Trademark Opposition Board Decisions

LE REGISTRAIRE DES MARQUES DE COMMERCE

THE REGISTRAR OF TRADE-MARKS

Citation: 2015 TMOB 118

Date of Decision: 2015-06-30

IN THE MATTER OF AN OPPOSITION by 2755886 Canada Inc. to application No. 1,396,318 for the trade-mark QUINTESSENTIALLY in the name of Quintessentially (UK) Limited

[1]               2755886 Canada Inc. (the Opponent) opposes registration of the trade-mark QUINTESSENTIALLY (the Mark) that is the subject of application No. 1,396,318 by Quintessentially (UK) Limited (the Applicant).

[2]               Filed on May 21, 2008, the application is based on proposed use of the Mark in Canada, as well as use and registration of the Mark abroad, in association with a number of different services, ranging from marketing and music production services, to environmental surveys and legal services. The particulars of the application, including the statement of services as amended on September 30, 2013, are set out in Schedule A to this decision.

[3]               The Opponent alleges that: (i) the application does not comply with the requirements of section 30 of the Trade-marks Act, RSC 1985, c T-13 (the Act); (ii) the Mark is not registrable under section 12(1)(d) of the Act; (iii) the Applicant is not the person entitled to registration of the Mark under sections 16(2) and (3) of the Act; and (iv) the Mark is not distinctive under section 2 of the Act.

[4]               For the reasons that follow, I refuse the application in part.

The Record

[5]               The Opponent filed a statement of opposition on September 10, 2012 and, with leave from the Registrar, filed an amended statement of opposition on June 10, 2013. The Applicant filed and served its counter statement on January 18, 2013 denying all of the grounds of opposition.

[6]               In support of its opposition, the Opponent filed the statutory declaration of Sean O’Donnell, President of the Opponent. Mr. O’Donnell was not cross-examined.

[7]               The Applicant did not file any evidence in support of its application.

[8]               Only the Opponent filed a written argument; no hearing was held.

The Parties’ Respective Burden or Onus

[9]               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 Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) at 298].

[10]           I will now consider the grounds of opposition, starting with the section 12(1)(d) ground.

Is the Mark Confusing with the Opponent’s Registered Trade-marks?

[11]           In its amended statement of opposition, the Opponent alleges that the Mark is not registrable pursuant to section 12(1)(d) of the Act, on the ground that it is confusing with the Opponent’s trade-marks HOTEL QUINTESSENCE of registration No. TMA632,872 and QUINTESSENCE HOTEL of registration No. TMA632,999, particulars of which are set out in Schedule B to this decision.

[12]           The material date for considering this issue, which arises from the section 12(1)(d) ground of opposition, is the date of my decision [see Park Avenue Furniture Corporation v Wickes/Simmons Bedding Ltd and The Registrar of Trade Marks (1991), 37 CPR (3d) 413 (FCA)].

[13]           Having exercised the Registrar’s discretion to check the Register, I confirm that both of the Opponent’s registrations are in good standing. The Opponent has therefore met its initial evidential burden in relation to this ground of opposition.

[14]           Since the Opponent has satisfied its initial evidential burden, the issue becomes whether the Applicant has met its legal burden to establish, on a balance of probabilities, that there is no reasonable likelihood of confusion between the Mark and any of the Opponent’s registered trade-marks.

[15]           For reasons that follow, the section 12(1)(d) ground of opposition is successful in part.

The test for confusion

[16]           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 goods or services associated with those trade-marks are manufactured, sold, leased, hired or performed by the same person, whether or not the goods or services are of the same general class.

[17]           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 goods, 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 Mattel, Inc v 3894207 Canada Inc (2006), 49 CPR (4th) 321 (SCC); Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al (2006), 49 CPR (4th) 401 (SCC); and Masterpiece Inc v Alavida Lifestyles Inc (2011), 92 CPR (4th) 361 (SCC) for a thorough discussion of the general principles that govern the test for confusion.]

[18]           I will focus my analysis on the likelihood of confusion between the Mark and the Opponent’s trade-mark HOTEL QUINTESSENCE of registration No. TMA632,872 as I consider this to be the Opponent’s strongest case.

[19]           I will now turn to the assessment of the section 6(5) factors.

Section 6(5)(a) – the inherent distinctiveness of the trade-marks and the extent to which they have become known

[20]           The overall consideration of the section 6(5)(a) factor involves a combination of inherent and acquired distinctiveness of the trade-marks. I assess both parties’ trade-marks to have a similar degree of inherent distinctiveness. Both consist of common dictionary words in the English or French language. In this regard, Merriam-Webster defines the terms “quintessence” and “quintessentially” as “the essence of a thing in its purest and most concentrated form”. Similarly, Larousse defines the term “quintessence” as “ce qu’il y a de plus raffiné en quelque chose, ce qui est l’essence même de quelque chose”. Thus, the terms “quintessence” and “quintessentially” are not inherently strong given their somewhat laudatory nature as they evoke the idea of quality in English and French. I also find the term “hotel” of the Opponent’s trade-mark to be descriptive or suggestive of its goods and services.

[21]            The strength of a trade-mark may be increased by means of it becoming known in Canada through promotion or use. The Applicant has not provided any evidence of promotion or use of the Mark. Conversely, the Opponent provided some evidence of promotion and use of its trade-marks in Canada through Mr. O’Donnell’s statutory declaration.

