IN THE MATTER OF AN OPPOSITION by Toronto Montessori Schools to application No. 599,094 for the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design filed by Garderie et Jardin d'Enfants Montessori Inc./ Montessori Nursery and Day Care Center Inc.
On January 19, 1988, Garderie et Jardin d'Enfants Montessori Inc./ Montessori Nursery and Day Care Center Inc. filed an application to register the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design, a representation of which appears below, based upon use of the trade-mark in Canada in association with the "operation of schools" since at least 1981. The applicant disclaimed the right to the exclusive use of the words ÉCOLES and SCHOOLS apart from its trade-mark. The applicant's trade-mark application was advertised for opposition purposes in the Trade-marks Journal on September 7, 1988.
The opponent, Toronto Montessori Schools, filed a statement of opposition on December 9, 1988 in which it alleged the following grounds of opposition:
(a) The applicant's application does not comply with Section 29 (now Section 30) of the Trade-marks Act in that the applicant could not have been satisfied that it is entitled to use its trade-mark in Canada;
(b) The applicant's trade-mark is not registrable in view of Section 12(1)(a) of the Trade-marks Act in that "the primary portion of the Design, MONTESSORI, is a surname";
(c) The applicant's trade-mark is not registrable in view of Section 12(1)(b) of the Trade-marks Act in that the "Design when considered in its entirety is clearly descriptive or deceptively misdescriptive of the character or quality of the services";
(d) The applicant's trade-mark is not registrable in that "the Design is the name in any language of the services in connection with which the Design has been used";
(e) The applicant's trade-mark is not registrable in view of the provisions of Section 12(1)(e) of the Trade-marks Act in that the "adoption of the mark by the applicant is prohibited by Section 10 of the Act. The word "Montessori" has by ordinary and bona fide commercial usage become recognized in Canada as designating the kind and quality of educational services or the operation of a school and the adoption of the Design so nearly resembles the word "Montessori" as to be likely to be mistaken therefor";
(f) The applicant is not the person entitled to registration of the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design in that the applicant's trade-mark is confusing with the opponent's trade-name which had been used in Canada earlier than 1981;
(g) The applicant's trade-mark is not distinctive of the applicant's services in that it does not actually distinguish the applicant's services from the services provided by the opponent and by other Montessori schools and it is not adapted to distinguish nor capable of distinguishing them.
The applicant filed a counter statement in which it denied the opponent's grounds of opposition.
The opponent filed as its evidence the affidavits of Lorraine Gram and Helma Trass while the applicant submitted the affidavit of Murray Schwartz. As evidence in reply, the opponent submitted the affidavit of Virginia Buckley and a second affidavit of Helma Trass. Virginia Buckley, Murray Schwartz and Helma Trass were cross-examined on their affidavits, the transcripts of the cross-examinations and the responses to the undertakings given during the cross-examinations forming part of the opposition record.
Both parties filed written arguments and both were represented at an oral hearing.
The first ground of opposition is based on Section 30(i) of the Trade-marks Act, the opponent alleging that the applicant could not have been satisfied that it is entitled to use its trade-mark in Canada. However, the opponent has not alleged any facts in support of this ground. I have therefore dismissed the first ground for failure to comply with Section 38(3)(a) of the Trade-marks Act.
The next ground of opposition is based on Section 12(1)(a) of the Trade-marks Act, the opponent asserting that the applicant's trade-mark is not registrable in that the primary portion of the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design is a surname. As the applicant's trade-mark includes the words LES ÉCOLES and SCHOOLS, together with a design element, the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design could not, as a whole, be considered as being primarily the surname of a living individual [see Molson Cos. Ltd. v. John Labatt Ltd., 58 C.P.R. (2d) 157]. Further, the opponent's evidence fails to establish that the word "Montessori" would be perceived by the average Canadian as the surname of an individual who is living or who has died within the preceding thirty years. Rather, the evidence of record supports the conclusion that the word "Montessori" would be recognized by the average Canadian either as being a system or method of instructing young children or as the surname of the originator of the system, Maria Montessori (1870-1952), an Italian physician and educationist who died more than thirty years ago. As a result, I have rejected the second ground of opposition.
The third ground is based on Section 12(1)(b) of the Trade-marks Act, the opponent alleging that the applicant's trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design is clearly descriptive or deceptively misdescriptive of the character or quality of the applicant's services described as "operation of schools". The issue as to whether the applicant's trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design is clearly descriptive of the applicant's services must be considered from the point of view of the average user of those services. Further, in determining whether the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design is clearly descriptive of the character or quality of the applicant's services, the trade-mark must not be dissected into its component elements and carefully analyzed, but rather must be considered in its entirety as a matter of immediate impression [see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks, 40 C.P.R. (2d) 25, at pgs. 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks, 2 C.P.R. (3d) 183, at pg. 186].
