LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 231
Date of Decision: 2012-11-30
IN THE MATTER OF AN OPPOSITION by Research In Motion Limited to application No. 1,330,420 for the trade-mark PEARLRING in the name of LG Electronics Inc.
[1] On January 8, 2007, LG Electronics Inc. (the Applicant) filed an application to register the trade-mark PEARLRING (the Mark) based on proposed use in Canada in association with the wares “printers for use with computers; semi-conductors; television receivers; TV sets; facsimile machines; camcorders; USB (Universal Serial Bus) cables; video tape recorders; microphones; digital video disc players; MPEG audio player-3 (MP3) players; speakers; compact disc players; digital cameras; blank audio-video compact discs; head cleaning tapes for recorders” (the Wares).
[2] The application was advertised for opposition purposes in the Trade-marks Journal of May 21, 2008.
[3] On July 21, 2008, Research In Motion Limited (the Opponent) filed a statement of opposition. The grounds of opposition can be summarized as follows:
• pursuant to sections 38(2)(a) and 30 of the Trade-marks Act, RSC 1985, c. T-13 (the Act), the Applicant could not have been satisfied that it is entitled to use the Mark in Canada in association with the Wares since at the date of filing the application the Applicant was, or should have been, aware of the Opponent’s previous use in Canada of the trade-marks PEARL (filed on July 10, 2006 under application No. 1,308,468) and BLACKBERRY PEARL (filed on July 10, 2006 under application No. 1,308,467);
• pursuant to sections 38(2)(a) and 30 of the Act, the Applicant does not intend to use the Mark in Canada in association with the Wares;
• pursuant to sections 38(2)(c) and 16(3)(a) of the Act, the Applicant is not the person entitled to registration of the Mark because as of the date of filing the application the Mark was confusing with the trade-marks PEARL and BLACKBERRY PEARL that had been previously used and made known in Canada in association with at least the following wares and services: “electronic handheld units and accessories, namely, batteries, car kits, chargers, head sets, belt clips/holsters, cases, battery covers and docking/charging cradles for the wireless receipt and/or transmission of data and which may also have the capability to transmit and receive voice communications; software for the transmission and/or reception of messages, global computer network e-mail, and/or other data between one or more electronic handheld units and a data store on or associated with a personal computer or a server; software for the synchronization of data between a remote station or unit and a fixed or remote station or unit and software which enables and provides one-way and/or two-way wireless connectivity to data, namely corporate data; email service; wireless data messaging services, particularly services that enable a user to send and/or receive messages through a wireless data network; one-way and two-way paging services; transmission and reception of voice communication services” (the Opponent’s Wares and Services);
• pursuant to sections 38(2)(c) and 16(3)(b) of the Act, the Applicant is not entitled to registration of the Mark because at the date of filing the application the Mark was confusing with the trade-marks PEARL and BLACKBERRY PEARL in respect of which applications for registration had previously been filed on July 10, 2006 under Nos. 1,308,468 and 1,308,467, respectively, in Canada by the Opponent in association with the Opponent’s Wares and Services. These applications were pending as of May 21, 2008;
• pursuant to sections 38(2)(d) and 2, the Mark is not distinctive by reason of the fact that the Mark does not actually distinguish the Wares from the wares and services of others, including the Opponent’s Wares and Services sold in association with the Opponent’s trade-marks PEARL and BLACKBERRY PEARL, nor is the Mark adapted so as to distinguish the Wares therefrom.
[4] The Applicant served and filed a counter statement in which it denied the Opponent’s allegations and put the Opponent to the strict proof thereof.
[5] In support of its opposition, the Opponent filed affidavits of Robert T. Brockbank, a private investigator, sworn December 22, 2008, Robert W. White, Senior Vice President of the Audit Bureau of Circulations which provides circulation figures for media publications, sworn January 16, 2009 with Exhibits A – K and Mark Guibert, Vice President of Corporate Marketing for the Opponent, sworn January 15, 2009 with Exhibits MG1 – MG34. The Opponent also filed certified copies of the following registrations and applications: application Nos. 1,308,468 (PEARL), 1,308,467 (BLACKBERRY PEARL), registration Nos. TMA638,068 (BLACKBERRY), TMA554,207 (BLACKBERRY).
[6] The Applicant did not file any evidence in support of its application.
