LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2011 TMOB 1
Date of Decision: 2011-01-12
IN THE MATTER OF AN OPPOSITION by Caroma Industries Limited to application No. 1,309,885 for the trade-mark CANAROMA BATH & TILE in the name of Canaroma International Inc.
File Record
[1] On July 20, 2006, Canaroma International Inc. filed an application to register the mark CANAROMA BATH & TILE, based on use of the mark in Canada since at least as early as January 1, 2001 for use in association with the following service:
operation of retail stores specializing in the sale of bathroom fixtures, faucets, whirlpool baths, mirrors, bathroom accessories, floor, ceiling and wall tiles.
[2] A trade-mark application Examiner with the Canadian Intellectual Property Office objected that (i) the applied for mark CANAROMA BATH & TILE was confusing with the registered mark CAROMA used in association with bathroom fittings and bathroom furniture and (ii) the applicant was required to disclaim the right to the exclusive use of the words BATH and TILE apart from the mark as a whole.
[3] The applicant responded to the second objection by submitting a revised application with the required disclaimer. The applicant responded to the first objection by arguing that the applied for mark CANAROMA BATH & TILE was not confusing with the cited mark CAROMA because (i) the marks have co-existed in Canada for 25 years without confusion, (ii) the marks would not be confused by the average consumer, and (iii) the applicant operates retail stores which sell to the general public while the cited mark CAROMA is used in association with wares sold wholesale to distributors.
[4] The Examiner accepted the applicant’s arguments and the subject application was advertised for opposition purposes in the Trade-marks Journal issue dated June 20, 2007. The subject application was then opposed, on August 8, 2007, by Caroma Industries Limited, the owner of the mark CAROMA initially cited by the Examiner. The Registrar forwarded a copy of the statement of opposition to the applicant on August 31, 2007, as required by s.38(5) of the Trade-marks Act, R.S.C. 1985, c. T-13. The applicant responded by filing and serving a counter statement generally denying the allegations in the statement of opposition.
[5] The opponent’s evidence consists of the affidavit of Cecilia Oliveira and certified copies of the opponent’s registrations for the marks CAROMA and CAROMA SMARTFLUSH. The applicant elected not to file any evidence in support of its case. Only the opponent submitted a written argument. Both parties declined the Registrar’s notice, dated December 17, 2009, to schedule an oral hearing.
Opponent’s Evidence
Cecilia Oliveira
[6] Ms. Oliveira’s affidavit serves to introduce into evidence computer searches of the trade-marks register. The searches she performed are described as follows:
(i) “ . . . to obtain all active marks with CA* in trade-mark[sic] but not CANAD in trade-mark [sic] and *OMA in trade-mark[sic] . . .”
(ii) “ . . . to obtain all active marks with CA* in trade-mark[sic] but not CANAD in trade-mark [sic] and *OMA in trade-mark[sic] but also bath in the wares and services . . .”
[7] The results of her searches, which are comprised of copies of the trade-mark applications and registrations which she located, are attached en liasse as Exhibits A and B to her affidavit. Ms. Oliveira’s affidavit also serves to introduce into evidence pages from the opponent’s website, attached en liasse as Exhibits C and D to her affidavit.
Registration No.TMA 233,196
[8] The opponent’s registration for the mark CAROMA covers the following wares:
fittings for water supply and sanitary purposes namely bathroom fittings of all kinds, cisterns and toilet seats and stools.
bathroom fittings and bathroom furniture, including, bathroom cabinets, curtain rods, curtain rails and curtain rings, towel rails, towel dispensers, medicine cabinets, mirrors, bathroom shelves; toilet brushes, toilet brush stands, toilet roll holders, soap holders and dispensers, toilet paper holders and dispensers, toothbrush tidies and holders; paper towel dispensers; containers, cups, trays and utensils not of precious metal for household use.
Registration No.TMA 682,942
[9] The opponent’s registration for the mark CAROMA SMARTFLUSH covers the following wares:
apparatus for
water supply and sanitary purposes, namely, cisterns, toilets, toilet fittings,
taps, baths, vanities and bidets; bathroom and plumbing fittings and fixtures.
Statement of Opposition
[10] As noted by the opponent in its written argument, (i) each of the grounds of opposition alleged in the statement of opposition turns on the issue of confusion between the applied for mark and the opponent’s trade-marks or trade-name, (ii) a consideration of the issue of non-registrability pleaded in the first ground of opposition pursuant to s.12(1)(d) of the Trade-marks Act, based on the opponent’s mark CAROMA, will be determinative of the outcome of this proceeding, and (iii) the material time to assess the issue of confusion pursuant to s.12(1)(d) is the date of my decision.
[11] The issue of confusion does not concern confusion of the marks themselves, but confusion of goods or services from one source as being from another source. In the instant case, the issue is whether there would there be confusion of retail store services for bathroom fixtures and bathroom accessories provided by the applicant as being retail store services provided by, or endorsed by, the opponent. The test for confusion is one of first impression and imperfect recollection. Section 6(5) of the Trade-marks Act sets out the factors to be considered in deciding the issue of confusion.
Consideration of Section 6(5) Factors
[12] As the parties have not submitted any evidence relating to the extent of use of their marks in the marketplace, the issue of confusion is most influenced by the inherent distinctiveness of the marks in issue, the nature of the parties’ wares and services, and the degree of resemblance between the marks in issue.
[13] I agree with the opponent’s submission in its written argument that its mark CAROMA possesses a fairly high degree of inherent distinctiveness because it is a coined word. However, the distinctiveness of the mark (i) is diminished owing to the suffix ROMA which is suggestive of a connection with Rome and Italy, and (ii) is diminished to a lesser extent owing to the prefix CA which is somewhat suggestive of a connection with Canada. The first component of the applied for mark, that is, CANAROMA, is also a coined word, however, the prefix portion CANA strongly suggests a connection with Canada and therefore the first component CANAROMA strongly suggests a “Canada-Rome” or “Canada-Italy” association. The applied for mark CANAROMA BATH & TILE is therefore a relatively weak mark because there is a fairly direct implication that the applicant imports its bath and tile merchandise from Italy.
[14] The nature of the applicant’s services overlaps with the nature of the opponent’s wares as the applicant sells the type of bathroom fixtures and accessories that are manufactured and distributed by the opponent. However, the parties’ channels of trade appear to differ as Exhibits C and D of Ms. Oliveira’s affidavit indicate that the opponent is a manufacturer and wholesale distributer rather than a retail seller.
[15] After discounting for the most part the descriptive component TILE & BATH, there are similarities as well as differences in the parties’ marks visually, in sounding and in the ideas suggested. As a matter of first impression and imperfect recollection, I find that the marks CAROMA and CANAROMA BATH & TILE are about evenly balanced in their similarities and differences. Lastly, I do not find that Exhibits A and B of the Oliveira affidavit are particularly helpful in assessing the issue of confusion.
Disposition
[16] In view of the foregoing, I find that the applicant has not met the onus on it to show that, on a balance of probabilities, there is no reasonable likelihood of confusion between the applied for mark CANAROMA BATH & TILE and the opponent’s mark CAROMA. Accordingly the application must be refused.
[17] I would add that had the applicant evidenced long and extensive use of its mark CANAROMA BATH & TILE in the marketplace, without any instances of actual confusion, then the result of this proceeding would likely have favoured the applicant.
[18] The application is refused. This decision has been made pursuant to a delegation of authority under s.63(3) of the Trade-marks Act.
___________________
Myer Herzig
Member
Trade-marks Opposition Board