (hereinafter referred to as the Opponent’s Registered Mark).
(e) The Applicant is not the person entitled to registration of the Mark since, contrary to s. 16(3)(a) of the Act, prior to and at the date of filing the application, the Mark was confusing with the Opponent’s Marks which the Opponent had previously used or made known in Canada in association with the following wares and services and which had not been abandoned at the date of advertisement for the Mark:
i. Wares: body oil, body cream, body powder, body massage cream, body soap, non-medicated bath salts, massage oils; massage creams; pleasure heightening balm; personal lubricants and balms; clothing, namely lingerie, loungewear, underwear and sleepwear;
ii. Services: retail store services, on-line retail store and wholesale services, featuring skin care items, personal care items, boudoir items, oils, lotions, cosmetics, massage oils, massage creams, bath gels, skin powder, body paint, perfumes, personal lubricants, analgesic balms, aromatic balms, skin moisturizers and conditioners, massage lotions, non-medicated skin care preparations, and clothing.
(f) The Mark is not distinctive because it is not capable of distinguishing the Wares and Services from the wares and services of others, particularly the Opponent’s wares and services set out in (e) above, as well as the following additional wares, provided by the Opponent in association with the Opponent’s Marks:
i. cosmetics, namely, face creams, bath salts and oils, cleansing lotions and creams; perfumery, toiletries, emulsions, namely lipstick; nail polish, lotions, shampoos, bath and beauty soap, beauty aids, namely face and eye make-up, mascara and rouge;
nor is the Mark adapted to distinguish the Wares and Services, particularly having regard to the wide-spread use and reputation of the Opponent’s Marks in Canada.
[5] The Applicant served and filed a counter statement on June 15, 2006 in which it denied the Opponent’s allegations.
[6] In support of its opposition, the Opponent filed an affidavit of Joseph C. Bolstad, sworn May 7, 2007 with Exhibits A through D pursuant to r. 41 of the Trade-marks Regulations SOR/96-195 (the Regulations). The Opponent also filed a second affidavit of Joseph C. Bolstad, sworn June 5, 2008 with Exhibits A and B as well as the affidavit of Darrell Gibbs sworn June 6, 2008 as reply evidence pursuant to r. 43 of the Regulations. Mr. Bolstad was cross-examined only on his first affidavit and the transcript thereof was filed by the Applicant.
[7] In support of its application, the Applicant filed an affidavit of Jane Whittingham, sworn February 6, 2008, with Exhibits A through C.
[8] Both parties filed a written argument. Neither party requested an oral hearing.
Evidence
Opponent’s Rule 41 Evidence: Joseph C. Bolstad, No. 1
[9] Mr. Bolstad has been the President of the Opponent since 1969. Mr. Bolstad provides evidence regarding the use and reputation of the Opponent’s Marks.
[10] In his affidavit, Mr. Bolstad states that the Wares and Services are either products which the Opponent already sells under the Opponent’s Marks or a natural extension of the Opponent’s general area of business, which he labels “romantic giftware”. I accept Mr. Bolstad’s classification of the Opponent’s business as romantic giftware. Based on this classification, Mr. Bolstad expresses his opinion that customers familiar with the Opponent’s romantic giftware would inevitably assume that the Wares and Services also emanate from the Opponent. I cannot place any weight on this statement as it constitutes Mr. Bolstad’s opinion on an issue that goes to the merit of the opposition [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.)].
[11] In cross-examination it was revealed that Mr. Bolstad had wrongly attached particulars of the Opponent’s pending application for KAMA SUTRA & Design as Exhibit A to his first affidavit; he intended to attach particulars of its registration for KAMA SUTRA as set out in his affidavit. Mr. Bolstad rectified this error by entering the registration particulars into evidence as an exhibit to the cross-examination transcript.
[12] Mr. Bolstad’s first affidavit will be discussed in further detail below in the analysis of the s. 12(1)(d) ground of opposition.
Applicant’s Evidence: Jane Whittingham
[13] Ms. Whittingham is a secretary for the Applicant’s agent. Ms. Whittingham attaches to her affidavit copies of the application for the Mark and of the following two registrations owned by the Applicant:
(a) registration No. TMA587,731 for the trade-mark KAMA SUTRA registered for use with “chocolates, candies, chocolate truffles, candied fruit, cookies, coffee, waffles, nuts, and packaged hot chocolate”.