The relevant date for considering a ground of opposition based on Section 12(1)(b) of the Act is as of the date of decision [see Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers, 41 C.P.R. (3d) 243 (F.C.A.)]. Additionally, while the legal burden is on the applicant to establish the registrability of its trade-mark, there is an initial evidential burden on the opponent to adduce sufficient evidence which, if believed, would support the truth of its allegations that the applicant's trade-mark is clearly descriptive or deceptively misdescriptive of the character or quality of its services.
In The Random House Dictionary of the English Language, the words "Montessori method" are defined as follows:
"a system for training and instructing young children, of which the fundamental aim is self-education by the children themselves accompanied by special emphasis on the training of the senses. Also called Montessori system [named after Maria Montessori]"
while in Funk & Wagnalls Standard College Dictionary, the
following definition of "Montessori method" appears:
"a system of teaching preschool children, devised in 1907 by Maria Montessori, in which their sense perceptions are trained and their activities guided rather than controlled. Also Montessori system."
As well, The Houghton Mifflin Canadian Dictionary of the English
Language includes the following definition for the words
"Montessori method":
"A method of instructing young children that stresses development of a child's own initiative. Also call "Montessori system" [After Maria Montessori.]"
Based on the above, the word "Montessori" in relation to the operation of a school is descriptive of the method of training and instruction provided the children attending the school.
In addition to the word "Montessori", the applicant's mark includes a design element comprising the depiction of three children sitting at desks situated in a row. The issue arises, therefore, as to whether the design element constitutes a distinctive feature or pictorial representation which renders the trade-mark as a whole distinctive from other marks [see Lake Ontario Cement Ltd. v. Registrar of Trade Marks, 31 C.P.R. (2d) 103, at page 109]. In my view, the design features of the applicant's trade-mark are highly suggestive of a school environment and therefore add relatively little distinctiveness to the applicant's mark.
Additionally, the applicant's trade-mark includes the French words LES ÉCOLES and the English word SCHOOLS which are descriptive in relation to the applicant's services and have been disclaimed by the applicant apart from its trade-mark. As the applicant's trade-mark includes both French and English wording, the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design, when considered in its entirety, cannot offend the provisions of Section 12(1)(b) of the Trade-marks Act [see Coca-Cola Co. et al v. Cliffstar Corp. (also trading as Harvest Classics), 49 C.P.R. (3d) 358; Coca-Cola Ltd. v. FBI Brands Ltd., 40 C.P.R. (3d) 441; and Wool Bureau of Canada Ltd. v. Bruck Mills Ltd., 61 C.P.R. (2d) 108, at page 113].
The opponent also alleged that the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design is deceptively misdescriptive of the applicant's "operation of schools". With respect to this issue, the opponent has argued that the applicant's system of instruction cannot be accurately described as the Montessori educational system as approved by AMI (The Association Montessori Internationale). However, the evidence confirms that there are numerous Montessori schools operating throughout Canada which have not been approved by AMI and which do not meet AMI-approved standards. Further, it is doubtful that the average Canadian would even be aware of AMI or its particular standard of approved Montessori instruction.
The opponent also submitted that the logo portion of the applicant's trade-mark comprising three children sitting at desks situated in a row is contrary to the Montessori method of instruction. However, while the logo may be misleading as to the school environment associated with the Montessori system of teaching, I do not consider that it renders the applicant's trade-mark, when considered in its entirety, deceptively misdescriptive. I have therefore dismissed the third ground of opposition.
The fourth ground of opposition is that the applicant's trade-mark is the name in any language of the applicant's services, contrary to Section 12(1)(c) of the Act. As the applicant's trade-mark comprises wording in both French and English, together with a design element, the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design, when considered in its entirety, is not the name of anything either in the French language or the English language. This ground is therefore unsuccessful.
The fifth ground is based on Sections 10 and 12(1)(e) of the Act, the opponent alleging that the applicant's trade-mark is not registrable in that "Montessori" has by ordinary and bona fide commercial usage become recognized as designating the kind or quality of educational services or the operation of a school and the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design so nearly resembles the word "Montessori" as to be likely to be mistaken for it. However, when considered in its entirety, the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design does not resemble the word Montessori and therefore is not likely to be mistaken for it. I have therefore dismissed this ground.
The opponent's next ground is based on Section 16(1)(c) of the Act, the opponent alleging that the applicant is not the person entitled to registration of the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design in that the applicant's trade-mark is confusing with its trade-name Toronto Montessori Schools. The first Trass affidavit establishes the opponent's prior use and non-abandonment of its trade-name as of the date of advertisement of the applicant's application in the Trade-marks Journal. As the result, the opponent has met the initial burden upon it under Sections 16(5) and 17(1) of the Trade-marks Act.
In accordance with the legal burden upon it, the applicant must establish that there would be no reasonable likelihood of confusion between its trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design and the opponent's trade-name Toronto Montessori Schools. In determining whether there would be a reasonable likelihood of confusion between the trade-marks at issue as of the applicant's claimed date of first use, the material date in respect of the Section 16(1)(c) ground of opposition, the Registrar must have regard to all the surrounding circumstances, including those specifically enumerated in Section 6(5) of the Trade-marks Act.
