IN THE MATTER OF AN OPPOSITION by Concordia University to Application No. 1101244 for the Trade-mark Sting Design filed by 649643 Ontario Inc._______________

 

 

 

 

I The Pleadings

 

On May 1^st, 2001, 649643 Ontario Inc., carrying on business as Sarnia Sting (the “Applicant”) filed an application, based on proposed use in Canada, to register the trade-mark as illustrated hereinafter:

 

(the “Mark”),  

 

in association with clothing, namely; tank tops, sweatshirts, t-shirts, sportshirts, hockey sweaters, shorts, cardigans, jogging suits, undershirts, pyjamas, robes, warm-up suits; headware namely; toques, caps, hats, ear muffs and visors, neckware namely; scarves, ties and cravats; jackets, parkas, ponchos; rainwear, namely; coats, parkas and rain ponchos; belts, suspenders, wallet and belt sets, wallets and belt buckles. Sports equipment, namely; pucks, hockey sticks and hockey uniforms. Bath sheets, towels, shower curtains, bath mats, bedspreads, drapes, curtains, blankets, sheets, pillow cases, comforters, quilts, sleeping bags, slumber bags, backpacks, backpack bags, drawstring bags, tote bags, equipment bags, quilted beach mats, bandannas. Plastic cups, collector boards, bendable and non-bendable miniature figurines made of poly vinyl chloride, cigarette lighters; writing instruments, namely, pens, pencils, markers and crayons; plastic drinking tumblers. Tableware, namely; drinking glasses, beer steins, coffee mugs, tumblers, highball glasses, fabric mugs and stemware; piggy banks; waste baskets, ashtrays, serving trays, coasters, watches, alarm clocks; wall coverings, namely; wall plaques, mirrors, wallpaper and murals. Jewellery, namely; pins, tie bars, cuff links, money clips, charms, pendants, bracelets, rings, key cases, key chains, medallions and earrings. Toys and souvenirs, namely; puffy vinyl stickers, stickers, photo trading cards, stamps, decals, stickers, mini booklets, statuettes, figurines, book marks, autograph albums, colouring books; storage devices, namely; trunks, garbage cans. Decals applied to t-shirts and sweatshirts, badges, bumper stickers, posters, satin patches, cloth patches, plastic plaques, pennants and posters. Magnets, lapel pins, and badges.  Plastic pucks, foam and rubber pucks, hockey sticks and mini hockey sticks. Printed matter, namely; guides, books, brochures, playing cards, programmes, schedules, postcards, place mats and embroidered emblems (the “Wares”)   and in association with:

entertainment services; namely, the performance and presentation of hockey games and the rendering thereof through the media of radio, television and printed publications (the “Services”).

 

The application was advertised on February 5^th, 2003 in the Trade-marks Journal, for opposition purposes. Concordia University (the “Opponent”) filed a statement of opposition on April 7, 2003 raising the grounds of opposition summarized as follow:

 

1)      The application does not comply with s.30 (i) of the Trade-marks Act R.S.C. 1985, c. T-13 (the “Act”) in that the Applicant could not have been satisfied that it was entitled to use the Mark in Canada in association with the Wares and Services described in the application;

2)      The Mark is not registrable pursuant to s.12 of the Act in that it is a Mark of which the adoption is prohibited by s.9 of the Act as the Opponent is a university and is the owner of the trade-mark “STINGERS & Design” filed in Canada on May 4^th, 1994 (application no. 906746) and advertised on July 27, 1994 under s.9(1)(n)(ii) of the Act;

3)      The Applicant is not the person entitled to registration of the Mark within the meaning of s. 16(3)(a) of the Act as at the date of filing of the application, the Mark was confusing with the Opponent’s trade-mark that had been previously registered or applied for and previously used or made known in Canada by the Opponent;

4)      The Mark is not distinctive within the meaning of s. 2 of the Act for the reasons set forth above.

