IN THE MATTER OF AN OPPOSITION by Andrés Wines Ltd. to application No. 796,255 for the trade-mark ANDES filed by Compania Cervecerias Unidas S.A.
On November 1, 1995, the applicant, Compania Cervecerias Unidas S.A., filed an application to register the trade-mark ANDES based on proposed use in Canada. The application covers the following wares: “beer; non-alcoholic beverages namely mineral water, fruit juices and soft drinks”. The application was advertised for opposition purposes on July 31, 1996.
The opponent, Andrés Wines Ltd., filed a statement of opposition on September 30, 1996. The grounds of opposition are as follows:
(a) Applicant’s alleged trade-mark is not registrable pursuant to Sections 38(2)(b) and 12(1)(d) of the Trade-Marks Act, R.S.C. 1985, c. T-13 (hereinafter the Act), in that it is confusing with the following registered trade-marks of the opponent:
Trade-Mark Registration No. Registration Date Wares
ANDRÉS Design 171,294 18 Sept. 1970 wines
ANDRÉS & Design 206,513 18 April 1975 wines
ANDRÉS ABBEY 212,530 27 Feb. 1976 wines
ANDRÉS BLANC
DE BLANC 214,936 16 July 1976 wines
ANDRÉS COLD DUCK
& Design 195,998 7 Dec. 1973 wines
ANDRÉS CELLAR CASK
& Design 215,858 3 Sept. 1976 wines
ANDRÉS CELLAR CASK
RESERVE & Design 244,518 9 May 1980 wines
ANDRÉS BABY DUCK
& Design 248,381 25 July 1980 fermented alcoholic
beverages
ANDRÉS CALIFORNIA
CELLARS 270,166 11 June 1982 wine originating in
California
ANDRÉS FRENCH CROSS 459,599 12 June 1996 wines
BROTHER ANDRÉ 257,118 20 March 1981 wines
FRERE ANDRÉ 257,119 20 March 1981 wines
SAINT ANDRÉS 208,607 1 Aug. 1975 wines
ANDRAS 235,652 31 Aug. 1979 wine
(b) The applicant is not the person entitled to registration in view of Section 16(3)(a) of the Act since, at the date of filing of the application in question, applicant’s trade-mark ANDES was confusing with the registered trade-marks of the opponent, as set out in paragraph (a) above, and with the opponent’s trade-mark ANDRÉS, which trade-marks had been previously used and made known in Canada and continued to be so used, by the opponent in association with wines and fermented alcoholic beverages, and with retail stores dealing in wine, fermented alcoholic beverages, spirits and giftware and accessories related to the foregoing.
(c) The applicant is not the person entitled to registration in view of Section 16(3)(c) of the Act since, at the date of filing of the application in question, the applicant’s trade-mark ANDES was confusing with the following trade-names of the opponent: ANDRÉS, ANDRÉS WINES LTD., which had been previously used and made known in Canada and continue to be so used, by the opponent in association with the operation of a winery and the sale and distribution of wine and fermented alcoholic beverages and with retail stores dealing in wine, fermented alcoholic beverages, spirits and giftware and accessories related to the foregoing.
(d) Applicant’s trade-mark ANDES is not distinctive in Canada of the applicant’s wares, in that it does not serve to distinguish nor it is adapted to distinguish the applicant’s wares from the wares and services of others and in particular the wares and services of the opponent, Andrés Wines Ltd., in association with which the opponent has used its aforementioned trade-marks.
(e) Applicant’s trade-mark application does not comply with the requirements of Section 30(i) of the Act in that, at the date of filing of the application, the applicant could not have been satisfied that it was the person entitled to use the trade-mark ANDES in Canada in association with the wares set out in the application in question because it was aware of the prior trade-marks and trade-name of the opponent, as set out in more detail above in paragraphs (a) and (b).
