IN THE MATTER OF OPPOSITIONS by Stravina Operating Company, LLC and IMPULSE! ULC to application Nos. 1167752 and 1167753 for the trade-marks IMPULSE! & Co. (and Design) and IMPULSE filed by Deejay Jewellery Inc./Bijouterie Deejay Inc.
On February 12, 2003, Deejay Jewellery Inc./Bijouterie Deejay Inc. (“the Applicant”) filed applications to register the trade-marks IMPULSE! & CO. (and Design), shown below, and IMPULSE (“the Marks”).
The applications are based upon use in Canada since June 1993 for the following wares:
“Fashion jewellery, namely necklaces, bracelets, rings, earrings, pin broaches, toe rings, anklets and body jewellery; hair accessories, namely barrettes, head bands, head wraps, ponytail holders, elastics, combs, twisters, jaw clips and clips; novelty items, namely key chains, lip gloss, nail polish, pouches, purses and wallets.”
Both applications were advertised on December 10, 2003.
Stravina Operating Company, LLC and IMPULSE! ULC (“the Opponents”), filed a statement of opposition against both applications on May 10, 2004. The grounds of opposition are pleaded as follows:
1. The application does not comply with section 30 of the Trade-marks Act, R.S.C. 1985 c. T-13 (“the Act”). In particular, it does not comply with s. 30(i) of the Act in that the Applicant could not have been satisfied that it is entitled to use the trade-mark in Canada in association with the wares described in the application. In addition, the application does not comply with the requirements of Section 30 as the Applicant has not used the trade-mark within the meaning of Section 4 of the Act in association with the wares covered by the application since the date claimed in the application.
2. The Applicant is not the person entitled to registration of the trade-mark pursuant to s.16 of the Act. In particular, the Applicant is not the person entitled to registration of the trade-mark in that, as of the date on which it first actually used the trade-mark, the trade-mark was confusing with the Opponents’ trade-marks and corporate and trade name that had previously been used and made known in Canada by the Opponents; and
3. For the reasons set forth above, the trade-mark is not distinctive of the Applicant within the meaning of section 2 of the Act.
The Applicant filed and served a counter statement in each opposition. As its evidence in each case, the Opponents filed the affidavits of Scott Davis and Barbara Rupcic. The Applicant’s evidence in each case consisted of the statutory declarations of David Rothschild, John Assaly, Joseph Remer, Benoit Guilbault and Eric Lavallé. Both parties filed a written argument in each case. An oral hearing was not conducted.
Onus
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 Opponents 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).
Summary of the Opponents’ Evidence
Davis affidavit
Mr. Davis states that he is the General Manager of Impulse! ULC, a company that was incorporated under the laws of Ontario on May 12, 1995. He has held this position since April 3, 2004, and states that he is responsible for all business aspects of operating Impulse! ULC. He explains that all the information set out in the affidavit is within his personal knowledge or has been verified by him in his company’s records.
Mr. Davis explains that his company is a wholly owned subsidiary of Stravina International Holding Company (“Stravina International”), which is a subsidiary of Stravina Operating Company LLC (“Stravina”). He further explains that his company has been granted a license by Stravina to use its IMPULSE! trade-mark through which Stravina has direct or indirect control of the character or quality of the wares associated with the mark.
Mr. Davis goes on to state that since the date of incorporation, i.e. May 12, 1995, his company has been using the trade-mark and trade-name IMPULSE! in association with his company’s business which includes the manufacturing, distribution and sale in Canada of hair accessories, jewellery, stationery, personalized items, pet accessories, children’s novelty items, souvenirs, party items, party accessories, decorations and costumes (“the Business”). He also states that his company has been using Stravina’s trade-mark in Canada in association with hair accessories, jewellery, stationery, personalized items, pet accessories, children’s novelty items, souvenirs, party items, party accessories, decorations and costumes (“the Wares”) since 1995.
