IN THE MATTER OF AN OPPOSITION by UFO Contemporary Inc. to application No. 802,520 for the trade-mark RL & Flag Design filed by Polo Ralph Lauren, L.P. and now standing in the name of The Polo/Lauren Company, L.P.
On January 24, 1996, the original applicant, Polo Ralph Lauren, L.P., filed an application to register the trade-mark RL & Flag Design (“the application”) illustrated below:
The application is based on proposed use of the mark in Canada in association with the following wares:
“Men's, women's and children's clothing, namely, shirts, namely knitshirts, dress shirts, sport shirts, sweatshirts; jackets, ties, suits, slacks, ascots, bathing suits, belts, jeans, blouses, skirts, dresses, coats, hats, caps, tuxedos, pants, shorts, tops, vests, robes, hosiery, scarves, pyjamas, underwear, kilts, mufflers, squares, shawls, blazers, headbands, wristbands, coveralls, overalls, sweat pants and sleepwear; footwear, namely, shoes, boots, slippers, and athletic shoes.”
The application was advertised for opposition purposes on August 21, 1996.
UFO Contemporary, Inc. (the “opponent”), filed a statement of opposition on December 4, 1996, a copy of which was forwarded to the original applicant on December 17, 1996. Polo Ralph Lauren, L.P. filed a counter statement on January 13, 1997 and later requested and was granted leave to amend its counter statement to reflect the assignment of the rights in the trade-mark to The Polo/Lauren Company, L.P. (the “applicant”).
The opponent filed as its evidence the affidavits of Lorna Brody, Robert W. White and Kendra Preston-Brooks. The applicant requested leave to cross-examine Lorna Brody on her affidavit and filed the transcript of this cross-examination with the Registrar on February 16, 1998.
The applicant filed as its evidence the affidavits of Lee S. Sporn, Jason Wolfe, Michael Belcourt, Darlene H. Carreau, Karen L. Webb, Jennifer Leah Stecyk and Lynn Poirier. The opponent requested leave to cross-examine Lee S. Sporn, Michael Belcourt and Karen L. Webb on their affidavits. The opponent did not proceed with the cross-examination of Karen L. Webb but did file transcripts of the cross-examination of Lee S. Sporn and Michael Belcourt on December 17, 1999. The opponent filed reply evidence in the form of a further affidavit of Lorna Brody.
Both parties filed a written argument and an oral hearing was held at which both parties were represented.
The first ground of opposition is that the application does not meet the requirements of s. 30 of the Trade-marks Act, R.S.C. 1985, C. T-13 (“the Act”) in that the applicant could not have been satisfied that at the date of filing the application it was entitled to use the trade-mark in Canada in association with the wares described in the application.
The second ground of opposition is that the applied for trade-mark is not registrable pursuant to s. 12(1)(d) of the Act because it is confusing with the following registered trade-mark (registration no. 186,644) owned by the opponent:
The third ground of opposition is that the applicant is not the person entitled to registration pursuant to s. 16(3) of the Act because, as of the applicant’s filing date, the applied for trade-mark was confusing with the opponent’s trade-mark referred to above, which had been previously used in Canada by the opponent and was the subject of an application for registration previously filed in Canada.
The fourth ground is that the applicant’s trade-mark is not distinctive and is not adapted so as to distinguish the applicant’s wares from the wares of the opponent, having regard to the use by the opponent of its trade-mark referred to above.
Opponent’s Evidence-in-chief
In Ms. Brody’s affidavit, sworn August 9, 1997, she identifies herself as the Vice-President of UFO Contemporary, Inc. Ms. Brody appends as the first exhibit to her affidavit a certified copy of the opponent’s registration no. 186,644 for the trade-mark UFO & design. The registration page shows that the UFO & design mark is registered for clothing, namely, trousers, pants and blouses and shirts for men and women as well as jackets for men and women, and children’s clothing, namely, trousers, blouses, shirts and jackets. She explains the process by which her company designs, manufactures and markets its clothing in association with it’s trade-mark and indicates that the opponent’s approach in this regard is similar to others in the retail clothing industry.
Ms. Brody’s affidavit includes several exhibits containing sample labels, hang tags, style and size tags, plastic bags for shipping clothing, packing tape, and shipping labels all displaying the UFO & design trade-mark.
According to Ms. Brody, clothing bearing the UFO & design trade-mark is sold in Canada through clothing boutiques, retail department stores and catalogue ordering services.