 

The Applicant filed on May 9^th, 2003 a counter statement denying each and every grounds of opposition.

 

The Opponent filed the affidavit of Suzanne M. Birks as its evidence while the Applicant filed the affidavit of Marinder Chana. No reply evidence was filed. Both parties filed written submissions and a hearing was held.

 

I should point out that, for administrative purposes, the trade-mark has been identified as SARNIA STING & Design despite the fact that the Mark does not include any words. It would appear that the Applicant, when it filed its application, identified the trade-mark applied for as SARNIA STING & Design, and such identification has been used since then by the Registrar and the parties. However the parties acknowledge that the Mark did not include the words SARNIA and STING.

 

II The Opponent’s evidence

 

Suzanne M. Birks has been the Opponent’s legal counsel since April 2003. The Opponent is a chartered university in Montreal, Quebec since 1974, which has over 30000 students, approximately 1500 faculty members and over 1500 staff employees.

 

She alleges that the Opponent uses since 1974 logos and designs depicting bees in association with its university sports teams and promotional objects, clothing and gift items relating to such sports teams and university activities.

 

The Opponent is the owner, has adopted and allegedly used the trade-mark “STINGERS & Design” as a badge, crest, emblem or mark since at least as early as 1994 in association with its university sports teams and promotional objects, clothing and gift items relating to such sports teams and university activities and the promotion of the Opponent’s sports activities. The Registrar gave public notice of the adoption of such official mark on July 27, 1994 under no. 906746 in accordance with Section 9(1)(n)(ii) of the Act. A copy of such notice was filed in the record.

 

 

 

 

This official mark is reproduced herein below:

 (the Opponent’s official mark)

 

She also filed a copy of application number 905611 for the trade-mark STINGERS although such application was not raised in the Opponent’s statement of opposition.

 

The Opponent’s official mark has been allegedly used since at least as early as 1994 in association with sports team equipment and apparel, caps, decals, glassware, jackets, key chains lanyards, license plates, notebooks, pants, pins, shirts, shorts, socks, sweatshirts, t-shirts, toques, umbrellas, water bottles, packaging, advertising and signage. Samples of some of those wares bearing the Opponent’s official mark were filed in the record.

 

She explains the method used by the Opponent for the promotion and advertising of its wares and services in association with its official mark, which includes ads in newspapers and magazines, brochures, posters, direct mail to students, alumni and prospective students and on its website. No sample of such promotional material was annexed to her affidavit except for extracts of the Opponent’s website on which appears its official mark.

 

III The Applicant’s evidence

 

Maninder Charna has been an associate with the Applicant’s firm. She was asked by Mr. Stephen Georgas, a partner at the Applicant’s agents firm, to conduct a search of the Canadian Trade-marks register for trade-mark registrations containing depictions of bee-like or wasp like insects like the one in the Opponent’s official mark, where those registrations issued after public notice was given of the Opponent’s official mark. The results of such search are annexed to her affidavit. She listed 28 registrations that she considers meeting those criteria. It is apparent from a review of those citations that some of them do not represent bees or wasps by any stretch of the imagination.

 

IV The Legal Issues

 

In opposition proceedings, the legal onus is upon the Applicant to show that its application complies with the provisions of Section 30 of the Act, but there is however an initial evidential burden on the Opponent to establish the facts relied upon by it in support of its grounds of opposition. Once this initial burden is met, the Applicant still has to prove that each ground of opposition should not prevent the registration of the Mark. [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]

 