The applicant filed and served a counter statement on February 17, 1997, in which it generally denied the allegations asserted by the opponent in its statement of opposition. As its evidence, the opponent submitted the affidavits of Donna Harris, Trade-Mark Searcher, dated May 14, 1998, and Robert W. Robbie, Manager-Sales and Marketing Planning, dated November 12, 1997. Mr. Robbie was cross-examined on his affidavit on April 16, 1998, and the transcript, together with replies to undertakings, form part of the record in this proceeding. The opponent was subsequently granted leave under s.44(1) to file additional evidence, comprising a second affidavit of Donna Harris, sworn on May 14, 1998, and a second affidavit of Robert W. Robbie, sworn on May 15, 1998. Both parties filed a written argument. An oral hearing was not conducted.
Considering initially the final ground of opposition based on Section 30(i) of the Act, the opponent has alleged that, as of the filing date of the present application, the applicant was aware of the opponent’s prior trade-marks and trade names and therefore could not have been satisfied that it was the person entitled to use the trade-mark ANDES in Canada in association with the applied for wares. While the legal burden is upon the applicant to show that its application complies with Section 30 of the Act there is an initial evidential burden on the opponent to establish the facts relied upon by it in support of its Section 30 ground (see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330; and John Labatt Ltd. v. Molson Companies Ltd., 30 C.P.R. (3d) 293). However, no evidence has been furnished by the opponent to show that the applicant was aware of the opponent’s trade-marks or trade-names as of the filing date of the present application. Further, even were the applicant aware of the opponent’s trade-marks or trade-names prior to filing the present application, no evidence has been adduced to show that the applicant could not properly have been satisfied that it was entitled to use its trade-mark ANDES in Canada in association with “beer; non-alcoholic beverages namely mineral water, fruit juices and soft drinks” on the basis, inter alia, that its trade-mark is not confusing with the opponent’s marks or trade-names. Thus, the success of this ground is contingent upon a finding that the applicant’s trade-mark is confusing with the opponent’s trade-mark, such that the applicant’s trade-mark is not registrable or not distinctive, or that the applicant is not the person entitled to registration, as alleged in those grounds (see Consumer Distributing Co. Ltd. v. Toy World Ltd., 30 C.P.R. (3d) 191 at 195; and Sapodilla Co. Ltd. v. Bristol-Myers Co., 15 C.P.R. (2d) 152 at 155). I will therefore consider the remaining grounds of opposition relied upon by the opponent.
The first ground of opposition is based on allegations of confusion between the applicant’s trade-mark and the registered trade-marks of the opponent identified above, the most pertinent of which is the opponent’s ANDRÉS & Design trade-mark, Registration No. 171,294 (shown below). In assessing whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all of the surrounding circumstances including those specifically enumerated in s.6(5) of the Act. The Registrar must also bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the material date which under s.12(1)(d) is the date of my decision: see the decision in Park Avenue Furniture Corporation v. Wickes/Simmons Bedding Ltd, 37 C.P.R. (3d) 413 (F.C.A.).
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With respect to s.6(5)(a) of the Act, neither the applicant’s nor the opponent’s mark possess a great deal of inherent distinctiveness. As there is no evidence of use of the proposed mark ANDES, I must consider that it has not become known at all in Canada. I am satisfied from the opponent’s evidence, however, that its mark has become known in Canada to a significant extent. In this regard, Mr. Robbie states in his affidavit that his company first sold wine in association with the trade-mark and trade-name ANDRÉS on or about June 13, 1962. Attached as Exhibit G to his affidavit is a table showing sales by the opponent and its subsidiaries of over $29 million in Canada each year between 1983 and 1997 of products with ANDRÉS or ANDRÉS WINES included on the label. A variety of labels and cartons for the opponent’s products, many of which display the ANDRÉS trade-mark or trade-name, are also attached to Mr. Robbie’s affidavit. Although Mr. Robbie revealed at cross-examination that the sales figures provided included sales by the opponent and a number of other companies which may or may not have been subsidiaries of the opponent, the opponent took the step after the cross-examination to submit a second affidavit of Mr. Robbie which attached to it copies of license agreements for a number of these other companies. I am satisfied from these license agreements that use by these companies of the trade-mark ANDRÉS would qualify as use of the trade-mark by the owner pursuant to s.50 of the Act.