The certified copy of the opponent’s registration lists several companies that were entered as registered users in Canada of the opponent’s trade-mark. On cross-examination Ms. Brody states that the earliest license agreement for the distribution of UFO clothing in Canada was entered into in 1973, however, in a reply to undertakings Ms. Brody was not able to produce the 1973 license agreement but did produce a consolidated license agreement dated January 1, 1978. A selection of representative invoices are attached as Exhibits to the affidavit, showing sales of clothing made by either the opponent or a licensee to Canadian retailers for the years 1994 – 1997. Canadian sales of clothing bearing the UFO & design trade-mark for the period 1992 – 1996 were approximately $2.2 million (Cdn). On cross-examination Ms. Brody indicated that these sales figures represented the combined sales of both the opponent and its Canadian licensees.
The opponent promotes its clothing by attending trade shows, advertising in magazines and trade papers, co-op advertising and having its products appear editorially in magazines and trade papers. The opponent spent between $20,000 and $30,000 (U.S.) yearly on magazine and trade paper advertising of its clothing for the period 1992 – 1996. On cross-examination Ms. Brody stated that those figures represent her company’s global advertising expenditure and not just advertising in Canada.
In his affidavit, sworn July 30, 1997, Mr. White identifies himself as Senior Vice President, Canada of the Audit Bureau of Circulations. He provides circulation figures for two of the magazines in which the opponent’s products appear editorially.
In an affidavit sworn August 6, 1997, Ms. Preston-Brooks details the results of a search of the Canadian trade-marks register she conducted for U.S. flag designs with letters replacing stars for all wares and services. She located several trade-marks that included a U.S. flag design where the stars in the upper left corner were replaced with letters or other objects, three (3) of which were not owned by the opponent or applicant in this proceeding and were registered or applied for in relation to clothing.
Applicant’s Evidence-in-chief
In his affidavit, Mr. Sporn identifies himself as the Vice-President, Intellectual Property and Secretary of PRL International Inc., the General Partner of the applicant. He states that the applicant is in the business of designing, manufacturing and marketing articles of clothing and accessories for men, women and children. Mr. Sporn’s evidence includes copies of the Canadian trade-mark registrations and pending applications owned by the applicant. Mr. Sporn provides global sales figures for the applicant for the period 1978-1997. In 1996, world-wide sales exceeded $2.9 billion (U.S.) although there is no breakdown of sales by country or by trade-mark. Global advertising figures are provided for the same period and show that more than $40 million (U.S.) was spent on advertising and publicity in respect of the applicant’s goods in 1997.
The applicant also provided evidence from its Canadian licensees of their sales and advertising of the applicant’s clothing in Canada. Applicant’s evidence also shows use of the RL & Flag design in Canada since 1997.
Opponent’s Reply Evidence
The opponent filed evidence in reply in the form of an additional affidavit of Ms. Lorna Brody, Vice-President of UFO Contemporary, Inc. Ms. Brody provides additional information relating to the nature of editorial advertising in the clothing industry and the fact that it is not a direct advertising expense to a company. She also provides an opinion that there is a trend away from marketing in which mega-brands establish branded concept shops within major department stores. She also states that the opponent’s clothing is available for sale in Canada through internet catalogues.
I see no reason why most of the information contained in Ms. Brody’s reply affidavit could not have been included as part of the opponent’s evidence-in-chief. Ms. Brody’s evidence that the opponent’s clothing is available to Canadian consumers through the internet with no further information as to the extent that Canadians access those catalogues or the volume of sales conducted in that manner is of little evidentiary value.
Grounds of Opposition
Paragraph 38(2)(a)
The first ground of opposition alleges that the subject application does not conform to the requirements of s. 30(i) of the Act in that the applicant could not have been satisfied that it was entitled to use the trade-mark RL & Flag design in Canada in association with clothing and footwear because, as of the filing date of the subject application, the trade-mark was confusing with the opponent’s registered mark. The material date for assessing this ground of opposition is the filing date of the application, in this case January 24, 1996 (see, Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 469 (TMOB) at 475). While the legal onus is on the applicant to show that its application complies with s. 30 of the Act, there is an initial evidential burden on the opponent in respect of a section 30 ground: see Joseph E. Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R. (3d) 325. To meet the evidential burden upon it in relation to a particular issue, the opponent must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist.
In this regard, the opponent points to the statements made by Mr. Sporn in his cross-examination that the applicant did not conduct a trade-mark search for confusing marks on the Canadian trade-marks register prior to filing the present application. The opponent suggests that this shows that the applicant could not have been satisfied that it was entitled to use its mark in Canada at the date of filing. Even had the applicant been aware of the opponent's registered trade-mark prior to filing the present application, such a fact is not inconsistent with the statement in the present application that the applicant is satisfied that it is entitled to use the trade-mark RL & Flag design in Canada on the basis inter alia that its trade-mark is not confusing with the opponent's trade-mark. Moreover, where an applicant has provided the statement required by s. 30(i), this ground of opposition should only succeed in exceptional cases such as where there is evidence of bad faith on the part of the applicant (see Sapodilla Co. v. Bristol-Myers Co. (1974), 15 C.P.R. (2d) 152).