He explains at paragraph 13 that Stravina’s trade-mark and his company’s corporate name and trade-name have been used since 1995 directly in relation to the Wares and the Business at exhibits, trade shows, road shows and seminars of his company and in advertising for same on signage, advertising, business cards and place cards and also directly on the Wares and on packaging and labels for the wares. Attached as Exhibit B to his affidavit is a copy of material evidencing such alleged use. His company’s revenues in association with the Business have been between $8.5 and $10.6 million between 2002 and 2004. A breakdown of such sales figures has not been provided. He states that his company sells Wares in association with the IMPULSE! trade-mark to customers in all provinces across Canada including Wal-mart, Zellers, Toys R Us, London Drugs and Bestbuy. Numerous examples of promotional and advertising materials relating to his company’s business and the IMPULSE! trade-mark, which have been distributed and used by his company since its incorporation, have been attached as Exhibit C.
Rupcic Affidavit
Ms. Rupcic identifies herself as President of Stravina Personalized, a division of Stravina. She explains that her company is the sole shareholder of Stravina International, and that Stravina International owns all the issued and outstanding shares of Impulse! ULC. She states that her company has used the trade-mark IMPULSE in Canada either by itself or through its subsidiary, IMPULSE! ULC, in association with hair accessories, jewellery, stationery, personalized items, pet accessories, children’s novelty items, souvenirs, party items, party accessories, decorations and costumes. She explains that her company has granted a license to Impulse! ULC to use the IMPULSE mark through which license her company has direct or indirect control of the character or quality of the wares associated with Stravina’s marks.
Summary of the Applicant’s Evidence
In his solemn declaration, Mr. Rothschild declares the following:
3. Deejay has been in the business of importing and selling fashion jewellery, hair accessories and novelty items since at least as early as April 6, 1981, predominantly in Canada.
- In 1993, Deejay coined the term IMPULSE for use as a trade-mark, in Canada and elsewhere, in association with fashion jewellery, hair accessories and novelty items (“the Products”).
- Soon after, Deejay added IMPULSE! & CO. & Design to its portfolio of trade-marks for use as a trade-mark, in Canada and elsewhere in connection with the Products. Registration of the IMPULSE! & CO. & Design trade-mark has been applied for, in Canada, under serial number 1,167,752.
- Since then, Deejay has been continuously selling, in the ordinary course of business, its line of IMPULSE Products in all provinces of Canada to a multitude of retail customers.
7. Since inception, Deejay has continually developed and expanded the scope of its product lines for the Products sold under its IMPULSE trade-mark.
Mr. Rothschild also states that the Applicant has spent in excess of $600,000 from 1995-2004 on the advertising and promotion of Products sold in association with the Marks. The sales figures of Products bearing the Marks from 1998 to 2004 are quoted to have been $6,840,000. Mr. Rothschild also provides a breakdown of annual sales of Products bearing the Marks to have been between $880,000 and $1,346,000 between 2000 and 2004.
Mr. Rothschild has also attached to his affidavit numerous examples of use of the Marks in association with the applied for wares. Some of the exhibits attached include cards, labels, packaging, invoices and catalogues, all of which clearly show use of the Marks in association with many of the applied for wares.
All of the remaining statutory declarations submitted by the Applicant were affirmed between February and March 2005. Each of the Applicant’s other deponents vaguely state that they have been either selling the Applicant’s IMPULSE merchandise or printing cards bearing the Applicant’s IMPULSE marks “for approximately a decade” or “for many years”. Although the Applicant’s deponent Mr. Assaly affirms that he has been buying the Applicant’s “line of products” since 1993, he specifically states at paragraph 4 of his statutory declaration that “the IMPULSE and IMPULSE! & CO. & Design line of Deejay’s can be found in all of our stores on a continuous and consistent basis for well over a decade”.
