IN THE MATTER OF AN OPPOSITION by Canadian Jewellers Association to application No. 1,212,232 for the trade-mark THE CANADIAN DIAMOND REPORT THE MARK OF A DIAMOND THAT IS MINED, CUT AND POLISHED IN CANADA & Design filed by Worldwide Diamond Trademarks Limited_______
On April 5, 2004, Worldwide Diamond Trademarks Limited (the “Applicant”) filed an application to register the trade-mark THE CANADIAN DIAMOND REPORT THE MARK OF A DIAMOND THAT IS MINED, CUT AND POLISHED IN CANADA & Design (the “Mark”) based upon use of the Mark in Canada since at least April 2001 in association with:
• diamonds; diamond certificates and diamond appraisals; diamond cloths, magnifying loops; point of purchase countertop displays; posters; pens (the “Wares”)
• diamond appraisal services (the “Services”).
The Mark is shown below:
Although it is not evident from the above reproduction, the design that follows the word REPORT is not the Canadian flag; instead that design resembles a Canadian flag in which the maple leaf has been replaced by a representation of a cut diamond.
The Applicant has disclaimed the right to the exclusive use of the words CANADIAN DIAMOND, DIAMOND, CUT, POLISHED and CANADA apart from the Mark. The Applicant has also disclaimed the right to the exclusive use of A DIAMOND THAT IS MINED, CUT AND POLISHED IN CANADA in respect of the wares “diamonds” apart from the Mark.
The application was advertised for opposition purposes in the Trade-marks Journal of September 14, 2005. On November 9, 2005, Canadian Jewellers Association (the “Opponent”) filed a statement of opposition.
The Applicant filed and served a counter statement in which it denied the Opponent’s allegations.
In support of its opposition, the Opponent filed the affidavits of Sampat Poddar and Linda Soriano. In support of its application, the Applicant filed the affidavit of Itay Ariel. In reply, the Opponent filed the affidavit of Marta Tandori Cheng. None of the affiants was cross-examined.
Only the Applicant filed a written argument. An oral hearing was not held.
Onus
The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Trade-marks Act, R.S.C. 1985, c. T-13 (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 30(a) Ground of Opposition
The Opponent has pleaded that contrary to s. 30(b) of the Act, the application does not correctly state the date from which the Applicant, or the Applicant’s predecessor-in-title, if any, has used the alleged trade-mark in Canada in association with the Applicant’s Wares and Services, and furthermore the Applicant or the Applicant’s predecessor-in-title, if any, did not in fact use the alleged trade-mark in association with the Applicant’s Wares and Services as of or before the first date alleged in the application, namely April 2001.
The Opponent’s initial onus with respect to s. 30(b) is not a heavy one, given that information concerning the Applicant’s use is best known to the Applicant [Tune Masters v. Mr. P's Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.H.O.) at 89]. In the present case, the Opponent has introduced two types of evidence directed to the s. 30(b) allegation.
First, the Opponent has provided incorporation documents showing that the Applicant was incorporated in July 2003. However, the Applicant has responded to this by obtaining leave to amend its application to rely upon use of its predecessor-in-title, H.R.A. Investments Ltd. (“HRA”). In addition, the Applicant’s Marketing Director, Mr. Ariel, has attested that the Applicant and HRA are both wholly owned subsidiaries of Wallace Holdings Ltd. and that the Applicant was incorporated in July 2003 for the purpose of holding HRA’s trade-mark interests, including the Mark, all of which were assigned to the Applicant on October 31, 2003 (the Mark being assigned by way of an unwritten oral agreement). HRA was simultaneously granted an exclusive license to use the Mark in Canada. Mr. Ariel (who is also HRA’s Marketing Director) attests that the Applicant retains full control over the character and quality of the Wares and Services in association with which the Mark is used, by virtue of both the oral license and the fact that that HRA and the Applicant are owned by the same parent company.