[7] Only the Applicant submitted a written argument and no oral hearing was held.
Onus and Material Dates
[8] The Applicant bears the legal onus of establishing, on a balance of probabilities, that its application complies with the requirements of the Act. However, there is an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist [see John Labatt Limited v. The Molson Companies Limited (1990), 30 CPR (3d) 293 (FCTD) at 298].
[9] The material dates that apply to the grounds of opposition are as follows:
• sections 38(2)(a)/30(e) and (i) - the date of filing the application [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 at 475 (TMOB) and Tower Conference Management Co v Canadian Exhibition Management Inc (1990), 28 CPR (3d) 428 at 432 (TMOB)].
• sections 38(2)(c)/16(3)(a) and (b) – the date of filing the application [see section 16(3) of the Act].
• sections 38(2)(d)/2 - the date of filing of the opposition [see Metro-Goldwyn-Mayer Inc. v. Stargate Connections Inc. (2004), 34 CPR (4th) 317 (FC)].
Section 30 Grounds of Opposition
Non-compliance with section 30(e) of the Act
[10] Since the application contains a statement that the Applicant by itself or through a licensee intends to use the Mark in Canada, it formally complies with section 30(e) of the Act.
[11] The Opponent failed to include any allegations of fact in support of its allegation that the Applicant did not intend to use the Mark in Canada for the Wares. Further, there is no evidence of record to suggest a lack of intention to use the Mark on the part of the Applicant. As a result, I dismiss the ground of opposition based upon non-compliance with section 30(e) for having been insufficiently pleaded or alternatively for the Opponent having failed to meet its evidential burden.
Non-compliance with section 30(i) of the Act
[12] Where an applicant has provided the statement required by section 30(i), a section 30(i) ground should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. The Applicant has provided the necessary statement and this is not an exceptional case; the section 30(i) ground is accordingly dismissed.
Non-entitlement Grounds of Opposition
[13] Throughout my discussion of the evidence as it applies to the analysis of the grounds of opposition, I will not refer to or place any weight on any statements made by any of the affiants which constitute opinions on issues that go to the merit of the opposition [see British Drug Houses Ltd v Battle Pharmaceuticals (1944), 4 CPR 48 at 53 and Les Marchands Deco Inc v Société Chimique Laurentide Inc (1984), 2 CPR (3d) 25 (TMOB)].
Section 16(3)(b) of the Act
[14] The Opponent has the initial onus of proving that the trade-mark applications alleged in support of its ground of opposition based on section 16(3)(b) of the Act were pending at the date of filing the Applicant’s application, January 8, 2007, and remained pending at the date of advertisement of the application for the Mark, May 21, 2008 [section 16(5) of the Act]. The Opponent’s applications (PEARL 1,308,468 and BLACKBERRY PEARL 1,308,467) were filed on July 10, 2006 and remained pending on May 21, 2008. The Opponent has thus satisfied its evidential burden.
[15] Both of the trade-marks pleaded in support of the section 16(3)(b) ground of opposition feature the word PEARL which is the only element of the Opponent’s pleaded marks that shares any resemblance with the Mark. The Opponent’s claimed application No. 1,308,467 includes the word BLACKBERRY which does not share any similarity with the Mark. As a result, I consider application No. 1,308,468 for the trade-mark PEARL applied for in association with the wares and services set out below to present the Opponent’s strongest case:
Wares: electronic handheld units namely, wireless handheld devices, namely personal digital assistants, wireless phones, mobile phones, cellular phones, smart phones, video phones, handheld, slate and tablet computers for the wireless receipt and/or transmission of voice and data and which may also have the capability to transmit and receive voice communications and accessories, namely, batteries, car kits, chargers, head sets, belt clips/holsters, cases, battery covers and docking/charging cradles; wireless communications software for the transmission and/or reception of messages, global computer network e-mail, voice and data between one or more electronic handheld units and a data store on or associated with a personal computer or a server; software for the synchronization of data between a remote station or unit and a fixed or remote station or unit and software which enables and provides one-way and/or two-way wireless connectivity to data, namely corporate data.
Services: e-mail service; wireless data messaging services, particularly services that enable a user to send and/or receive messages through a wireless data network; one-way and two-way paging services; transmission and reception of voice communication services.