[22]           According to Mr. O’Donnell, the Opponent by itself, or via its predecessors-in-title, has been using the trade-marks HOTEL QUINTESSENCE and QUINTESSENCE HOTEL in association with the registered goods and services in Canada since at least as early as 2004. Attached as Exhibits SOD-2 and SOD-3 are the following:

•           photos of a notepad, a small white container, a hotel room telephone, and the cover of a binder, marked with HÔTEL QUINTESSENCE and/or QUINTESSENCE;

•           printouts of online reviews for a hotel identified as “Hotel Quintessence” along with an address in Mont-Tremblant, Quebec, from what appeared to be a website operated by TripAdvisor;

•           printouts of online search results for the term “quintessence”; the first of which is identified as “Mont-Tremblant Hotel Quintessence Small Luxury Hotel” at www.hotelquintessene.com;

•           extracts of what appeared to be advertising materials published by the Opponent, with reference to HOTEL QUINTESSENCE, QUINTESSENCE RESORT HOTEL and QUINTESSENCE, along with an address in Mont-Tremblant, Quebec;

•           photos of printed cards with reference to HOTEL QUINTESSENCE and QUINTESSENCE;

•           a mini bar menu, a bathrobe wrapped with a band, bathroom amenities wrapped in ribbons, a sheet set and duvet cover set shown with cards inserted in the packaging, a pouch, and what appeared to be a box of matches, all bearing QUINTESSENCE;

•           a photo of the cover and extracts from what appeared to be marketing materials for a hotel with information on accommodation, restaurant and food, live music and cocktail events, meeting room and internet, parking, concierge, as well as massage and spa services. References to “Quintessence”, “Restaurant La Quintessence”, “Le Quintessence”, “Suite Quintessence”, and “Hôtel Quintessence”, as well as slogans such as “The Quintessence Experience” and “L’expérience Quintessence” can be seen in the document; and

•           printouts of webpages identified as “Mont-Tremblant Hôtel Quintessence”, with reference to QUINTESSENCE, extracted from www.hotelquintessence.com with information on accommodation and spa service. References to “Quintessence”, followed by “Resort Hotel Spa & Restaurant” can also be seen in the document.

[23]           Attached as Exhibit SOD-4 is a representative invoice dated February 2012 marked HOTEL QUINTESSENCE for accommodation and purchase from the mini bar at Mont-Tremblant, Quebec.

[24]           Attached as Exhibit SOD-6 are sample copies of blank baggage claim receipts marked QUINTESSENCE, as well as a document on “Restaurant La Quintessence” with information on restaurant, room service, winebar and cellar, “Quintessence food and beverage services”, and “Quintessence catering services”. There are also sample menus which include an item identified as “Crêpes Quintessence”.

[25]           Finally, attached as Exhibit SOD-7 is a copy of a single press release dated January 11, 2010, marked QUINTESSENCE, regarding the mention of “Hotel Quintessence” in the Condé Nast Traveler’s Gold List 2010.

[26]           In terms of sales, Mr. O’Donnell states that the annual sales figures for goods and services provided in association with the trade-marks HOTEL QUINTESSENCE and QUINTESSENCE HOTEL vary from approximately $1.9 million in 2004 to $5.4 million in 2012, with total sales figures of more than $44 million in that period of time. In terms of marketing, Mr. O’Donnell states the Opponent’s annual advertising expenditures for these two trade-marks vary from approximately $107,619 in 2004 to $189,988 in 2013, with total advertising expenditures of more than $1.8 million in that period of time. Mr. O’Donnell did not provide a breakdown of the figures between the registered goods and services, nor per type of goods and services.

[27]           When Mr. O’Donnell’s statutory declaration is read in its entirety along with the accompanied exhibits, I am satisfied that there has been substantial use and promotion of the trade-mark HOTEL QUINTESSENCE in association with the services “hotel, restaurant and catering services; namely, the operation, maintenance and management of a hotel, restaurant, cocktail lounge, spa, health club, parking garage and entertainment facilities” in Canada for a significant period of time.

[28]           I am however unable to draw any meaningful conclusion regarding the extent to which any of the Opponent’s trade-marks would have become known in association the registered goods as Mr. O’Donnell’s statutory declaration appears to focus on the use and advertising of its trade-marks and trade-names in the context of the Opponent’s services.

[29]           In this regard, all that I am able to conclude from the documentary evidence is that stationery, mini bar menus, bathrobes, bed linens, personal care products and bathroom amenities are provided by the Opponent to its guests as part of its hotel services. However, in the absence of any clear evidence of use or promotion of the trade-marks in association with the registered goods by the Opponent within the meaning of the Act, I am unable to determine the extent to which the Opponent’s trade-marks would have become known with any of the registered goods.

[30]           In the end, as there is no evidence of promotion or use of the Mark by the Applicant in Canada, it can only be concluded that the Opponent’s trade-mark HOTEL QUINTESSENCE have become known in Canada to a greater extent than the Mark, when considering the registered services.

[31]           Accordingly, the section 6(5)(a) factor favours the Opponent, but only to the extent of its registered services. In other words, the section 6(5)(a) factor is of no significance when considering the Opponent’s registered goods.

Section 6(5)(b) – the length of time the trade-marks have been in use

[32]           The application for the Mark is based upon proposed use in Canada, as well as use and registration abroad. The Applicant did not provide any evidence of use of the Mark in association with any of the applied for services in the present proceeding.