(b) registration No. TMA479,920 for the trade-mark FORBIDDEN PLEASURES/KAMA SUTRA & Design, shown below, registered for use with “chocolates”:
[14] The Applicant’s evidence will be discussed in further detail below in the analysis of the s. 12(1)(d) ground of opposition.
Opponent’s Rule 43 Evidence
[15] The main consideration in determining the acceptability of evidence filed pursuant to r. 43 of the Regulations is whether it is strictly confined to matters in reply to the Applicant’s evidence [see Prouvost S.A. v. Haberdashers Ltd. (1987), 18 C.I.P.R. (3d) 232 (T.M.O.B.)].
[16] The second Bolstad affidavit and the Gibbs affidavit largely relate to issues arising from the cross-examination of Mr. Bolstad on his first affidavit conducted by the Applicant. Case law is clear that, while this was the Applicant’s cross-examination, the transcript therefrom does not constitute evidence of the Applicant to which the Opponent is entitled to answer by way of reply [see MCI Communications Corp. v. MCI Multinet Communications Inc. (1995), 61 C.P.R. (3d) 245 (T.M.O.B.)]. Rule 43 of the Regulations contemplates the filing of evidence strictly confined to matters in reply to the Applicant’s evidence filed pursuant to r. 42 of the Regulations. In my view, the Opponent is unfairly splitting its case by seeking to rely on r. 43 of the Regulations to introduce evidence that should have been filed as part of its evidence in chief.
[17] By contrast, Mr. Bolstad’s comments relating to the alleged invalidity of the Applicant’s registrations at paragraphs 1, 2 and the last sentence of paragraph 3 of his second affidavit constitute proper reply to the Applicant’s evidence as Ms. Whittingham’s affidavit introduces these registrations into evidence.
[18] In the end, I find that the first sentence of paragraph 3 and paragraphs 4 through 6 of Mr. Bolstad’s second affidavit do not form proper reply evidence and shall be disregarded as evidence in the present proceeding. Although I find that paragraphs 1, 2, and the last sentence of paragraph 3 of Mr. Bolstad’s second affidavit constitute proper reply evidence, the validity of the Applicant’s registrations is not at issue in the present opposition and thus I am not placing any weight on these otherwise admissible portions of the second Bolstad affidavit. Ultimately, I will not afford any significance to the entirety of the second Bolstad affidavit.
[19] Finally, I find that the affidavit of Darrell Gibbs, which provides evidence of the use of the Opponent’s Marks, does not form proper reply evidence and I shall disregard its content.
Onus and Material Dates
[20] 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].
[21] The material dates that apply to the grounds of opposition are as follows:
(a) s. 38(2)(a)/30(a), (e), (i) - the date the application for the Mark was filed [see Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (T.M.O.B.) at 475 and Tower Conference Management Co. v. Canadian Exhibition Management Inc. (1990), 28 C.P.R. (3d) 428 at 432 (T.M.O.B.)];
(b) s. 38(2)(b)/12(1)(d) – 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.)];
(c) s. 38(2)(c)/16(3)(a) - the date of filing the application for the Mark [see s. 16(3) of the Act]; and
(d) s. 38(2)(d)/2 - the date of filing the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.)].
Section 30 Grounds of Opposition
Section 30(a) Ground of Opposition
[22] In its written argument, the Opponent submits that it will not be pursuing the ground of opposition based on s. 30(a) of the Act. I dismiss this ground accordingly.
Section 30(e) Ground of Opposition
[23] In its written argument, the Opponent submits that it will not be pursuing the ground of opposition based on s. 30(e) of the Act. I dismiss this ground accordingly.
Section 30(i) Ground of Opposition
[24] The requirement under s. 30(i) of the Act is to include, in the application, a statement that the applicant is satisfied that it is entitled to use the mark in Canada in association with the wares and services. The Applicant provided such a statement in its application.
[25] The Opponent has alleged that the Applicant could not have been satisfied of its entitlement to use the Mark in light of the Opponent’s prior use, registration and making known in Canada and the extensive reputation in Canada of the Opponent’s Marks.