[16] I will therefore address the section 16(3)(b) ground by focusing on the likelihood of confusion between the trade-mark PEARL of application No. 1,308,468 and the Mark. Thus, the success or failure of this ground will turn on the issue of confusion with this application.
[17] 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.
[18] In applying the test for confusion, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in section 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 CPR (4th) 321 (SCC) and Masterpiece Inc v Alavida Lifestyles Inc (2011), 96 CPR (4th) 361 (SCC).]
Section 6(5)(a) – inherent distinctiveness and the extent to which the marks have become known
[19] The Mark is a coined word, which appears to have been created by fusing the words PEARL and RING, neither of which have any particular meaning in association with the Wares. Thus the Mark possesses a high degree of inherent distinctiveness.
[20] The Opponent’s trade-mark PEARL is made up of a common dictionary word. The Applicant suggests that the word PEARL is suggestive of the shape of the tracking ball on the Opponent’s smartphones (Mr. Guibert describes a smartphone as a “unique wireless handheld device that incorporates RIM’s signature wireless email service together with cell phone and personal digital assistant (‘PDA’) functionalities (e.g. calendar, address book, and tasks list)”). I do not agree. I find this connection too tenuous; and at best this would only render the PEARL mark suggestive of a subset of the Opponent’s wares and services in any event. I am of the view that the word PEARL has no particular meaning in association with the Opponent’s wares and services. However, the fact remains that the word PEARL is merely a common dictionary word and therefore the Opponent’s trade-mark PEARL possesses a limited degree of inherent distinctiveness.
[21] Based on the foregoing, I find that the Mark possesses a higher degree of inherent distinctiveness than the Opponent’s trade-mark PEARL by virtue of the Mark being a coined word.
[22] 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.
[23] The application for the Mark is based on proposed use and the Applicant has not filed any evidence demonstrating use of the Mark. Based on the foregoing, I can only conclude that the Mark has not become known to any extent in Canada.
[24] The application for the trade-mark PEARL is based on proposed use. The Opponent has provided significant evidence of its reputation in association with its BLACKBERRY trade-marks and has shown sales and advertising for the Opponent’s BLACKBERRY PEARL smartphones prior to the material date, namely since September/October 2006. However, I note that none of the evidence displays the mark PEARL on its own such that the Opponent has not provided any evidence substantiating the claimed reputation in the trade-mark PEARL as a trade-mark per se. Mr. Guibert states the following on this point:
Although RIM uses its trade-mark BLACKBERRY adjacent to and preceding its trade-mark PEARL, the device is frequently referred to in the press (see for example Exhibit MG-25) and in common parlance simply as the PEARL phone.
[25] I am not satisfied that this establishes a reputation for the Opponent in the trade-mark PEARL.
[26] Considered as a whole, this factor favours the Applicant by virtue of the higher degree of inherent distinctiveness for the Mark and in light of the lack of evidence supporting any sort of reputation for either party’s mark.
Section 6(5)(b) – the length of time each has been in use
[27] As discussed further above in the analysis of the section 6(5)(a) factor, the Applicant has not used the Mark in Canada. The application for the trade-mark PEARL is based on proposed use and while the Opponent has sold BLACKBERRY PEARL smartphones since October 2006, it has not shown any use of the trade-mark PEARL on its own.
[28] Based on the foregoing, this factor does not significantly favour either party.
Section 6(5)(c) and (d) – the nature of wares, services or business and trade
[29] There is no direct overlap in the nature of the parties’ wares and services. However, the evidence shows that both parties operate in the electronics and computing industry.
[30] The Opponent has adduced evidence regarding the proximity of the parties’ wares in the same stores through the affidavit of Mr. Brockbank who attended at various electronics/computing stores in the Greater Toronto Area to look for products of the Applicant as well as for the Opponent’s smartphones, including BLACKBERRY PEARL smartphones.
[31] Mr. Brockbank found other electronics sold under the Applicant’s LG trade-mark in the same stores as the Opponent’s smartphones. Mr. Brockbank did not locate any of the Wares sold under the Mark in any of the stores he visited. Mr. Brockbank noted, however, that all of the products included in the Wares with the exception of semi-conductors could be found for sale under third party trade-marks at the stores he visited that sold the Opponent’s BLACKBERRY smartphones (including BLACKBERRY PEARL smartphones).