The opponent's trade-name Toronto Montessori Schools possesses little inherent distinctiveness in that the words "Montessori Schools" are descriptive of the character of the opponent's schools and "Toronto" identifies the geographic location where the opponent's schools are situated. The applicant's trade-mark comprises the wording LES ÉCOLES MONTESSORI SCHOOLS which is descriptive of the character of the applicant's services, together with a design element which is highly suggestive of a school environment. As a result, the applicant's trade-mark is also a weak mark possessing relatively little inherent distinctiveness.
The opponent's evidence establishes that its trade-name had become known in the Toronto area in association with the operation of the opponent's schools while the applicant's trade-mark has not become known as of the applicant's claimed date of first use of 1981, the material date for assessing the issue of confusion. Likewise, the length of time the trade-mark and trade-name at issue had been in use as of 1981 also favours the opponent.
As the services of the parties are essentially identical, as would be their respective channels of trade, the only remaining criterion under Section 6(5) of the Act is the degree of resemblance between the trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design and trade-name Toronto Montessori Schools in appearance, sounding and in ideas suggested. When considered in their entireties as a matter of immediate impression and imperfect recollection, the trade-mark and trade-name at issue bear relatively little similarity in sounding although the marks do bear a fair degree of similarity in appearance. However, the only similarity between the mark and name arises from the common use of descriptive words MONTESSORI SCHOOLS which form an element of both. Further, while both the applicant's mark and the opponent's trade-name suggest the idea of the Montessori school system of educating children, neither party is entitled to a monopoly in respect of such an idea as it is descriptive in relation to the operation of schools.
In view of the above, I have concluded that the applicant has met the burden upon it of showing that there would be no reasonable likelihood of confusion between its trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design and the opponent's trade-name Toronto Montessori Schools. I have therefore rejected the non-entitlement ground of opposition.
The final ground relates to the alleged non-distinctiveness of the applicant's trade-mark in view of the common use of the words Montessori Schools to describe the operation of schools which use the Montessori method of educating children. The material date with respect to this ground is as of the date of opposition. While there is an evidential burden on the opponent to establish the facts relied upon by it in support of this ground, the legal burden is upon the applicant to show that its mark actually distinguishes or is adapted to distinguish its services from those of others in all parts of Canada and not just in the Montreal area [see Muffin Houses Inc. v. Muffin House Bakery Ltd., 4 C.P.R. (3d) 272].
From the transcript of the cross-examination of Mr. Schwartz, I would note the following at pages 88-90:
Q. Mr Schwartz, I take it that you've had some problem with confusion with other Montessori schools in your area?
A. Yes.
Q. And how did that occur?
A. Well, I'll give you an example. We have six (6) schools and we say head office, one three five seven (1357) Van Horne, you would attest (sic) to think that one school would not have a head office, wouldn't make any sense. That's one way.
There are various degrees as to areas where there are other independents involved, where we do a lot of publicity during the course of the year, where people think that we're them and they're us, and there is that type of confusion.
Q. And is that because you're using "Montessori Schools"? Because of the ---
A. No. Generally people who call us refer -- "Are you the school system with the three (3) children sitting at the desk in the six (6) locations?" That's the way they think of it.
Q. Right. But prior to that there was some problem because you were all Montessori schools?
A. M'hm. Yes, excuse me.
Q. That's true. And I take it that is why you've put this -- I can put it this way -- "disclaimer" in your ads.
If we look at Exhibit L, "The Montessori schools are in no way affiliated with any other independent Montessori schools not bearing the same name or logo." That's right?
A. That's correct.
Q. Did you have any difficulty with respect to complaints? Were particular parents complaining to you, or ---
A. We had people calling, complaining about some other school that was not affiliated with us, and we didn't want to be part of that network.
The applicant has argued that the design features of its trade-mark serve to distinguish its services from the services of other Montessori schools in the marketplace. While the design features of the applicant's mark may serve to distinguish the applicant's Montessori schools from other Montessori schools for some people, it would certainly appear from the above that such is not the case for others. Indeed, the applicant has had to resort to the inclusion of a form of disclaimer statement in its advertisements to avoid confusion with other Montessori schools operating in the Montreal area. That being the case, the design element associated with the applicant's trade-mark would not appear to serve the purpose of distinguishing the applicant's schools from other Montessori schools. As a result, I am left in doubt as to whether the applicant's trade-mark, when considered in its entirety, would serve to distinguish the applicant's services from those of others in the marketplace throughout Canada. I have therefore concluded that the applicant has failed to meet the legal burden upon it of showing that its trade-mark LES ÉCOLES MONTESSORI SCHOOLS & Design is distinctive.
I refuse the applicant's application pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS ___30th____ DAY OF _September____, 1994.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.