With respect to s.6(5)(b) of the Act, the opponent has shown use of its mark in association with wine since at least as early as 1962 while the applicant has not shown any use of its mark. Thus, the length of time that the marks have been in use favours the opponent.
With respect to the nature of the wares of the parties (s.6(5)(c)), the opponent’s registration covers wines. On the other hand, the applicant’s application covers “beer; non-alcoholic beverages namely mineral water, fruit juices and soft drinks”. Each of the applicant’s wares differ from those covered in the opponent’s registration except for beer which could be categorized generally with the opponent’s wine wares as alcoholic beverages.
With respect to the nature of the trade (s.6(5)(d)), I would refer to the decision of the Federal Court, Trial Division in Carling Breweries Ltd. v. Registrar of Trade-Marks (1972), 8 C.P.R. (2d) 247 (hereinafter Carling Breweries). In the Carling Breweries case, the court considered whether the applied for mark WHITE CAP as applied to alcoholic brewery beverages, namely beer, ale, lager, porter and stout was confusing within the meaning of s.12(1)(d) of the Act with two registered trade-marks for the words WHITE CAP, one covering wines and the other covering rum. With respect to the nature of the trade of the parties, Justice Gibson made the following comments at p.250:
“As to the nature of the trade (s.6(5)(d)), the only evidence adduced was of “off premises” sales. There was no evidence of the nature of the trade in “on premises” sales. In my view, however, the overriding factor is that beer, wines and spirits, are all products of one industry, and as a result, it is probable that the public would be more likely to confuse the source of origin of any of these products. In any event, on the evidence, the differentiation proved among these products is slight.”
Applying Justice Gibson’s reasoning to the present case, I have concluded that there would be some overlap in the parties’ channels of trade with respect to the parties’ alcoholic beverages. I do not consider that there would be any overlap, however, between the applicant’s non-alcoholic beverages namely mineral water, fruit juices and soft drinks and the opponent’s wine.
With respect to s.6(5)(e) of the Act, the marks are similar in appearance in that the only difference between them visually is the presence of the letter R and the presence of the accent which appears above the letter E in the opponent’s mark. I agree with the applicant, however, that the marks are different in sounding and in ideas suggested. In this regard, the applied for mark would be pronounced in a manner which would rhyme with the ordinary English word “candies” whereas the opponent’s mark would be pronounced differently. The connotations are different as well as the opponent’s mark suggests the name of a French boy while the applicant’s mark connotes the idea of the mountain system of South America.
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. In view of my conclusions above, and particularly in view of the visual resemblance between the marks, and the similarity between the wares and trades of the parties in relation to alcoholic beverages, I find the applicant has failed to satisfy the onus on it to show that the marks are not confusing in relation to such wares. Given the differences between the applicant’s remaining wares and those of the opponent, I find that the marks are not confusing in respect of those wares.
In view of the foregoing, I do not propose to consider the remaining grounds of opposition in detail. However, having regard to the above comments concerning the likelihood of confusion between the applicant’s mark and the opponent’s trade-marks, I am satisfied that the non-entitlement and non-distinctiveness grounds which are based on allegations of confusion between the applicant’s mark and the opponent’s trade-marks and trade-name would also have been found to be successful even though the material dates for considering these grounds, that is, the applicant’s filing date for the non-entitlement grounds and the date of opposition for the non-distinctiveness ground, differ from the material date for assessing the likelihood of confusion in relation to the s.12(1)(d) ground.
Having been delegated by the Registrar of Trade-Marks by virtue of Subsection 63(3) of the Act, I refuse the applicant’s application in respect of “beer” and I otherwise reject the opponent’s opposition. Authority for such a divided result may be found in Produits Menagers Coronet Inc. v. Coronet-Werke Heinrich SchlerfGmbH (1986), 10 C.P.R. (3d) 482 at 492 (F.C.T.D.).
DATED AT HULL, QUEBEC, THIS 31st DAY OF January, 2000.
C. R. Folz
Member,
Trade-Marks Opposition Board