[26] In a situation like the present where the relevant statement is provided, a s. 30(i) ground of opposition should only succeed in exceptional cases, such as where there is evidence of bad faith on the part of an applicant [see Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 at 155 (T.M.O.B.)]. As this is not a case where there is evidence of bad faith, I am dismissing this ground of opposition.
Section 12(1)(d) Ground of Opposition
[27] I have exercised the Registrar’s discretion to confirm that the registration for the Opponent’s Registered Mark is 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 the Opponent’s Registered Mark.
[28] 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.
[29] 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
[30] The parties’ marks are identical and are both made up of the term KAMA SUTRA.
[31] As I may refer myself to a dictionary to determine the meaning of words, I have looked into the Canadian Oxford Dictionary and found the following definition for the term “kama sutra”: a noun meaning “an ancient Sanskrit treatise on the art of erotic love” [see Insurance Co. of Prince Edward Island v. Prince Edward Island Insurance Co. (1999), 2 C.P.R. (4th) 103 (T.M.O.B.)].
[32] The Applicant concedes that the Mark is inherently weak and is not a coined term.
[33] Given that the parties’ marks are identical, the Applicant presumably is of the view that the Opponent’s Registered Mark would also be inherently weak and not a coined term. I agree. Through the first Bolstad affidavit, the Opponent acknowledges that KAMA SUTRA emanates from the 4th century Indian text, “The Kama Sutra of Vatsayayana”.
[34] Based on the foregoing, I assess the inherent distinctiveness of the Mark and the Opponent’s Registered Mark as about the same, although the inherent distinctiveness of the Mark is arguably less than the Opponent’s Registered Mark when considering the Applicant’s wares “candles, scented waxes and oils, …, wax and oil burners; clothing, namely, lingerie, sleepwear, underwear, …; bed linens, namely sheets, pillowcases, cushions, duvets and bed covers”. Indeed, the Mark may be somewhat suggestive of these wares in light of the “erotic” or “romantic” connotations of the dictionary definition for the term “kama sutra”.
[35] 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 parties’ trade-marks have become known in Canada.
[36] The Applicant did not file any evidence directed to the use of the Mark subsequent to the filing of the application. Thus, I am unable to conclude as to the extent to which the Mark has become known.
[37] In his first affidavit, Mr. Bolstad makes the sworn statement that the Opponent has sold products in association with the Opponent’s Registered Mark since at least as early as 1973.
[38] Mr. Bolstad attaches to his first affidavit sample labels for the Opponent’s wares (Exhibit B). I note that the sample labels display the KAMA SUTRA & Design mark. The Opponent is not under a restriction to use the Opponent’s Registered Mark in any particular format by virtue of the fact that the registration is for a word mark. As a result, I find that use of the term “kama sutra” as part of the KAMA SUTRA & Design trade-mark can be considered use of the Opponent’s Registered Mark. Thus, I am satisfied that the labels display the Opponent’s Registered Mark.
[39] In its written argument, the Applicant submits that the labels are undated and should be given no weight accordingly. I disagree. Mr. Bolstad states that the labels are representative of the Opponent’s wares as sold in Canada at the date the affidavit was sworn, namely May 7, 2007. I accept Mr. Bolstad’s statement and find that the sample labels are representative of the way in which the Opponent’s Registered Mark was displayed on the Opponent’s wares as of May 2007.
[40] The Applicant further submits that, since the sample labels attached to Mr. Bolstad’s first affidavit are printed in English only, it cannot be reasonably inferred that they would be used on products sold in Canada. As support for this submission, the Applicant in its written argument refers to s. 5(2) of The Consumer Packaging and Labelling Regulations (C.R.C., c. 417). I would first remark that a French translation is found on the back of the sample labels attached to the first Bolstad affidavit. Furthermore, the Applicant could have questioned Mr. Bolstad on the labels when cross-examining him. Instead, the Applicant chose not to address this issue. In any event, I am far from being convinced that the sample labels attached to Mr. Bolstad’s first affidavit would not be used on products sold in Canada, as submitted by the Applicant.
[41] On cross-examination Mr. Bolstad stated that the Opponent has been selling products in Canada for over 30 years (since the late 1970s).