[32] The Applicant pointed out in its written argument that while the parties’ products could be found in the same stores they were located in different sections of the stores. Furthermore, I note that the stores in which the wares were found to coexist (e.g. Future Shop, Best Buy and Costco) are large electronics/computing stores in which a broad range of electronics would be sold thereby decreasing the importance of the fact that the products are found in the same stores.
[33] With respect to the nature of trade, I find that despite the differences in the exact nature of the parties’ wares and services, the evidence shows that the Wares could be sold through the same channels of trade as the Opponent’s wares and services.
Section 6(5)(e) – the degree of resemblance between the marks in appearance or sound or in the ideas suggested by them
[34] The proper approach to be followed when assessing the degree of resemblance between the parties’ marks was recently set out by the Supreme Court of Canada in Masterpiece [at para 64]:
While the first word may, for purposes of distinctiveness, be the most important in some cases, I think a preferable approach is to first consider whether there is an aspect of the trade-mark that is particularly striking or unique.
[35] I acknowledge that the first portion of the Mark is the word PEARL which is identical to the entirety of the Opponent’s PEARL trade-mark. However, as stated above in the analysis of the section 6(5)(a) factor, the word PEARL is a common dictionary word and thus it is not unique or striking in any way.
[36] Given the low inherent distinctiveness of the Opponent’s PEARL trade-mark, I find that the inclusion of the word RING in the Mark which serves to create a coined word is sufficient to create noticeable differences between the parties’ marks in terms of appearance and sound.
[37] The parties’ marks share some degree of similarity in ideas suggested by virtue of the inclusion of the word PEARL.
Conclusion
[38] 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 lack of reputation for the Opponent’s trade-mark PEARL, the differences in the nature of the parties’ wares and services and the differences between the parties’ marks in terms of sound and appearance, I am satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there was no reasonable likelihood of confusion between the Mark and the Opponent’s trade-mark PEARL subject to application No. 1,308,468 as of the material date. The ground of opposition based on section 16(3)(b) of the Act is therefore dismissed.
Section 16(3)(a) of the Act
[39] Despite the onus of proof on the Applicant to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and one or more of the Opponent’s trade-marks PEARL and BLACKBERRY PEARL, the Opponent has the initial onus of proving that one or more of the trade-marks alleged in support of its ground of opposition based on section 16(3) of the Act was used in Canada prior to the date of filing the application (January 8, 2007) and had not been abandoned at the date of advertisement of the application for the Mark (May 21, 2008) [section 16(5) of the Act].
[40] The Opponent provides substantial evidence regarding the development of the BLACKBERRY brand, including a historical look at the development of the BLACKBERRY smartphone and subsequent reputation in the BLACKBERRY trade-mark. In his affidavit, Mr. Guibert also provides evidence regarding the BLACKBERRY PEARL smartphone.
[41] Mr. Guibert states that the Opponent launched the BLACKBERRY PEARL smartphone in 2006.
[42] The Opponent does not provide any evidence of use of the trade-mark PEARL on its own; rather all of the evidence shows use of the BLACKBERRY PEARL trade-mark, mostly in the design format shown below:
[43] I am satisfied that the design mark as displayed on the Opponent’s packaging also constitutes use of the word mark BLACKBERRY PEARL.
[44] Based on the foregoing, I am not satisfied that the Opponent met its evidential burden with respect to the trade-mark PEARL and the ground of opposition based on section 16(3)(a) of the Act is therefore dismissed with respect to this trade-mark. However, I am satisfied that the Opponent has met its initial evidential burden of establishing use of the trade-mark BLACKBERRY PEARL at the material dates. I must now determine whether the Applicant has satisfied its legal onus.
[45] Recently, in Masterpiece, the Supreme Court of Canada discussed the importance of the section 6(5)(e) factor in conducting an analysis of the likelihood of confusion between the parties’ marks in accordance with section 6 of the Act (see para 49):
…the degree of resemblance, although the last factor listed in s. 6(5), is the statutory factor that is often likely to have the greatest effect on the confusion analysis … if the marks or names do not resemble one another, it is unlikely that even a strong finding on the remaining factors would lead to a likelihood of confusion. The other factors become significant only once the marks are found to be identical or very similar… As a result, it has been suggested that a consideration of resemblance is where most confusion analyses should start… [emphasis is mine]
[46] Under the circumstances of the present case, I consider it appropriate to analyse the degree of resemblance between the parties’ marks first.