Second, the Opponent has provided historical copies of HRA’s websites, which do not display the Mark. However, as pointed out by the Applicant in its written argument, the Applicant has not claimed that it has used the Mark on websites. Instead, Mr. Ariel has attested that the Mark has been used on point of sale advertising by retailers of HRA’s Wares and Services, including counter-top displays and banners since April 2001 (a representation of which has been provided as Exhibit A).
In view of the foregoing, the Opponent has not met its initial burden under s. 30(b) and that ground therefore fails.
Section 30(a) Ground of Opposition
The Opponent has pleaded that contrary to s. 30(a) of the Act, the application does not contain a statement in ordinary commercial terms of the specific wares or services in association with which the Mark has been allegedly used.
This ground is dismissed because the Opponent has filed neither evidence nor argument in its support. The Opponent has therefore not met its initial burden.
Section 12(1)(b) Ground of Opposition
The Opponent has pleaded that contrary to s. 12(1)(b) of the Act, the Mark, when depicted, written or sounded, is either clearly descriptive or deceptively misdescriptive of the character or quality of the wares or services in association with which the Mark is allegedly used.
The issue as to whether the Applicant’s Mark is clearly descriptive must be considered from the point of view of the average purchaser of the associated wares/services. Furthermore, the Mark must not be dissected into its component elements and carefully analyzed but must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25 (F.C.T.D.) at 27-8; Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183 (F.C.T.D.) at 186]. Character means a feature, trait or characteristic of the product and “clearly” means “easy to understand, self-evident or plain” [Drackett Co. of Canada Ltd. v. American Home Products Corp. (1968), 55 C.P.R. 29 (Ex. Ct.) at 34].
The material date that applies to this ground of opposition is the filing date of the application, April 5, 2004 [see Shell Canada Limited v. P.T. Sari Incofood Corporation (2005), 41 C.P.R. (4th) 250 (F.C.T.D.); Fiesta Barbeques Limited v. General Housewares Corporation (2003), 28 C.P.R. (4th) 60 (F.C.T.D.)].
The Opponent’s evidence concerning the descriptiveness of the Mark may be summarized as follows.
Ms. Soriano has provided various pages from the Internet regarding “Canadian Diamonds” but I can disregard this evidence on the basis that it is all dated about two years after the material date.
Mr. Poddar, a director of the Opponent, states that the Opponent is a national non-profit organization representing over one thousand Canadian jewellers, which promotes standards and ethics for its members. Mr. Poddar provides the following evidence concerning “Canadian diamonds”:
• In 2001, the Competition Bureau of Canada published guidelines to prevent misleading representations to the marketing of “Canadian diamonds”, stipulating that for a diamond to be advertised as a “Canadian diamond” it must be mined or harvested in Canada, and that foreign mined diamonds, although cut and polished in Canada, may not qualify as a “Canadian diamond”.
• In 2002, in conjunction with mining and manufacturing representatives, the RCMP, the Competition Bureau of Canada and Jewellers Vigilance of Canada, the Opponent published the Voluntary Code of Conduct for Authenticating Canadian Diamond Claims (the “Canadian Diamond Code”). Pursuant to this code, cutters/polishers are obliged to provide a polished diamond description or report at the time of sale of “Canadian diamonds”. Also pursuant to this code, jewellers purchasing cut and polished “Canadian diamonds” for resale are obliged to provide a polished diamond certificate or report. Accordingly, manufacturers and jewellers who sell “Canadian diamonds” in Canada in compliance with the Canadian Diamond Code include a certificate or report with each “Canadian diamond” sold. As Exhibit “F”, Mr. Poddar provides advertisements of diamonds that use the phrase “mined, cut and polished in Canada” (some of the ads predate April 5, 2004). The ads also show three different certificates that accompany different parties’ diamonds.