Thus, the first ground of opposition is unsuccessful as the opponent has not alleged that the applicant adopted its trade-mark knowing it to be confusing with the opponent’s mark.
Paragraph 38(2)(b) - Confusion
As for the opponent’s second ground of opposition, the material date for considering the circumstances respecting the issue of confusion with a registered trade-mark pursuant to s. 12(1)(d) of the Act is the date of my decision (Conde Nast Publications Inc. v. Canadian Federation of Independent Grocers (1991), 37 C.P.R. (3d) 538). The opponent has met its initial evidentiary burden with respect to this ground of opposition by filing a certified copy of its trade-mark registration No. 186,644.
The test for confusion is one of first impression and imperfect recollection. In applying the test for confusion set forth in s. 6(2) of the Act, the Registrar must have regard to all the surrounding circumstances including the following specifically enumerated in s. 6(5) of the Act:
a) the inherent distinctiveness of the trade-marks and the extent to which the trade-marks have become known;
b) the length of time the trade-marks have 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.
The weight to be given to each factor may vary, depending on the circumstances (see, Clorox Co. v. Sears Canada Inc. (1992), 41 C.P.R. (3d) 483 (F.C.T.D.) and Gainers, Inc. v. Marchildon (1996), 66 C.P.R. (3d) 308 (F.C.T.D.)).
The Registrar must bear in mind that the onus or legal burden is on the applicant to show that on a balance of probabilities there would be no reasonable likelihood of confusion between the trade-marks at issue as of the relevant date.
With respect to s. 6(5)(a) of the Act, the opponent’s trade-mark has some inherent distinctiveness when used in association with clothing. It does, however, have a somewhat suggestive connotation that the associated wares originate in the United States of America as the mark consists of a stylised version of the American flag in which the stars have been replaced with the letters UFO. The opponent’s mark cannot therefore be considered as possessing a high degree of inherent distinctiveness. The opponent has provided some evidence of advertising and sales of its clothing in Canada. The Canadian sales figures for the opponent’s clothing provided by Ms. Brody increase year over year from approximately $303,000 in 1992 to $528,000 in 1996. The monetary figures provided by Ms. Brody for advertising the opponent’s clothing in magazines and trade publications range from approximately (U.S.) $20,000 to $31,000 per year for the years 1992 – 1996. The advertising figures reflect the total annual amount spent by the opponent on magazine and trade publication advertising and although there is no further break-down of these yearly figures into publication-specific or geography-specific detail, the evidence shows that some of the magazines and trade papers are circulated in Canada. The opponent has also provided evidence that its clothing is featured editorially in magazines that circulate in Canada, however, with the exception of one or two cases, the opponent’s trade-mark does not appear in any of these examples. I conclude from the above that the opponent’s mark is known to a limited extent in Canada.
Similarly, the applicant’s trade-mark has some inherent distinctiveness when used in association with clothing and footwear although it is also suggestive of wares that originate in the United States of America as the mark is made up of the stripes of a stylised American flag and the initials RL in place of the stars. The Belcourt affidavit establishes that the applicant’s licensee has sold casual clothing items in Canada in association with the RL & Flag design in excess of $10.4 million (Cdn.) between 1997 and 1998. In addition, $1.5 million was spent by the applicant’s licensee on advertising in Canada which featured the RL & Flag design. I am able to conclude that the applicant’s mark has become known in Canada.
The length of time the marks have been in use favours the opponent. As for s. 6(5)(c) and s. 6(5)(d) of the Act, the nature of the parties’ wares is essentially the same, clothing. As well, the channels of trade are similar as both parties sell their goods through department stores and other retail outlets. The applicant sought to distinguish the wares and trades of the parties on the basis that the applicant’s goods are in the top echelon of the fashion industry and the opponent’s goods are aimed at fringe or underground cultures. There are no restrictions, however, as to trade or price in the opponent’s statement of wares or the applicant’s statement of wares and the two must be compared as listed in the opponent’s registration and the applicant’s application: see the decisions in Mr. Submarine Ltd. v. Amandista Investments Ltd. (1987), 19 C.P.R. (3d) 3 (F.C.A.), Henkel Kommanditgesellschaft v. Super Dragon (1986) 12 C.P.R. (3d) 110 (F.C.A.), Miss Universe, Inc. v. Dale Bohna (1994) 58 C.P.R. (3d) 381 (F.C.A.) and Bagagerie S.A. v. Bagagerie Willy Ltee (1992), 45 C.P.R. (3d) 503 (F.C.A.).