[42] In his first affidavit, Mr. Bolstad states that, in the five years prior to swearing his affidavit (2001-2006), annual retail sales for products sold by the Opponent in Canada in association with the Opponent’s Registered Mark amounted to approximately $15 million (USD). I acknowledge the Applicant’s submissions that the Opponent has failed to provide a breakdown of the sales figures or any documentation corroborating Mr. Bolstad’s statements regarding the sale of the Opponent’s wares and the alleged sales figures (e.g. invoices, contracts, work orders, etc.). However, when considering the first Bolstad affidavit in its entirety, I do not find the lack of invoices or annual breakdown of sale figures to be detrimental to the Opponent’s case when considering the extent to which I find the Opponent’s Registered Mark has become known in Canada.
[43] In his first affidavit, Mr. Bolstad states that the Opponent advertises and promotes its wares by print, magazine, radio, television, Internet and direct mailing advertisements, sponsorships, trade shows, contests and in-store promotions. Mr. Bolstad states that the Opponent’s annual advertising expenditures for its KAMA SUTRA products in Canada for the five years prior to swearing his affidavit (2001-2006) amounted to at least $75,000 (USD) per year.
[44] Mr. Bolstad attaches to his affidavit representative print advertising materials for the Opponent’s wares (Exhibit C). Mr. Bolstad does not, however, provide any circulation figures for the associated publications. While in his affidavit he states that “the foregoing publications have an enormous circulation … and many are circulated in Canada”, on cross-examination Mr. Bolstad admitted that a number of these publications would likely have little availability in Canada. That said, since Mr. Bolstad states that one of the advertisements attached as Exhibit C is from the November 2005 issue of People Magazine and one is from the November 2005 issue of Cosmopolitan, I note that I am permitted to take judicial notice of the fact that certain magazines, such as People Magazine and Cosmopolitan, have some degree of circulation in Canada [see Timberland Co. v. Wrangler Apparel Corp. (2004), 38 C.P.R. (4th) 178 at 182-4 (T.M.O.B.), Antonio Fusco International S.A. Lussemburgo, Succursale di Lugano v. Fusco Vincenzo, 2005 CarswellNat 2903 (T.M.O.B.)].
[45] Even if I take judicial notice of the circulation of People Magazine and Cosmopolitan, in which two of the 28 advertisements attached to Mr. Bolstad’s affidavit have been published, I note that there are other deficiencies with this general evidence. In particular, I note that in many of the advertisements I am unable to see the Opponent’s Registered Mark or the associated products due to the poor quality of the copies. Furthermore, it is not readily apparent which advertisements emanate from which publications. Finally I note that the document which I understand emanates from Cosmopolitan magazine is in fact a news article which I suspect mentions the Opponent’s products. I say “suspect” as it is of such poor quality that I am unable to read the text. In any event, an article does not constitute advertisement of the Opponent’s Registered Mark [see Williams Companies Inc. et al. v. William Tel Ltd. (2000), 4 C.P.R. (4th) 253 (T.M.O.B.), (Williams)]. Based on the foregoing, I cannot place much weight on the advertising evidence adduced in the first Bolstad affidavit.
[46] I note that some of the other documents classified by Mr. Bolstad as advertisements are also news articles, and thus I cannot rely on them as evidence of use in advertising [see Williams, supra]. I may, however, be permitted to rely on articles of this nature to establish that the Opponent’s Marks have acquired some degree of reputation in Canada [see Williams, supra]. In the present case, however, the extent to which I can make such inferences is limited by the fact that the Opponent has not provided any circulation figures.
[47] In his first affidavit, Mr. Bolstad states that the Opponent also promotes its products through its website at www.kamasutra.com. He attaches photocopies of pages printed from this website which he alleges demonstrate use of the Opponent’s Registered Mark (Exhibit D). I note that the website print outs suggest that customers may purchase the Opponent’s wares from its website. That said, the Opponent has failed to establish that Canadians had visited the website at any time whatsoever, let alone that anyone ever purchased the Opponent’s wares from its website. Again I note that, due to the poor quality of the copies provided, I am unable to see the Opponent’s Registered Mark on the images of products displayed on the website. Furthermore, I note that the law is clear that print outs 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.)].
[48] Based on a review of the evidence as a whole, I am able to conclude that the Opponent’s Registered Mark has become known to some extent.
6(5)(b) – the length of time each has been in use
[49] The Mark was applied for on June 2, 2004 on the basis of proposed use in Canada. The Applicant has not filed any evidence which is directed to the use of the Mark subsequent to the filing of the application.