[33]           As I previously mentioned, the Opponent provided substantial evidence of use and promotion of the trade-mark HOTEL QUINTESSENCE in association with its registered services in Canada for a significant period of time. However, even though there appears to be some evidence of goods bearing the trade-mark HOTEL QUINTESSENCE in Canada, I am unable to determine the extent of use within the meaning of the Act, with respect to any of the registered goods. Moreover, the mere existence of the registration for the Opponent’s trade-mark HOTEL QUINTESSENCE establishes no more than minimal use and cannot give rise to an inference of significant and continuous use of the trade-marks in association with the registered goods and services [see Entre Computer Centers, Inc v Global Upholstery Co (1991), 40 CPR (3d) 427 (TMOB)].

[34]           Accordingly, while the section 6(5)(b) factor does not favour the Applicant, it also does not favour the Opponent when considering its registered goods. However, the section 6(5)(b) factor significantly favours the Opponent when considering the registered services.

Sections 6(5)(c) and (d) – the nature of the goods, services, trade and business

[35]           The sections 6(5)(c) and (d) factors, which involve the nature of the goods, services, trade and business of the parties, favour the Opponent, but only with respect to applied for hospitality and travel services, and as well as food and wine related services.

[36]           When considering sections 6(5)(c) and 6(5)(d) of the Act, it is the statement of services as defined in the application for the Mark and the statement of goods and services in the Opponent’s registration No. TMA632,872 that govern the assessment of the likelihood of confusion under section 12(1)(d) of the Act [see Henkel Kommanditgesellschaft auf Aktien v Super Dragon Import Export Inc (1986), 12 CPR (3d) 110 (FCA); and Mr Submarine Ltd v Amandista Investments Ltd (1987), 19 CPR (3d) 3 (FCA)].

[37]           Furthermore, the statement of goods and services must be read with a view to determining the probable type of business or trade intended by the parties rather than all possible trades that might be encompassed by the wording. In this regard, evidence of the actual trades of the parties is useful [see McDonald’s Corp v Coffee Hut Stores Ltd (1996), 68 CPR (3d) 168 (FCA); Procter & Gamble Inc v Hunter Packaging Ltd (1999), 2 CPR (4th) 266 (TMOB); American Optical Corp v Alcon Pharmaceuticals Ltd (2000), 5 CPR (4th) 110 (TMOB)].

[38]           The applied for services can be generally described as:

(1)   Promotional, advertising and marketing services for others; public relation and branding services; franchising services in the field of luxury lifestyle; market research, statistical analysis and reporting, and opinion poll services; business management, administration and consultancy services; recruitment services; event hospitality services; arranging exhibition and shows in the fields of travel, sports, expenses management, financial management and business management; database management; business information services in the field of incorporation, trade-marks, branding, as well as legal and translation services; licensing and merchandising services for others; retail and wholesale of alcoholic and non-alcoholic beverages; and information, research, evaluation and consultancy of the above-mentioned services;

(2)   Purchase and sale of artwork; “business administrative processing of orders in connection with services featuring” publications on artwork, fine furniture, antique and collectibles, and other valuables; auction and auctioneering services; model and talent booking agency services; and sale of plants, floral arrangements, gifts, motor vehicles, marine vessels, aircrafts, motorbikes, and bicycles;

(3)   Art appraisal and valuation services; financial services for the purchase and leasing of aircrafts; aircraft financing services; vehicle financing brokerage services, insurance and financial services for property rental and vehicle leasing; leasing and hire purchase; and valuation services;

(4)   Concert services; recording studio, music production and publishing services; provision of online music services; fashion show services; provision of model services; modeling training and studio services; entertainment services in the form of sporting events, beauty pageants, fashion shows, computer and video games, television shows, horse shows, laser shows, magic shows, orchestra performances, celebrity appearances, theater productions, culinary events, and wine festivals; artist management services; production, distribution and rental of television and radio programs, films, animations, operas, plays, and visual recordings; audio recording and production; production of live entertainment; production of quizzes; arranging and production of art exhibitions, music, fashion, theater, cultural, entertainment, sporting and audience participation events; provision of publications in the fields of business management, branding, entertainment and travel; electronic game services; reservation and booking agencies ticket services; and information, advisory and consultancy services of the above-mentioned services;

(5)   Scientific and “technological” services, related research and design, for others; industrial analysis and research services; design and development of computer hardware and software; fundraising in the field of environmental conservation; environmental conservation, protection, consultancy, hazard assessment, surveys, testing, and research services;

(6)   Wine club services; consultancy and information services in the field of purchase, appraisal and classification of alcoholic and non-alcoholic beverages; and

(7)   Legal services; licensing of intellectual property rights; assistance services for travelers in difficulties; bodyguard services; maintenance, protection and security of personal data services; prevention, discovery and recovery of identity theft services; and identity verification services.

[39]           There is no evidence of the actual trade engaged in by the Applicant.

[40]           In comparison, the Opponent’s trade-mark is registered for use in association with personal care products, stationery, menus and business cards, magazines and postcards, table linens, utensils and dinnerware, clothing items, as well as hotel, restaurant and catering services namely the operation, maintenance and management of a hotel, restaurant, cocktail lounge, spa, health club, parking garage and entertainment facilities. Moreover, Mr. O’Donnell’s statutory declaration provides evidence that the Opponent is in the hospitality business and operates a resort hotel that provides restaurant, catering, cocktail lounge, winebar, spa, health club, parking, concierge, meeting and conference services in association with the trade-mark HOTEL QUINTESSENCE.

[41]           In its written argument, the Opponent submits that the Applicant’s proposed “high-end” hospitality services such as aircraft and accommodation reservation services, as well as its various entertainment services, are sufficiently similar to the Opponent’s hotel and restaurant related goods and services to create a likelihood of confusion between the parties’ trade-marks.