With respect to s. 6(5)(e) of the Act, the marks bear some resemblance to each other in appearance as being comprised of a stylised American flag with the idea suggested that the associated wares originate in the United States of America. However, there is no resemblance between the marks when sounded. Both marks would be sounded by identifying each individual letter, forming the letter portion of the mark. In the case of the opponent’s mark the letters “UFO” are the first part of the opponent’s corporate name while the applicant, in Mr. Sporn’s cross-examination, has stated that the letters “RL” in the applicant’s mark have been used on their own in the past as a trade-mark of the applicant.
As an additional surrounding circumstance, the applicant has relied on state of the register evidence as introduced by the Steyck affidavit to show use of marks comprised of stylised flags in association with clothing in the marketplace. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace (see, Del Monte Corporation v. Welch Foods Inc. (1992), 44 C.P.R. (3d) 205 (F.C.T.D.)). Also of note is the decision in Kellogg Salada Canada Inc. v. Maximum Nutrition Ltd. (1992), 43 C.P.R. (3d) 349 (F.C.A.) which is support for the proposition that inferences about the state of the marketplace can only be drawn from state of the register evidence where large numbers of relevant registrations are located.
State of the register in this case reveals four relevant registrations, one of which is for footwear only, standing in the name of four separate owners. This limited number of relevant registered marks alone does not allow me to make any meaningful inferences about their use in the marketplace.
As a further surrounding circumstance, I have noted that both marks have co-existed in the Canadian marketplace for several years. Given the extensive advertising and sales of the applicant’s clothing, if confusion were to occur, it could be expected that there would be some evidence of confusion among consumers in Canada. It is, of course, not necessary for the opponent to evidence confusion in order for me to find that there is a likelihood of confusion but the absence of confusion despite the overlap of the wares and channels of trade does entitle one to draw a negative inference about the opponent’s case, see Dion Neckwear Ltd. v. Christian Dior, S.A. (2002), 20 C.P.R. (4th) 155 (F.C.A.).
In applying the test for confusion, I have considered that it is a matter of first impression and imperfect recollection. The basic issue to be decided is whether a consumer who has a general and not precise recollection of the opponent’s mark, will, upon seeing the applicant’s mark, be likely to think that the parties’ wares originate from a common source. In view of my conclusions above, I find that the applicant has satisfied the burden on it to show that there is no reasonable likelihood of confusion between its mark, RL & Flag design, and the opponent’s registered trade-mark, UFO & design. Therefore, the second ground of opposition in respect of application no. 802,520 is unsuccessful.
The third ground of opposition is that the applicant is not the person entitled to registration of the trade-mark due to confusion with the opponent’s trade-mark UFO & design previously used in Canada by the opponent for clothing. The material date with respect to this ground of opposition is the filing date of the application, January 24, 1996. The opponent has met its initial burden with respect to the entitlement ground of opposition by evidencing use of its trade-mark prior to the filing of the applicant’s application and non-abandonment as of the advertisement of the applicant’s application.
Most of my conclusions with respect to the second ground of opposition are also applicable here with the one exception being that the evidence of the contemporaneous use of both marks in the Canadian marketplace without evidence of actual confusion is a surrounding circumstance that occurs after the relevant date.
In view of the above, I find that the applicant has satisfied the burden on it to show no reasonable likelihood of confusion between the opponent’s mark and the applicant’s mark RL & Flag design for clothing and footwear. The entitlement ground of opposition is therefore unsuccessful.
The fourth ground of opposition essentially turns on the issue of confusion as of the date of filing of the opposition, in this case December 4, 1996, (see, Metro-Goldwyn-Meyer Inc. v. Stargate Connections Inc. (2004), 34 C.P.R. (4th) 317 (F.C.T.D.) at 324). My conclusions in respect of the second and third grounds of opposition are relevant in this respect and I find that the applicant’s mark RL & Flag design is not confusing with the opponent’s UFO & design mark. The fourth ground of opposition is accordingly, unsuccessful.
Having been delegated by the Registrar of Trade-marks by virtue of subsection 63(3) of the Act, I reject the opponent’s opposition to application no. 802,520.
DATED AT GATINEAU, QUEBEC, THIS 5th DAY OF FEBRUARY, 2007.
Lisa A. Power
Acting Director,
Trade-marks Branch