6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them
[47] Due to the presence of the word BLACKBERRY, I find that there are even more differences between the Opponent’s BLACKBERRY PEARL mark and the Mark than was the case as between the Opponent’s PEARL mark and the Mark as discussed above.
[48] Having found that the parties’ marks do not resemble each other to any significant extent, I must now assess the remaining relevant surrounding circumstances to determine whether any of these other factors are significant enough to find a likelihood of confusion [see Masterpiece, supra at para 49].
Section 6(5)(a) – inherent distinctiveness and the extent to which the marks have become known
[49] The Opponent’s trade-mark BLACKBERRY PEARL also includes the word BLACKBERRY. The words BLACKBERRY and PEARL are common dictionary words which have no particular meaning in association with the Opponent’s wares and services. The Opponent’s BLACKBERRY PEARL trade-mark possesses a limited degree of inherent distinctiveness.
[50] As with my finding in the section 16(3)(b) ground of opposition, I find that the Mark possesses a higher degree of inherent distinctiveness as compared to the Opponent’s BLACKBERRY PEARL trade-mark by virtue of the fact that the Mark is a coined word.
[51] With respect to the extent to which the parties’ marks have become known, as set out in more detail above in the analysis of the section 16(3)(b) ground of opposition, the Applicant has not established any reputation for the Mark.
[52] The Opponent, however, has provided extensive evidence of sales and promotion of its BLACKBERRY PEARL smartphones starting in September/October 2006. Mr. Guibert states that on September 7, 2006 the Opponent announced the launch of its BLACKBERRY PEARL smartphone (press release attached as Exhibit MG-22). Mr. Guibert states that sales of the BLACKBERRY PEARL smartphones in Canada began in October 2006 and have continued since then. Mr. Guibert states that between September 2006 and December 2008 the Opponent sold over 600,000 BLACKBERRY PEARL devices in Canada which he states generated sales revenues in excess of USD $200 million. Presumably, however, these sales would have commenced in October 2006.
[53] Mr. Guibert also provides evidence of significant advertising and promotional expenses and activities including sample print advertisements for BLACKBERRY PEARL devices placed in magazines by either the Opponent itself or by its Canadian carrier partners and retailers (sample advertisements starting in October 2006 attached as Exhibits MG-29 and 30). I am satisfied that these advertisements had some circulation in Canada by virtue of the affidavit of Mr. White which provides circulation figures for media publications, including those excerpted at Exhibits MG29 and 30 of the Guibert affidavit.
[54] Mr. Guibert also states that the Opponent has operated a website at www.blackberrypearl.com to promote its BLACKBERRY PEARL devices which has been online since September 2006 and received over 12 million visits as of the date of swearing his affidavit.
[55] Based on the foregoing, I am satisfied that the Opponent’s BLACKBERRY PEARL trade-mark had developed a significant reputation in the period from September 2006 to the material date (January 8, 2007).
Section 6(5)(b) – the length of time each has been in use
[56] As discussed further above in the analysis of the section 6(5)(a) factor, the Applicant has not used the Mark whereas the Opponent has shown use of the BLACKBERRY PEARL trade-mark since September/October 2006. The evidence shows that the Opponent commenced advertising and promoting its new BLACKBERRY PEARL smartphone in Canada in September 2006 but it was only available for purchase in October 2006.
[57] Due to the nature of the Opponent’s wares and services, the Opponent’s services could only have been offered once the BLACKBERRY PEARL smartphones were available for sale. I find that the Opponent has established use of the BLACKBERRY PEARL trade-mark in association with “electronic handheld units; email service; wireless data messaging services, particularly services that enable a user to send and/or receive messages through a wireless data network; one-way and two-way paging services; transmission and reception of voice communication services” since October 2006.
Section 6(5)(c) and (d) – the nature of wares, services or business and trade
[58] The Opponent alleges use of the BLACKBERRY PEARL trade-mark in association with the same wares and services as those claimed in association with the PEARL trade-mark. As mentioned above in the analysis of the section 6(5)(b) factor, the Opponent has established use of the BLACKBERRY PEARL trade-mark with only a subset of these claimed wares and services.