Section 30(b) Ground of Opposition
The Opponents have pleaded that the applications do not comply with the provisions of s. 30(b) of the Act, in that the alleged Marks have not been used in Canada in association with the wares described in the application since the date first claimed (i.e. June, 1993).
The initial evidential burden on an opponent respecting its allegations of fact in support of a s. 30(b) ground is lighter, since information concerning an applicant’s date of first use is most accessible to the applicant (see Tune Masters v. Mr. P's Mastertune Ignition Services Ltd. (1986), 10 C.P.R. (3d) 84 (T.M.H.O.) at 89). This burden may be met by reference not only to the opponent’s evidence but also to the applicant's evidence (Labatt Brewing Co. v. Molson Breweries, a Partnership (1996), 68 C.P.R. (3d) 216 at 230 (F.C.T.D)).
From the evidence furnished, I am satisfied that the Opponents have met their light burden under s. 30(b) of the Act. In this regard, while Mr. Rothschild states that the Applicant “coined” the term IMPULSE “in 1993”, it is not clear from the language in his affidavit as to when the Applicant started using the Marks in association with the applied for wares. In any case, applying the current office practice in examination, the non-specific reference to “1993” would have to be interpreted as December 31, 1993, which is later than the actual claimed date of first use (i.e. June, 1993) (see also Jofa AB v. Jofama Aktiebolag (1980), 63 C.P.R. (2d) 158 (T.M.O.B.)). Further, Mr. Rothschild only provides sales figures of wares sold in association with the Marks dating back to 1998. While Mr. Rothschild explains at paragraph 24 of his affidavit that it is not the business practice of the Applicant to retain or archive the bulk of its invoices, purchase orders, or advertising materials for more than six years from the date upon which they issue or were created, this does not explain why he was unable to provide sales figures to support his claimed date of first use of June, 1993. Finally, none of the Applicant’s other deponents refer to any use of the Applicant’s Marks in 1993 but instead use vague language which suggests that use of the Applicant’s Marks in association with the applied for wares began closer to 1995 than 1993.
In view of the above, the Opponents have satisfied the evidential burden on them to establish that the application does not conform to s.30(b) of the Act since there is no clear evidence of use of the Marks by the Applicant in association with the applied for wares as of the claimed date of first use. As the Applicant has failed to establish on a balance of probabilities that either of its applications comply with s. 30(b) of the Act, the s.30(b) grounds of opposition therefore succeed in each case.
Section 30(i) Ground of Opposition
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/services. Such a statement has been provided in both trade-mark applications. Where an applicant has provided the statement required by s. 30(i), a s. 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant (Sapodilla Co. Ltd. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152 (T.M.O.B.) at 155). As this is not such a case, I am dismissing this ground of opposition in each case.
Section 16 Grounds of Opposition
The Opponents have pleaded that the Applicant is not the person entitled to registration because the Applicant’s Marks are confusing with the Opponents’ IMPULSE and IMPULSE! marks and corporate and trade-name that had been previously used and made known in Canada by the Opponents.
The material date for determining the likelihood of confusion regarding an applicant’s use-based wares would typically be the claimed date of first use (s. 16(1)). However, where an opponent has successfully challenged an applicant’s claimed date of first use under a s. 30(b) ground of opposition, the material date for assessing a s. 16(1) ground of opposition becomes the applicant’s filing date (see American Cyanamid Co. v. Record Chemical Co. Inc. (1972), 6 C.P.R. (2d) 278 (T.M.O.B.); Everything for a Dollar Store (Canada) Inc. v. Dollar Plus Bargain Centre Ltd. (1998), 86 C.P.R. (3d) 269 (T.M.O.B.)). Accordingly, the material date for determining the likelihood of confusion with respect to the wares identified above is February 12, 2003. The initial burden on the Opponents, therefore, is to evidence use of the IMPULSE! trade-marks and or trade-name prior to February 12, 2003, and non-abandonment of their marks and or name as of the date of advertisement of the Applicant’s Marks.