Each ground of opposition must be analyzed at different relevant dates. Therefore evidence relevant regarding one issue might not be so under a different ground of opposition; thus the importance of establishing the relevant date associated with each ground of opposition raised. On the issue of compliance to the provisions of s. 30 of the Act, it is the filing date (May 1^st, 2001). [See Dic Dac Holdings (Canada) Ltd v.Yao Tsai Co. (1999), 1 C.P.R. (4th) 263] The registrability of the Mark must be assessed as of the date of the Registrar’s decision. [See Allied Corp. v. Canadian Olympic Association (1989), 28 C.P.R. (3d) 161(F.C.A.) and Olympus Optical Co. v. Canadian Olympic Association (1991), 38 C.P.R. (3d) 1 (F.C.A.)] The Applicant’s entitlement to the registration of the Mark will be determined as of the filing date of the application. The Opponent, under such ground, must nonetheless ascertain that it has not abandoned the use of its trade-mark as of the publication date of the present application. [See s. 16(3) and (5) of the Act] Finally, the issue of distinctiveness of the Mark will be decided as of the filing date of the statement of opposition (April 7, 2003). [See Andres Wines Ltd. and E&J Gallo Winery (1975), 25 C.P.R. (2d) 126 (F.C.A.) at page 130, Park Avenue Furniture Corporation c. Wickes/Simmons Bedding Ltd. (1991), 37 C.P.R. (3d) 413 at page 424 (F.C.A), and Metro-Goldwyn-Meyer Inc v. Stargate Connections Inc. (2004), 34 C.P.R. (4^th) 317]

 

The Opponent’s first ground of opposition must be dismissed as drafted. It has not alleged that the Applicant was aware of the Opponent’s ownership of its official marks and as such could not have been satisfied that it was entitled to use its Mark. [See Canadian Medical Association v. Enzymatic Therapy Inc. (2002), 24 C.P.R. (4^th) 552]

 

The Applicant takes the position that the second ground of opposition has not been properly pleaded as the Opponent failed to identify in the relevant paragraph of its statement of opposition its official marks. However the statement of opposition must be read as a whole. There is reference to the Opponent’s official mark in paragraph 2 of the statement of opposition. Moreover the evidence filed must also be taken into consideration. [See Novopharm Limited v. AstraZenaca AB (2002), 21 C.P.R. (4^th) 289].

 

The Applicant argues further that the Opponent has not adduced any evidence of its official mark, as Ms. Birks refers in her affidavit to official mark 905611 for STINGERS a copy of which was attached as Exhibit A. The Applicant acknowledges that Exhibit A does include a copy of the Opponent’s official mark but because Ms. Birks did not refer to it in the core of her affidavit, its production would be inadmissible. Without discussing the merit of such argument, suffice to say that when registrability of a trade-mark  is in issue, the Registrar has discretion to look at the register which I did. [See Quaker Oats of Canada Ltd./La Compagnie Quaker Oats Ltée. v. Manu Foods Ltd., 11C.P.R. (3d) 410] I confirm that the Opponent is the owner of the Opponent’s official mark as herein above reproduced.

 

As for application 905611 for the official mark STINGERS, it was not pleaded in the statement of opposition and even if I considered it as an additional surrounding circumstance, it is not relevant as it is a word mark while the Mark is a design trade-mark representing a bee.

 

I shall therefore determine if the Opponent’s second ground of opposition is well founded. As appears from the Opponent’s official mark, the Mark does not consist of such official mark. The next issue to be resolved is if the Mark so nearly resembles as to be likely mistaken for the aforesaid official mark. In Canadian Council of Professional Engineers v. APA- The Engineered Wood Assn. (2000), 7 C.P.R. (4th) 239 Mr. Justice O’Keefe defined the resemblance test under s. 9(1)(n) in the following terms:

[69] Having outlined the protection official marks enjoy, based on the provisions of the Act, it must be determined what the scope of   prohibited marks is: the meaning of "consists of" most specifically. As a result of the foregoing, which clearly shows the privileged position official marks enjoy, I reject the interpretation of subparagraph 9(1)(n)(iii) proffered by the appellant and declare that the interpretation advanced by the Registrar is correct. In order to offend subparagraph 9(1)(n) (iii) so as to be unregistrable under paragraph 12(1)(e), the proposed mark must either be identical to the official mark or so nearly resemble it so as to be likely to be mistaken for it. The words "consists of" in the subsection of the Act are to be interpreted to mean "identical to" as was apparently held by the Registrar.