[50] By contrast, the Opponent’s Registered Mark was registered based on use in Canada since April 1973. By virtue of the Opponent’s registration, I am permitted to assume at least de minimus use of the Opponent’s Registered Mark [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, through the first Bolstad affidavit, that it has used the Opponent’s Registered Mark in Canada since 1973. Ultimately, I am satisfied that the affidavit evidence, which among other things includes a sworn statement by Mr. Bolstad claiming use in Canada of the Opponent’s Registered Mark since at least as early as 1973, shows use of the Opponent’s Registered Mark.
6(5)(c) and (d) – the nature of the wares and/or services and the nature of the trade
[51] When considering the nature of the wares and services and the nature of the trade of the parties, it is the statement of wares and services 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.)].
[52] The Applicant has applied for the Mark in association with the Wares and Services, as follows:
(a) Candles, scented waxes and oils, candle holders, wax and oil burners; potpourri; lamps; jewelry; cups, mugs, drinking glasses, beer mugs; key chains; stickers and decals; decorative accessories for the home; plant pots; cookie tins and jars; cooking ware and utensils; tea trays; spice containers; mirrors; book marks; mouse pads; clothing, namely, lingerie, sleepwear, underwear, tee shirts, aprons; bed linens, namely sheets, pillowcases, cushions, duvets and bed covers; curtains and decorative curtain rods; table cloths; placemats; food products, namely spices, tea, chocolate syrup, maple syrup, fruit syrups, jams, jellies, honey, preserved fruits and vegetables; non-alcoholic beverages, namely carbonated beverages, fruit juices, juice concentrates and bottled water; wine.
(b) Retail sale of giftware, decorative accessories for the home, chocolates, food products and clothes; restaurant services.
[53] The Opponent’s Registered Mark is registered in association with the following wares:
(a) Cosmetics, namely, face and body creams, bath salts and oils, cleansing lotions and creams, body powders; perfumery, toiletries, emulsions, namely, lipstick; nail polish, lotions and body oils, shampoos, bath and beauty soap, beauty aids, namely face and eye make-up, mascara and rouge (the Opponent’s Registered Wares).
[54] In its written argument, the Applicant submits that the Wares and Services are in different general classes than the Opponent’s Registered Wares. I agree. Ultimately, I do not find that there is any direct overlap in the nature of the parties’ wares and services.
[55] While there is no direct overlap in the nature of the parties’ wares, I note that, with respect to the Applicant’s wares “candles, scented waxes and oils, candle holders, wax and oil burners; potpourri”, I find that it is reasonable to infer that these wares could potentially be used together with the Opponent’s Registered Wares. For example, I am of the view that consumers could burn the Applicant’s “candles, scented waxes and oils” while bathing with the Opponent’s “bath salts and oils”. When there is a connection between wares, there may be a likelihood of confusion. Given the potential concurrent uses for these products, they could be considered as being related; thus creating a likelihood that consumers could infer that these products emanate from the same source [see V. Kann Rasmussen Industri A/S v. Linen Chest “Phase II” Inc. (1989), 25 C.P.R. (3d) 252 (T.M.O.B.)].
[56] In its written argument the Opponent submits that when dealing with less expensive goods, customers place more reliance on the associated trade-marks and take less care to ensure that the product they are purchasing emanates from the expected source. The Opponent submits that it is self-evident that the parties’ wares are not particularly expensive and that this fact would increase the likelihood of confusion. I note that there is no evidence of record regarding the price of the parties’ wares and as a result I cannot place any weight on the Opponent’s submissions on this issue.
[57] In his first affidavit, Mr. Bolstad explains that the Opponent sells its wares in Canada through specialty retail stores, such as the Love Boutique, as well as through direct sales, department stores and Internet sales. On cross-examination, Mr. Bolstad stated that the Opponent has sold products under the Opponent’s Registered Mark in high-end, middle range and small stores in Canada.
[58] The Applicant has not provided any evidence as to the nature of its trade. Without any clear overlap in the nature of the parties’ wares and services I am unable to infer any corresponding overlap in the nature of the trade.
6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[59] 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, aff’d. 60 C.P.R. (2d) 70 (F.C.T.D.)].
[60] The marks at issue are identical in appearance, sound and ideas suggested.