[42]           I note that the Opponent did not identify the specific services for which it deems to be sufficiently similar to its registered goods and services for there to be a reasonable likelihood of confusion. I also failed to locate the aircraft and accommodation reservation services referenced by the Opponent in its written argument. Even so, I am of the view that there is a close connection or overlap between the Opponent’s registered goods and services and the following applied for services as both parties provide travel and hospitality services, as well as food and wine related services (Related or Overlapping Services):

(1)   […] promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, […] culinary events […]; […] business management of event hospitality services; arranging and conducting commercial exhibitions and shows relating to travel […]; […] retail and wholesale services, mail order and electronic shopping services, all connected with the sale of beverages including soft drinks, mineral and aerated waters, fruit drinks and fruit juices, alcoholic beverages, non-Canadian wines, fortified and sparkling non-Canada wines, spirits, and beers, and with the sale of printed matter associated with or relating to non-Canadian wines and other alcoholic and non-alcoholic drinks; […]

(2)   […] promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, […] culinary events […]; […]

(4)   […] entertainment services namely, […] culinary events and wine festivals; […] providing access to entertainment, games and special events, namely, […] culinary events and wine festivals via a computer database, the Internet, satellite, cable, wireless access or via a global computer network; […] theatrical performances, concerts, production of live performances and audience participation events, namely  […] culinary events and wine festivals; […]; provision of electronic publications (not downloadable) through a global computer network in the fields of […] travel; […]

(6)   wine club services, namely operation of a wine club for members; consultancy services relating to the purchase and provision of non-Canadian wines and other alcoholic and non-alcoholic beverages; expert and consultancy services and activities in area of appraisal and classification of non-Canadian wines and their use and consumption in combination of food and/or cigars; information, advisory and consultancy services relating to these services.

[43]           As for the remaining applied for services, I am of the view that there is little connection between them and the Opponent’s registered services. In this regard, with respect to the Opponent’s submission to the effect that the Applicant’s entertainment services are related to or overlap with the Opponent’s services, while I acknowledge that the Opponent’s trade-marks are registered for use, in part, with “the operation, maintenance and management of … entertainment facilities”, it is nevertheless within the context of “hotel, restaurant and catering services”. Consequently, with the exception of culinary events and wine festival related services mentioned above, and in the absence of evidence or submissions to the contrary, I see little connection between the provision of sporting and cultural events, or the production of concerts, television programs and films, and the provision of facilities for events in a hotel.

[44]           Finally, in the absence of evidence from the Applicant and given that some of the parties’ services are related, for the purpose of assessing confusion, I conclude that there is also potential for overlap between the parties’ channels of trade, but only when considering the Related or Overlapping Services.

Section 6(5)(e) – the degree of resemblance between the trade-marks in appearance or sound or in the ideas suggested by them

[45]           When considering the degree of resemblance, the law is clear that the trade-marks must be considered in their totality. It is not correct to lay them side by side and compare and observe similarities or differences among the elements or components of the trade-marks. It is nevertheless possible to focus on particular features of a mark that may have a determinative influence on the public’s perception of it [see United Artists Corp v Pink Panther Beauty Corp (1998), 80 CPR (3d) 247 at 263 (FCA)].

[46]           Moreover, while the first component of a trade-mark is often considered more important for the purpose of distinction [Conde Nast Publications Inc v Union des Editions Modernes (1979), 46 CPR (2d) 183 (FCTD) and Park Avenue Furniture Corp v Wickes/Simmons Bedding Ltd (1991), 37 CPR (3d) 413 (FCA)], the preferable approach is to begin by determining whether there is an aspect of the trade-mark that is particularly striking or unique [see Masterpiece at para 64].

[47]           In the case of the Opponent’s trade-mark, I am of the view that the term QUINTESSENCE represents the dominant feature as it is more striking component of the trade-mark considering that the word HOTEL is descriptive or suggestive of the Opponent’s goods and services.

[48]           When considered in their entireties, there is a high degree of resemblance between the Mark and the dominant feature of the Opponent’s trade-mark in appearance and sound and in ideas suggested owing to the words QUINTESSENTIALLY and QUINTESSENCE, as both parties’ marks evoke the idea of the essence of something.

[49]           Accordingly, this factor favours the Opponent.

Conclusion on the likelihood of confusion

[50]           In applying the test for confusion, I have considered it as a matter of first impression and imperfect recollection. Having considered all of the relevant factors, in particular, the substantial use and promotion of the Opponent’s trade-mark HOTEL QUINTESSENCE with hotel, restaurant and catering services for an extensive period of time, the high degree of resemblance between the dominant features of the parties’ trade-marks, combined with the close connection or overlap between some of the parties’ services and the potential for overlap between their channels of trade, I am not 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 Opponent’s trade-mark HOTEL QUINTESSENCE and the Mark, with respect to the Related and Overlapping Services.

[51]           However, despite the high degree of resemblance between the parties’ trade-marks and the substantial use and promotion of the Opponent’s trade-mark HOTEL QUINTESSENCE with hotel, restaurant and catering services, I am of the view that these factors are not sufficient to outweigh the vast differences in the nature of the parties’ remaining services and their channels of trade. I am therefore satisfied that the Applicant has discharged its legal onus of establishing, on a balance of probabilities, that there was no reasonable likelihood of confusion between the Opponent’s registered trade-marks and the Mark, in association with the remaining applied for services.

[52]           Accordingly, the section 12(1)(d) ground of opposition is successful but only with respect to the Related or Overlapping Services.

Was the Applicant the person entitled to registration of the Mark?