[70] This interpretation maintains the great ambit of protection afforded to official marks, but stops short of conferring an absurdly great ambit of protection for official marks which Parliament cannot reasonably be taken to have contemplated. It is inconceivable that Parliament intended to give such wide ambit of protection to official marks through the enactment of section 9 of the Act. Were the proposition of the appellant correct and any mark that contained, in some form, the official mark could not subsequently be adopted and would be unregistrable, it would be the case that the use of "ING" would be prohibited. Consider that no one could use the term "shopping.com", or any other mark ending in "ING", followed by ".com". It is not reasonable to state that such marks are prohibited. Such is a logical extension of the appellant's argument and results in an unreasonably vast monopoly and scope of protection. Such is not the intent of the protection for official marks.

[71] The interpretation I have adopted allows the wide ambit of protection to official marks which I believe is consistent with the scheme of the Act as a whole, related sections of the Act, as well as the intention of Parliament. No one may register or use a trade-mark "ENGINEER" (or another of the official marks) in association with any ware or service, notwithstanding the fact that such a possible trade-mark may not be confusing with the appellant's marks. And no one may register or use a trade-mark which is similar to the appellant's official marks so that it is likely to be mistaken for them, again notwithstanding that the mark may be sought to be used in association with such wares or services that it may well not be held to be "confusing" with the official marks as that term is used in section 6 of the Act. "Mistaken therefor" and "confusing with" are not synonymous.

 

Furthermore, in Canadian Olympic Association v. Cooperative Fédérée de Québec (2000), 7 C.P.R. (4th) 309 Mr. Justice Lemieux stated:

I take from Gibson J.'s reasons after trial the following principles relevant to this case when dealing with official marks under section 9 which are raised to block a trade-mark applicant:

(1) The test under section 9 is one of resemblance and where the official mark and the applied for mark are not identical, the issue "then is whether or not the Defendant's mark is almost the same as, or substantially similar to any or all of BSAO's marks" and that the relevant test to determine this question, as set out in the R. v. Kruger [(1978), 44 C.P.R. (2d) 135 (Reg. T.M.)], is whether "a person familiar with [BSAO's] marks [or any of them] but having an imperfect recollection thereof would... be likely to mistake the [Defendant's mark therefor]". (page 217)

 

(2) The test adopted by Rothstein J. (as he then was) in Canadian Olympic Assn. v. H.C.E.U.A., supra, is nothing more than a useful restatement of the Kruger test and does not vary from the Kruger test. Mr. Justice Rothstein had formulated the test as follows at page 19:

 

The question must be determined in the context of whether a person who, on a first impression, knowing one mark only and having an imperfect recollection of it, would likely be deceived or confused.

 

(3) The straight comparison test is rejected. Gibson J. at page 217 said this:

 

I cannot accept the argument advanced on behalf of the Plaintiffs that the test is one of "straight comparison". The concept of "straight comparison" implies a close and careful look at or comparison between BSAO's marks and the mark of the Defendant. Such a close and careful look or comparison was specifically rejected by Mr. Justice Rothstein in Canadian Olympic Assn. v. Health Care Employees Union of Alberta.

 

The Opponent argues that the Mark and the Opponent’s official mark have the following common characteristics:

➢  Vertical bee;

➢  Aggressive stance;

➢  Sporty look;

➢  Stinger at the bottom of the bee;

➢  Two wings;

➢  Black and white or gray circles.