Additional Surrounding Circumstance
[61] In its written argument, the Applicant submits that the Opponent’s Registered Mark should be afforded a limited ambit of protection in light of the Applicant’s two other registered trade-marks which include the KAMA SUTRA element, namely, FORBIDDEN PLEASURES/KAMA SUTRA & Design (TMA479,920) and KAMA SUTRA (TMA587,731).
[62] As I understand it, the Applicant’s position is that because it has already obtained two registrations which include the KAMA SUTRA element despite the existence of the Opponent’s Marks, so too should it be permitted to obtain registration for the Mark.
[63] I note that the fact that the Applicant owns these registrations does not give it the automatic right to the registration of the Mark [see Mister Coffee & Services Inc. v. Mr. Coffee, Inc. (1999), 3 C.P.R. (4th) 405 (T.M.O.B.) at 416 and American Cyanamid Co. v. Stanley Pharmaceuticals Ltd. (1996), 74 C.P.R. (3d) 572 (T.M.O.B.) at 576].
[64] Furthermore, given that the Applicant has not provided any evidence of use of these two registered trade-marks, the Applicant is unable to assert rights in a family of KAMA SUTRA marks. Had the Applicant provided evidence of use of these other KAMA SUTRA marks it may have been able to assert ownership of a family of KAMA SUTRA marks which might have operated as an additional circumstance in its favour.
[65] Based on the foregoing I find that this does not form a relevant factor to support the Applicant’s case.
Conclusion re s. 12(1)(d) of the Act
[66] 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, notwithstanding the lack of a direct overlap between the nature of the parties’ wares and services, I find that the extent to which the Opponent’s Registered Mark has become known and the identity of the parties’ marks in terms of sound, appearance and ideas suggested is sufficient to enable me to find that the balance of probabilities is evenly balanced between a finding of confusion between the marks at issue and a finding of no confusion with respect to the wares: “candles, scented waxes and oils, candle holders, wax and oil burners; potpourri”. As discussed above, this finding is based in part on the fact that I am of the view that the above-identified wares could potentially be used by consumers together with the Opponent’s Registered Wares and thus could be seen to be related.
[67] As the onus is on the Applicant to establish on a balance of probabilities that the Mark is not confusing with the Opponent’s Registered Mark, I must decide against the Applicant with respect to the above-identified wares. Based on the foregoing, I find that the ground of opposition based on s. 12(1)(d) of the Act is successful with respect to the above-identified wares.
[68] With respect to the remaining wares and services, I am satisfied that the difference in the nature of the wares and services is sufficient to shift the balance of probabilities in favour of the Applicant. As a result, I am dismissing this ground of opposition with respect to the wares and the services identified in the application, as follows:
Wares: Lamps; jewelry; cups, mugs, drinking glasses, beer mugs; key chains; stickers and decals; decorative accessories for the home; plant pots; cookie tins and jars; cooking ware and utensils; tea trays; spice containers; mirrors; book marks; mouse pads; clothing, namely, lingerie, sleepwear, underwear, tee shirts, aprons; bed linens, namely sheets, pillowcases, cushions, duvets and bed covers; curtains and decorative curtain rods; table cloths; placemats; food products, namely spices, tea, chocolate syrup, maple syrup, fruit syrups, jams, jellies, honey, preserved fruits and vegetables; non-alcoholic beverages, namely carbonated beverages, fruit juices, juice concentrates and bottled water; wine.
Services: Retail sale of giftware, decorative accessories for the home, chocolates, food products and clothes; restaurant services.
Distinctiveness Ground of Opposition
[69] While there is a legal onus on the Applicant to show that the Mark is adapted to distinguish or actually distinguishes its Wares and Services 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.
[70] 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.); Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.); 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.)].
[71] In its written argument, the Opponent submits that as of the date of filing the statement of opposition, the Opponent’s KAMA SUTRA trade-mark had become known in Canada and had acquired distinctiveness. The Opponent submits that its evidence demonstrates that the Opponent had extensively advertised and promoted the Opponent’s goods bearing the KAMA SUTRA mark. The Opponent submits that this is supported by the Opponent’s annual advertising expenditures from 2001 to 2006 of approximately $75,000 (USD) per year. Ultimately, when reviewing the first Bolstad affidavit as a whole, I agree.