[53]           In its amended statement of opposition, the Opponent alleges that the Applicant is not the person entitled to the registration of the Mark under sections 16(2)(a) and (2)(c), as well as 16(3)(a) and (3)(c) of the Act, on the grounds that it is confusing with the Opponent’s trade-marks and trade-names HOTEL QUINTESSENCE, QUINTESSENCE HOTEL, and LA QUINTESSENCE, in addition to other trade-names comprising of the term QUINTESSENCE, all of which have been previously used by the Opponent in Canada in association with various goods and services including hotel, restaurant and catering services. The complete list of trade-marks and trade-names pleaded by the Opponent under the non-entitlement grounds, along with the particulars of the goods and services identified by the Opponent for each trade-mark and trade-name, are set out in Schedules B and C to this decision.

[54]           For the applied for services (1), (5), (6) and (7), the material date for considering these grounds of opposition is the convention priority filing date of the subject application, namely February 22, 2008. For the remaining applied for services (2), (3) and (4), the material date for considering these grounds of opposition is the filing date of the subject application, namely May 21, 2008.

[55]           The Opponent has the initial burden of proving that at least one of its trade-marks and/or trade-names alleged in support of these grounds of opposition was used in Canada prior to the material date and had not been abandoned at the date of advertisement of the application for the Mark, namely August 1, 2012 [section 16(5) of the Act]. As per my review of Mr. O’Donnell’s statutory declaration, I am satisfied that the Opponent has discharged its evidentiary burden to show prior use and non-abandonment of the trade-mark and trade-name HOTEL QUINTESSENCE.

[56]           Even though the material dates for the section 16 grounds of opposition fall earlier than today’s date, the different dates do not result in a different outcome.

[57]           For the reasons set out with the section 12(1)(d) ground of opposition, I find that there is a reasonable likelihood of confusion between the Mark and the trade-mark and trade-name HOTEL QUINTESSENCE, but only with respect to the Related and Overlapping Services. These non-entitlement grounds are therefore successful in part.

[58]           Finally, I note that the Opponent has also pleaded under the introductory paragraph of section 16(2) of the Act that the Mark has not been used abroad. I am of the view that such pleading does not raise a valid ground of opposition. Such pleading would be more appropriately raised under section 38(a) of the Act (non-compliance with section 30). Accordingly, this ground is dismissed for being improperly pleaded. In any event, the Opponent did not provide any evidence in support of, nor did it make any representation with respect to, such pleading.

Was the Mark distinctive of the Applicant’s services at the filing date of the statement of opposition?

[59]           The Opponent has pleaded that the Mark is not distinctive under section 2 of the Act as it does not distinguish the Applicant’s services from those of the Opponent, in view of the prior use of the Opponent’s trade-marks and trade-names HOTEL QUINTESSENCE, QUINTESSENCE HOTEL, and LA QUINTESSENCE, in addition to other trade-names comprising of the term QUINTESSENCE, in association with various goods and services including hotel, restaurant and catering services. The complete list of trade-marks and trade-names pleaded by the Opponent under the non-distinctiveness ground, along with the particulars of the goods and services identified by the Opponent for each trade-mark and trade-name, are set out in Schedules B and C to this decision.

[60]           In order to meet its initial burden with respect to the non-distinctiveness ground of opposition, the Opponents is required to show that one or more of its trade-marks or trade-names had become known sufficiently in Canada, as of the filing date of the statement of opposition, to negate the distinctiveness of the Applicant’s Mark [see Metro-Goldwyn-Mayer (2004), 34 CPR (4th) 317 (FC); Motel 6, Inc v No 6 Motel Ltd (1981), 56 CPR (2d) 44 (FCTD); and Bojangles’ International LLC v Bojangles Café Ltd (2006), 48 CPR (4th) 427 (FC)].

[61]           The material date to assess this ground of opposition is the filing date of the statement of opposition, namely September 10, 2012 [see Metro-Goldwyn-Mayer Inc v Stargate Connections Inc (2004), 34 CPR (4th) 317 (FC)].

[62]           Based on my review of the Opponent’s evidence, I am satisfied that the Opponent has provided sufficient evidence to support a finding that the trade-mark and trade-name HOTEL QUINTESSENCE had become known sufficiently to negate the distinctiveness of Mark at the filing date of the statement of opposition.

[63]           Even though the material date for the non-distinctiveness ground of opposition fall earlier than today’s date, on the filing date of the statement of opposition, namely September 10, 2012, the different dates do not result in a different outcome.

[64]           For the reasons set out with the section 12(1)(d) ground of opposition, I find that there is a reasonable likelihood of confusion between the Mark and the trade-mark and trade-name HOTEL QUINTESSENCE, but only with respect to the Related and Overlapping Services. The non-distinctiveness ground is therefore successful in part.

Does the application conform to the requirements of section 30 of the Act?

[65]           In its amended statement of opposition, the Opponent alleges that:

1.         the application does not contain a statement in ordinary commercial terms of the specific goods or services in association with which the Mark is proposed to be used, contrary to section 30(a) of the Act;

2.         the Applicant never intended to use the Mark in association with the applied for goods or services, contrary to section 30(e) of the Act; and

3.         the statement that the Applicant is satisfied as to its entitlement to use the Mark in Canada is false, contrary to section 30(i) of the Act.

[66]           The Opponent has failed to satisfy its initial evidentiary burden to put into issue the application’s conformity with the requirements of section 30.

[67]           The material date for considering the circumstances with respect to the ground of opposition based upon non-compliance with section 30 is the filing date of the application, i.e. May 21, 2008 [see Georgia-Pacific Corp v Scott Paper Ltd (1984), 3 CPR (3d) 469 (TMOB)].