[59] As discussed further above in the analysis of the section 16(3)(b) ground of opposition, there is no direct overlap in the nature of the parties’ wares and services, however, the evidence shows that both parties operate in the electronics and computing industry. With respect to the nature of trade, however, I am satisfied that, despite the differences in the exact nature of the parties’ wares and services, the evidence shows that the Wares could be sold through the same channels of trade as the Opponent’s smartphones and associated services.
Additional Surrounding Circumstance – State of the Register Evidence
[60] The Applicant attempts to adduce state of the register evidence for the word PEARL/PERLE in its written argument. Suffice it to say that state of the register evidence cannot be considered where it is adduced through the written argument and without filing certified copies of the registrations or at least an affidavit affixing particulars of the relevant registrations [see Unitron Industries Ltd v Miller Electronics Ltd (1983), 78 CPR (2d) 244 at 253 (TMOB), followed in John Labatt Ltd v W.C.W. Western Canada Water Enterprises Inc (1991), 39 CPR (3d) 442 (TMOB), followed in Frank T. Ross & Sons (1962) Ltd v Hello Cosmetics Inc (1994), 53 CPR (3d) 124 (TMOB)].
Additional Surrounding Circumstance
[61] While the following consideration is not determinative, I find it to be supportive of a finding of no confusion between the parties’ marks.
[62] The Opponent provides substantial evidence of the significant reputation the Opponent has developed in its trade-mark BLACKBERRY which is a component element of the Opponent’s BLACKBERRY PEARL trade-mark. In fact, the bulk of the Opponent’s evidence is directed to establishing the significant reputation the Opponent has developed in its BLACKBERRY trade-mark.
[63] In the present case, the Mark does not include an element that shares any degree of similarity with the distinctive BLACKBERRY element of the Opponent’s pleaded BLACKBERRY PEARL trade-mark. Rather, the only element of the Opponent’s BLACKBERRY PEARL trade-mark with which the Mark bears any degree of similarity is the less distinctive PEARL element.
Conclusion
[64] In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. While, I acknowledge that the Opponent has established a significant reputation for its BLACKBERRY PEARL trade-mark, I note that, as mentioned previously the degree of resemblance is often considered to be the statutory factor that is likely to have the greatest effect on the confusion analysis. As pointed out above, I have found that there is very little similarity between the parties’ marks in terms of sound, appearance and ideas suggested. As a result, and considering all of the surrounding circumstances, I am satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there was no reasonable likelihood of confusion between the Mark and the Opponent’s BLACKBERRY PEARL trade-mark as of the material date.
[65] Based on the foregoing, the ground of opposition based on section 16(3)(a) of the Act is also dismissed.
Non-distinctiveness Ground of Opposition – Section 38(2)(d) of the Act
[66] 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 CPR (3d) 272 (TMOB)], there is an initial evidential burden on the Opponent to establish the facts relied upon in support of the ground of non-distinctiveness.
[67] Pursuant to its evidential burden, the Opponent is under an obligation to show that, as of the filing of the statement of opposition, one or more of its trade-marks BLACKBERRY PEARL and PEARL had become known sufficiently to negate the distinctiveness of the Mark [see Bojangles’ International, LLC v Bojangles Café Ltd (2004), 40 CPR (4th) 553, affirmed (2006), 48 CPR (4th) 427 (FCTD)].
[68] As discussed more fully in the analysis of the non-entitlement grounds of opposition, the Opponent was successful in establishing that the Opponent’s BLACKBERRY PEARL trade-mark had become known to some extent as of the date of filing the statement of opposition and as a result the Opponent has met its evidential burden. The same is not true for the Opponent’s PEARL trade-mark for which the Opponent did not provide any evidence of reputation as a trade-mark per se and thus the non-distinctiveness ground is dismissed with respect to this mark.
[69] The difference in material dates is not significant and as a result my finding under the ground of opposition based on section 16(3)(a) of the Act is equally applicable here. As a result, I am satisfied that the Applicant has discharged its burden of showing, on a balance of probabilities, that there was no reasonable likelihood of confusion between the Mark and the Opponent’s BLACKBERRY PEARL trade-mark as of the material date and thus, the non-distinctiveness ground is also dismissed.
Disposition
[70] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Andrea Flewelling
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office