[72] While the sample labels attached to Mr. Bolstad’s affidavit are dated after the material date, he has provided sworn statements regarding use of the Opponent’s Marks as well as substantial Canadian sales figures and annual advertising expenditures for the years 2001-2006. These sales figures and advertising expenditures largely predate the material date. The first Bolstad affidavit also includes an advertisement from the January 2006 issue of Corps et Âme a Canadian magazine which features an image of the KAMA SUTRA & Design Mark on the Opponent’s products. I note that the product label in this advertisement from 2006 is essentially identical to the sample labels from 2007 which Mr. Bolstad attached to his affidavit. I note that Mr. Bolstad was cross-examined on this evidence but that the Applicant chose not to ask any questions regarding the sample labels. Based on the foregoing, I find that it is reasonable to infer that the sample labels from 2007 (Exhibit B) are representative of the way in which the Opponent’s Marks were used on the Opponent’s wares at the material date (February 7, 2006).
[73] Based on the foregoing, I find that the Opponent has 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.
[74] As the difference in material dates does not have a significant impact on my previous analysis of the surrounding circumstances under the registrability ground of opposition, I find that with respect to the wares “candles, scented waxes and oils, candle holders, wax and oil burners; potpourri” the balance of probabilities is evenly balanced between a finding of confusion between the marks in issue and a finding of no confusion.
[75] As the onus is on the Applicant to establish on a balance of probabilities that the Mark is not confusing with one or more of the Opponent’s Marks, I must decide against the Applicant with respect to the above-identified wares. Based on the foregoing, I find that the ground of opposition based on s. 38(2)(d) and 2 of the Act is successful with respect to the above-identified wares.
[76] With respect to the remaining wares and services, I note that the difference in the nature of the wares and services is sufficient to shift the balance of probabilities in favour of the Applicant. As a result, I am dismissing this ground of opposition with respect to the wares and services identified in the application as follows:
Wares: Lamps; jewelry; cups, mugs, drinking glasses, beer mugs; key chains; stickers and decals; decorative accessories for the home; plant pots; cookie tins and jars; cooking ware and utensils; tea trays; spice containers; mirrors; book marks; mouse pads; clothing, namely, lingerie, sleepwear, underwear, tee shirts, aprons; bed linens, namely sheets, pillowcases, cushions, duvets and bed covers; curtains and decorative curtain rods; table cloths; placemats; food products, namely spices, tea, chocolate syrup, maple syrup, fruit syrups, jams, jellies, honey, preserved fruits and vegetables; non-alcoholic beverages, namely carbonated beverages, fruit juices, juice concentrates and bottled water; wine;
Services: Retail sale of giftware, decorative accessories for the home, chocolates, food products and clothes; restaurant services.
Entitlement Grounds of Opposition
[77] 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-marks alleged in support of its ground of opposition based on s. 16(3)(a) of the Act were being used or made known at the date of filing the application (June 2, 2004) and had not been abandoned at the date of advertisement of the application, namely, September 7, 2005 [s. 16(5) of the Act].
[78] The Opponent has filed the first Bolstad affidavit as evidence of use of the Opponent’s Marks. Through this affidavit, the Opponent claims use of the Opponent’s Marks since at least as early as 1973. The specimens of use annexed to the first Bolstad affidavit are current to the date he swore his affidavit, namely May 2007. In reviewing the first Bolstad affidavit, I was unable to find an advertisement predating the material date which featured the Opponent’s Marks on the Opponent’s products. As a result, I am unable to make the same inference made for the non-distinctiveness ground of opposition regarding the sample labels from 2007. Ultimately, while I have sales figures and sworn statements with respect to use of the Opponent’s Marks prior to the material date, I have no evidence to support a finding that the Opponent’s Marks were made known or in use in compliance with s. 4 of the Act in association with the Opponent’s wares at the material date (June 2, 2004).
[79] 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 ground of opposition based on s. 16(3)(a) of the Act accordingly.
Disposition
[80] Pursuant to the authority delegated to me under s. 63(3) of the Act, I refuse application pursuant to s. 38(8) of the Act with respect to the wares “candles, scented waxes and oils, candle holders, wax and oil burners; potpourri” and I reject the opposition with respect to the remainder of the wares and services pursuant to s. 38(8) of the Act [see Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 C.P.R. (3d) 492 (F.C.T.D.) as authority for a split decision].
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office