[68]           The Opponent did not file any evidence, nor did it make any submissions, in support of its allegation that the statement of services for the Mark contravenes the provision of section 30(a) of the Act.

[69]           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. Thus the issue becomes whether or not the Applicant has substantially complied with section 30(e) of the Act. The Opponent has failed to provide any evidence or submissions in support of this ground of opposition.

[70]           Section 30(i) of the Act requires an applicant to declare in the application that it is satisfied that it is entitled to use the trade-mark in Canada. Where an applicant has provided the required statement, the jurisprudence suggests that non-compliance with section 30(i) of the Act can be found only where there are exceptional circumstances that render the applicant’s statement untrue [see Sapodilla Co Ltd v Bristol-Myers Co (1974), 15 CPR (2d) 152 (TMOB) at 155]. The Opponent did not provide nor refer to any evidence in support of this ground of opposition.

[71]           Consequently, I dismiss all of the non-conformity to section 30 grounds of opposition in view of the Opponent’s failure to meet its initial burden in each case.

Disposition

[72]           Pursuant to the authority delegated to me under section 63(3) of the Act, I refuse application No. 1,396,318 with respect to the services described as:

(1)   […] promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, […] culinary events […]; […] business management of event hospitality services; arranging and conducting commercial exhibitions and shows relating to travel […]; […] retail and wholesale services, mail order and electronic shopping services, all connected with the sale of beverages including soft drinks, mineral and aerated waters, fruit drinks and fruit juices, alcoholic beverages, non-Canadian wines, fortified and sparkling non-Canada wines, spirits, and beers, and with the sale of printed matter associated with or relating to non-Canadian wines and other alcoholic and non-alcoholic drinks; […]

(2)   […] promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, […] culinary events […]; […]

(4)   […] entertainment services namely, […] culinary events and wine festivals; […] providing access to entertainment, games and special events, namely, […] culinary events and wine festivals via a computer database, the Internet, satellite, cable, wireless access or via a global computer network; […] theatrical performances, concerts, production of live performances and audience participation events, namely  […] culinary events and wine festivals; […]; provision of electronic publications (not downloadable) through a global computer network in the fields of […] travel; […]

(6)   wine club services, namely operation of a wine club for members; consultancy services relating to the purchase and provision of non-Canadian wines and other alcoholic and non-alcoholic beverages; expert and consultancy services and activities in area of appraisal and classification of non-Canadian wines and their use and consumption in combination of food and/or cigars; information, advisory and consultancy services relating to these services.

[73]           However, I reject the opposition under section 38 of the Act for the remaining services [see Produits Menagers Coronet Inc v Coronet-Werke Heinrich Schlerf Gmbh (1986), 10 CPR (3d) 492 (FCTD) as authority for a split decision].

[74]           In other words, the application may proceed to allowance with respect to the following services:

(1) advertising the wares and services of others; direct mail advertising, namely, selling the wares and services of others by mall; placing advertisements for others; promoting the wares and services of others by distributing advertising materials through a variety of methods; marketing services, namely, arranging for the distribution of the products of others; consulting services, namely, providing marketing strategies; database marketing services, namely, compiling customer specific databases for marketing purposes and consulting; designing, printing and collecting marketing information; marketing services, namely, evaluating markets for existing products and services of others; telemarketing services; promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, baseball games, hockey games, soccer games, fashion shows […] and musical concerts; promoting goods and services of others through the distribution of discount cards; public relations services; brand consultancy and brand creation services; brand evaluation services; brand positioning; brand testing; brand strategy; franchising services, namely, offering technical assistance in the establishment and/or operation of a business in the field of luxury lifestyle; event marketing services, namely, arranging for the distribution and promotion of special and punctual events for others; business services namely, advising in connection with the provision of sponsorship of the arts, sports, music and theatre events; marketing and advertising media analysis services, marketing and advertising media management services; marketing and advertising consulting services in the media industry; media planning being media marketing and advertising strategy; media buying services; business representation of sportspeople, artistes and celebrities; market research; business management, administration and consultancy services; recruitment services; opinion polls; […] arranging and conducting commercial exhibitions and shows relating to […] sports, expenses management, financial management and business management; compilation of direct mailing lists; compilation of mailing lists; preparation of mailing lists; preparation of mailing lists for direct mail advertising services; direct marketing services, namely selling the wares and services of others by mail, phone, voice messaging, mall order catalogues, coupons and email; database marketing services, namely, compiling customer specific databases for marketing purposes and consulting; telemarketing services; business and consumer statistical analysis and reporting market research; database management; business information services, namely, incorporation and trade-mark information services, brand consultancy and brand creation services, brand positioning services, legal services, translation services and marketing trend information services; commercial administration of the licensing of the goods and services of others; merchandising services, namely, product merchandising and business merchandising display services for others; […] information, research, evaluation and consultancy services relating to any of the aforesaid
(2) Purchase and sale of artwork; business administrative processing of orders in connection with services featuring books and catalogues concerning artwork, fine furniture and decorative art, antique and collectible articles, and other valuable property; auctioneering services; auction advice and consultancy services; organisation and conducting of Internet auctions; advertising services provided for florists; model agency services; provision of models and staff for advertising and sales promotion; shop, mail order, electronic and telephone retail services connected with the sale of plants, flowers, floral arrangements, gifts, motor vehicles, boats, marine vessels, private jets, aeroplanes, gliders, helicopters, motorbikes, bicycles; talent booking services; promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, baseball games, hockey games, soccer games, fashion shows […] and musical concerts; promoting goods and services of others through the distribution of discount cards
(3) art appraisal and valuation services; financial services relating to the purchase and leasing of aircraft; provision of aircraft financing; insurance services, advice relating to insurance services, property rental and leasing, provision of insurance and financial services relating to property rental and leasing and vehicle leasing; advice relating to vehicle financing; vehicle financing brokerage; leasing and hire purchase; valuation services
(4) music production services; music concert services; production of fashion shows; provision of models for artists; model teaching, tuition and training; provision of modelling studios; entertainment services namely, baseball games, basketball games, soccer games, football games, hockey games, beauty pageants, fashion shows, boxing matches, computer games, concerts, development, production, distribution, transmission and broadcasting of television shows, horse shows, laser shows, magic shows, musical concerts, orchestra performances, personal appearances by a movie star or sports celebrity, theatre productions, television shows, video games […]; music publishing services; artist management; recording studio services; information services relating to music, providing access to entertainment, games and special events, namely, baseball games, basketball games, soccer games, football games, hockey games, beauty pageants, fashion shows, boxing matches, computer games, concerts, development, production, distribution, transmission and broadcasting of television shows, horse shows, laser shows, magic shows, musical concerts, orchestra performances, personal appearances by a movie star or sports celebrity, theatre productions, television shows, video games […], via a computer database, the Internet, satellite, cable, wireless access or via a global computer network; provision of digital music (not downloadable) from the Internet; provision of digital music (not downloadable) from MP3 websites; production, preparation, presentation, distribution, and rental of television and radio programmes and films, animated films and production of visual recordings namely, television programs, motion picture film, operas and plays; audio recording and production; production of live entertainment features, namely, fashion shows, theatre productions and music concerts; organisation, production and presentation of quizzes; arranging and conducting art exhibitions; arranging and conducting sporting events, namely baseball games, basketball games, soccer games, football games, hockey' games; arranging and conducting shows, namely music concerts, fashion shows and live radio shows; arranging and conducting staged events, namely theatre production, fashion shows; theatrical performances, concerts, production of live performances and audience participation events, namely beauty pageants, fashion shows, laser shows, magic shows, musical concerts, orchestra performances, personal appearances by a movie star or sports celebrity, theatre productions […]; provision of electronic publications (not downloadable) through a global computer network in the fields of business management, brand consultancy, brand creation, entertainment […]; electronic game services provided from a computer database, the Internet, wireless networks, cable and satellite; booking agencies ticket services; reservation services for concert tickets; advisory and consultancy services related to the aforementioned services
(5) scientific and technological services for others and research and design relating thereto: industrial analysis and research services, design and development of computer hardware and software; fundraising in the field of environmental conservation; providing information in the field of environmental conservation via the Internet; environmental consultancy services; environmental hazard assessment; environmental surveys; environmental testing: research relating to environmental protection
(7) legal services; licensing of intellectual property rights; personal services relating to assistance for persons who get into difficulties travelling while away from their permanent residence, namely, replacement or return of passports, driving licences, identity cards, luggage and keys; personal security services, namely, bodyguard services, protection and security of personal data on a global computer network; information advice and assistance relating to the protection of personal information; information advice and assistance relating to the prevention, discovery and recovery process in cases of identity theft; identity verification services; maintenance, protection and security of personal data being services for the authentication, verification and provision of security

______________________________

Pik-Ki Fung

Member

Trade-marks Opposition Board

Canadian Intellectual Property Office

 

Schedule A

 

Trade-mark

QUINESSENTIALLY

 

Application No.

1,396,318

 