 

I agree with the Applicant that there is very little resemblance between the Mark and the Opponent’s official mark. I base my conclusion on the following facts:

➢  The distinctive feature of the Mark is that it represent a cartoon character wearing hockey gloves and holding a hockey stick;

➢  Despite the valiant efforts made by the Opponent to convince me otherwise, the only similarity between the two characters is that they both represent a bee cartoon character. However, they are two distinctive representations of a bee. The Opponent cannot claim a monopoly over the representation of a bee. One would expect that a representation of a bee would include wings, a dart, black and yellow (or a lighter shade of black when represented in black and white) colors. I also notice that Applicant’s bee representation includes hair on the head and arm portions.

➢  The analysis made by the Opponent is a comparative analysis, which is not the appropriate test under s. 9(1) of the Act as defined hereinabove. A consumer having a vague recollection of the Opponent’s official mark, would not, on a balance of probabilities, mistaken the Mark for the Opponent’s official mark.

 

I wish to add that the state of the register evidence filed by the Applicant is of no assistance when determining a ground of opposition based on s. 9 of the Act. [See Canadian Olympic Association v. IMI Norgren Enots Ltd. (1989), 23 C.P.R. 93d) 389] In order to distinguish such citation, the Applicant relied on Techniquip Ltd. v. Canadian Olympic Association (1998), 80 C.P.R. (3d) 225 where state of the register evidence was considered in assessing a ground of opposition under s. 9(1) of the Act. However in that case, the opponent was relying on a family of trade-marks. In that context, the Federal Court ruled that state of the register evidence might be relevant. That case can be easily distinguishable from ours for the simple reason that the Opponent is not relying in its statement of opposition on a family of trade-marks.

 

Consequently, the second ground of opposition is dismissed.

 

I shall analyze the third and fourth grounds of opposition in the context of the likelihood of confusion between the Mark and the Opponent’s official mark even though it could be argued that such grounds of opposition are based on the Opponent’s official marks and relate to the registrability of the Mark. In its third ground of opposition, the Opponent does allege prior use and making known of its official mark. As the fourth ground is referring to the “reasons set forth above” it would also include such prior use allegation.

 

The difference in the relevant dates between those two remaining grounds of opposition will not be a determining factor in the outcome of my analysis. Under the third ground of opposition, I must first determine if the Opponent has met its initial onus to prove use, within the meaning of s. 4 of the Act, of its official mark prior to the relevant date. As for the fourth ground of opposition, the Opponent has an initial onus to prove that its official mark was sufficiently known in Canada to negate the distinctiveness of the Mark.

 

Ms. Birks makes a bald assertion of use of the official mark since 1994. There is evidence of use of the official mark with the filing of some apparel and novelty items bearing the official mark but there is no concrete evidence establishing use of such mark prior to the filing date of the application or prior to the filing date of the statement of opposition. There are no yearly sales figures or documentary evidence furnished that would enable me to conclude that the official mark was known to some extent in Canada as of the filing date of the statement of opposition. There is no documentary evidence establishing a date of use of the official mark that would predate any of the relevant dates. The only documents bearing a date are the web pages filed as Exhibit D to her affidavit, but they are dated December 1, 2003, which is subsequent to any of the relevant dates mentioned above. Even if I consider the bald assertion of use of the official mark since early 1994 as stated in paragraph 8 of her affidavit, there is no evidence nor any allegation that the Opponent has not abandoned such use as of the date of advertisement of the present application. Such lack of evidence is fatal to the Opponent [see s. 16(5) of the Act] as far as entitlement to the registration of the Mark is concerned. Therefore the third ground of opposition is also dismissed.

 

The Opponent has not met its initial onus of establishing either use or making known of its official mark prior to the filing date of its statement of opposition. Consequently, I have no alternative but to dismiss the last ground of opposition.

 

 

V Conclusion

 

Accordingly, having been delegated authority by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Act, I reject the Opponent’s opposition to the registration the Mark, the whole pursuant to Subsection 38(8) of the Act.

 

DATED IN MONTREAL, QUEBEC, THIS 14th DAY OF JULY 2006.

 

 

 

Jean Carrière,

Member,

Trade-marks Opposition Board