The Applicant’s agent submitted detailed written arguments regarding “unexplained contradictions and discrepancies” in the Opponents’ evidence. As noted above, however, all the Opponents have to show to meet their burden under either of the s.16 grounds is that the Opponents’ trade-marks and/or trade name had been used or made known in Canada prior to the Applicant’s date of filing (i.e. Feb. 12, 2003) and not abandoned.
From the evidence furnished, I am satisfied that at the very least, the Opponents have shown use of the trade-name IMPULSE! in association with the business of the manufacturing, distribution and sale in Canada of hair accessories, jewellery, novelty items, and other wares, as well as non-abandonment of such trade-name at the date of advertisement of the Applicant’s applications. In this regard, Mr. Davis clearly states in his affidavit that his company has been using the trade-name IMPULSE! with the Business since his company’s incorporation in 1995. He explains at paragraph 13 of his affidavit that his company’s trade-name has been used since 1995 at exhibits, trade-shows, road shows and seminars of his company and in advertising for same on signage, advertising, business cards and place cards and also directly on the Wares and on the packaging and labels for the Wares. Attached as Exhibit B to his affidavit are many examples illustrating such use of his company’s trade-name. Although many of the samples of packaging of wares provided by IMPULSE! ULC show different trade-marks on the front of such packages (eg. STRAVINA), almost all of them clearly state “distributed by impulse! (which is in a distinctive bold and stylized font)” on the back. Although the words “Personalized for you” also appear below the IMPULSE! name, since the font for such words is so small, it is barely visible under the name IMPULSE! For this reason, I am satisfied that a purchaser of the wares would perceive and identify the trade-name as IMPULSE!
The Opponents have therefore met their burden under the s. 16(1)(c) ground.
This ground therefore turns on a determination of the issue of confusion between the Applicant’s Marks and the Opponents’ name. This is a somewhat unusual case in that the Applicant has admitted in its counter statement in both cases that the Opponents’ marks are confusing with the Applicant’s Marks.
In each counter statement, the Applicant stated the following:
The applicant denies the allegations set out in paragraph 4 b. of the Statement of Opposition and asserts that the Applicant is the person entitled to registration of the mark pursuant to s.16 of the Act. The Applicant commenced using the trade-mark in commerce in Canada prior to any purported use being made by the opponent of its alleged IMPULSE trade-marks. As such, the trade-mark was not confusing, as of the date of its first use in commerce in Canada and as at the date of filing of the application for its registration, with the trade-marks alleged to be used by the opponent in its statement of opposition. In fact, the alleged use of any IMPULSE trade-marks by the opponent (of which the applicant has no knowledge) creates confusion or the likelihood thereof, with the trade-mark of the applicant.
I consider that I have the authority to consider this admission made by an Applicant in its counter statement (Société nationale Elf Aquitaine v. Spex Design Inc.(1988), 22 C.P.R. (3d) 189 (T.M.O.B.)). However, even if the Applicant had not made such admission in its counter statements, having regard to all of the surrounding circumstances specifically enumerated in s. 6(5) of the Act, I would have reached the same conclusion that there is a likelihood of confusion between the Marks and the Opponents’ trade-name because the Opponents’ trade-name is almost identical to both of the Applicant’s Marks and is used in association with the business of manufacturing and distributing almost identical wares. The s. 16(1)(c) ground is therefore successful.
Remaining Grounds of Opposition
In view that the Opponents have already succeeded in both cases with respect to two grounds of opposition, I do not consider it necessary to decide the remaining grounds of opposition. I would like to add, however, that had the Opponents not been successful under the s. 30(b) ground of opposition, the outcome of both s.16 grounds would likely have been different in view of the earlier material date.
Disposition
Having been delegated by the Registrar of Trade-marks by virtue of s. 63(3) of the Act, I refuse
the applications pursuant to s. 38(8).
DATED AT Gatineau, Quebec, THIS 23rd DAY OF February, 2009.
Member