Statement of Services

(1) advertising the wares and services of others; direct mail advertising, namely, selling the wares and services of others by mall; placing advertisements for others; promoting the wares and services of others by distributing advertising materials through a variety of methods; marketing services, namely, arranging for the distribution of the products of others; consulting services, namely, providing marketing strategies; database marketing services, namely, compiling customer specific databases for marketing purposes and consulting; designing, printing and collecting marketing information; marketing services, namely, evaluating markets for existing products and services of others; telemarketing services; promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, baseball games, hockey games, soccer games, fashion shows, culinary events and musical concerts; promoting goods and services of others through the distribution of discount cards; public relations services; brand consultancy and brand creation services; brand evaluation services; brand positioning; brand testing; brand strategy; franchising services, namely, offering technical assistance in the establishment and/or operation of a business in the field of luxury lifestyle; event marketing services, namely, arranging for the distribution and promotion of special and punctual events for others; business services namely, advising in connection with the provision of sponsorship of the arts, sports, music and theatre events; marketing and advertising media analysis services, marketing and advertising media management services; marketing and advertising consulting services in the media industry; media planning being media marketing and advertising strategy; media buying services; business representation of sportspeople, artistes and celebrities; market research; business management, administration and consultancy services; recruitment services; opinion polls; business management of event hospitality services; arranging and conducting commercial exhibitions and shows relating to travel, sports, expenses management, financial management and business management; compilation of direct mailing lists; compilation of mailing lists; preparation of mailing lists; preparation of mailing lists for direct mail advertising services; direct marketing services, namely selling the wares and services of others by mail, phone, voice messaging, mall order catalogues, coupons and email; database marketing services, namely, compiling customer specific databases for marketing purposes and consulting; telemarketing services; business and consumer statistical analysis and reporting market research; database management; business information services, namely, incorporation and trade-mark information services, brand consultancy and brand creation services, brand positioning services, legal services, translation services and marketing trend information services; commercial administration of the licensing of the goods and services of others; merchandising services, namely, product merchandising and business merchandising display services for others; retail and wholesale services, mail order and electronic shopping services, all connected with the sale of beverages including soft drinks, mineral and aerated waters, fruit drinks and fruit juices, alcoholic beverages, non-Canadian wines, fortified and sparkling non-Canadian wines, spirits, and beers, and with the sale of printed matter associated with or relating to non-Canadian wines and other alcoholic and non-alcoholic drinks; information, research, evaluation and consultancy services relating to any of the aforesaid
(2) Purchase and sale of artwork; business administrative processing of orders in connection with services featuring books and catalogues concerning artwork, fine furniture and decorative art, antique and collectible articles, and other valuable property; auctioneering services; auction advice and consultancy services; organisation and conducting of Internet auctions; advertising services provided for florists; model agency services; provision of models and staff for advertising and sales promotion; shop, mail order, electronic and telephone retail services connected with the sale of plants, flowers, floral arrangements, gifts, motor vehicles, boats, marine vessels, private jets, aeroplanes, gliders, helicopters, motorbikes, bicycles; talent booking services; promotional services, namely, promoting goods and services by arranging for sponsors to affiliate goods and services with a specific activity, namely, a particular sporting event, a particular entertainment event, namely, baseball games, hockey games, soccer games, fashion shows, culinary events and musical concerts; promoting goods and services of others through the distribution of discount cards
(3) art appraisal and valuation services; financial services relating to the purchase and leasing of aircraft; provision of aircraft financing; insurance services, advice relating to insurance services, property rental and leasing, provision of insurance and financial services relating to property rental and leasing and vehicle leasing; advice relating to vehicle financing; vehicle financing brokerage; leasing and hire purchase; valuation services
(4) music production services; music concert services; production of fashion shows; provision of models for artists; model teaching, tuition and training; provision of modelling studios; entertainment services namely, baseball games, basketball games, soccer games, football games, hockey games, beauty pageants, fashion shows, boxing matches, computer games, concerts, development, production, distribution, transmission and broadcasting of television shows, horse shows, laser shows, magic shows, musical concerts, orchestra performances, personal appearances by a movie star or sports celebrity, theatre productions, television shows, video games, culinary events and wine festivals; music publishing services; artist management; recording studio services; information services relating to music, providing access to entertainment, games and special events, namely, baseball games, basketball games, soccer games, football games, hockey games, beauty pageants, fashion shows, boxing matches, computer games, concerts, development, production, distribution, transmission and broadcasting of television shows, horse shows, laser shows, magic shows, musical concerts, orchestra performances, personal appearances by a movie star or sports celebrity, theatre productions, television shows, video games, culinary events and wine festivals, via a computer database, the Internet, satellite, cable, wireless access or via a global computer network; provision of digital music (not downloadable) from the Internet; provision of digital music (not downloadable) from MP3 websites; production, preparation, presentation, distribution, and rental of television and radio programmes and films, animated films and production of visual recordings namely, television programs, motion picture film, operas and plays; audio recording and production; production of live entertainment features, namely, fashion shows, theatre productions and music concerts; organisation, production and presentation of quizzes; arranging and conducting art exhibitions; arranging and conducting sporting events, namely baseball games, basketball games, soccer games, football games, hockey' games; arranging and conducting shows, namely music concerts, fashion shows and live radio shows; arranging and conducting staged events, namely theatre production, fashion shows; theatrical performances, concerts, production of live performances and audience participation events, namely beauty pageants, fashion shows, laser shows, magic shows, musical concerts, orchestra performances, personal appearances by a movie star or sports celebrity, theatre productions, culinary events and wine festivals; provision of electronic publications (not downloadable) through a global computer network in the fields of business management, brand consultancy, brand creation, entertainment and travel; electronic game services provided from a computer database, the Internet, wireless networks, cable and satellite; booking agencies ticket services; reservation services for concert tickets; advisory and consultancy services related to the aforementioned services
(5) scientific and technological services for others and research and design relating thereto: industrial analysis and research services, design and development of computer hardware and software; fundraising in the field of environmental conservation; providing information in the field of environmental conservation via the Internet; environmental consultancy services; environmental hazard assessment; environmental surveys; environmental testing: research relating to environmental protection
(6) wine club services, namely operation of a wine club for member; consultancy services relating to the purchase and provision of non-Canadian wines and other alcoholic and non-alcoholic beverages; expert and consultancy services and activities in area of appraisal and classification of non-Canadian wines and their use and consumption in combination with food and/or cigars; information, advisory and consultancy services relating to these services
(7) legal services; licensing of intellectual property rights; personal services relating to assistance for persons who get into difficulties travelling while away from their permanent residence, namely, replacement or return of passports, driving licences, identity cards, luggage and keys; personal security services, namely, bodyguard services, protection and security of personal data on a global computer network; information advice and assistance relating to the protection of personal information; information advice and assistance relating to the prevention, discovery and recovery process in cases of identity theft; identity verification services; maintenance, protection and security of personal data being services for the authentication, verification and provision of security

 

Claims

Priority Filing Date: February 22, 2008, Country: OHIM (EU),
Application No: 006691984 in association with the same kind of
services (1), (5), (6), (7).
Used in OHIM (EU) on services (1), (2), (3), (4), (6), (7).
Registered in or for OHIM (EU) on October 17, 2008 under No. 006167456
on services (2), (3), (4).
Registered in or for OHIM (EU) on May 20, 2009 under No. 006691984 on
services (1), (6), (7).
Proposed Use in CANADA.

Schedule B

 

 

Schedule C