The evidence of the Applicant that is directed to this ground of opposition appears in paragraph 11 of Mr. Ariel’s affidavit:
…[the Applicant] does not dispute the fact that, as evidenced in the opponent’s affidavits, the phrases “Canadian diamonds” and “mined, cut and polished in Canada” are used in the Canadian diamond industry. However, neither of these affidavits evidence any use of the [Mark] in the Canadian diamond industry, and I am not aware of any commercial usage, common or otherwise, in the Canadian diamond industry of the [Mark], as a trade-mark or otherwise, other than the use of the [Mark] by [the Applicant] in Canada, through its licensee
Mr. Ariel also attests that the Applicant’s licensee and his family have had substantial involvement in developing industry policies and standards and that the licensee was a cofounding member of the Canadian Diamond Code of Conduct. I note that HRA Investments Ltd. appears in Exhibit “D” to the Poddar affidavit, as a non-retailer signatory to the Canadian Diamond Code.
Basically, the parties agree that the term “Canadian diamond” has a certain defined meaning and that both “Canadian diamond” and the phrase “mined, cut and polished in Canada” are common to the industry. Another way to put it is that these words are descriptive, and this is reflected in the disclaimers filed by the Applicant. The question therefore becomes whether the other features that the Applicant has added to these words result in a mark that is not as a matter of first impression clearly descriptive. (As an aside, I note that the Opponent’s allegation of descriptiveness is not dependent on there being evidence that others in the industry use the Mark.)
The key additions made to the descriptive words CANADIAN DIAMOND MINED, CUT AND POLISHED IN CANADA are the flag-like design and the word “report”. I find that these additional features do not render the Mark as a whole not clearly descriptive for the following reasons.
First of all, the flag-like design is not the dominant portion of the Mark and does not prevent the Mark from being clearly descriptive when sounded. [Best Canadian Motor Inns Ltd. v. Best Western International, Inc. (2004), 30 C.P.R. (4th) 481 (F.C.T.D.)] Even if the flag-like logo was the dominant feature, it would not render the Mark registrable because the design itself describes the associated wares/services as being related to “Canadian diamonds”, given that it is clearly recognizable as a Canadian flag in which the maple leaf has been replaced by a diamond. [Re designs being clearly descriptive see Ralston Purina Co. v. Effem Foods Ltd. (1990), 31 C.P.R. (3d) 52 (T.M.O.B.)]
Secondly, the word “report” in the phrase “The Canadian Diamond Report” is also descriptive as it indicates that the diamond is supported by a report (which, as noted earlier, is a requirement of the Canadian Diamond Code).
The Applicant submits that the unique phraseology and combination of words in the Mark does not as a whole clearly describe any intrinsic characteristic or quality of the Applicant’s Wares and Services. However, I disagree since the overall effect of the words is simply to indicate that the Wares and Services relate to “Canadian diamonds”, namely diamonds that are minded, cut and polished in Canada.
Considering the Mark in its entirety as a matter of immediate impression, I conclude that the Mark would be perceived by the ordinary diamond consumer as clearly describing that the associated wares and services relate to “Canadian diamonds”, namely diamonds that were mined, cut and polished in Canada. Thus the Mark is not registrable on the basis that it is as a whole clearly descriptive of the Applicant’s Wares and Services. (In the event that the Applicant’s Wares/Services did not relate to “Canadian diamonds”, then the Mark would be unregistrable on the basis that it is deceptively misdescriptive.)
The s. 12(1)(b) ground of opposition is accordingly successful.
I note that the Applicant did not attempt to overcome the s. 12(1)(b) objection through reliance on s. 12(2).
Distinctiveness Ground of Opposition
A mark that is clearly descriptive is necessarily not inherently distinctive. In the present case, there is insufficient evidence to find that the Applicant’s Mark had become distinctive through substantial use or promotion. Accordingly, the Opponent’s distinctiveness ground of opposition also succeeds.
Remaining Grounds of Opposition
As I have already refused the application pursuant to two grounds, I will not address the remaining grounds.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse the application pursuant to s. 38(8) of the Act.
DATED AT TORONTO, ONTARIO, THIS 11th DAY OF MARCH 2009.
Jill W. Bradbury
Member
Trade-marks Opposition Board