IN THE MATTER OF AN OPPOSITION by Hope International Development Agency to application No. 669,205 for the trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design filed by Aga Khan Foundation Canada
On October 26, 1990, the applicant, Aga Khan Foundation Canada, filed an application to register the trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design, a representation of which appears below, based upon use of the trade-mark in Canada since September 28, 1990 in association with "organizing and presenting exhibition relating to global development", as well as being based upon proposed use of the trade-mark in Canada in association with:
Charitable fund raising services including the presentation of exhibitions, live demonstrations, conducting tours, holding receptions and forums designed to assist the poor in Africa and Asia by improving health care, enhancing the quality of education, increasing rural incomes and protecting the environment; raising, acquisition, management and expenditure of funds in association with charitable objects; publication of newsletters, brochures and other publications dealing with and in association with fund raising, raising of awareness and matters dealing with international developments
The applicant disclaimed the right to the exclusive use of the word MONDE and the representation of the globe apart from its trade-mark.
The applicant’s trade-mark was advertised for opposition purposes in the Trade-marks Journal of February 12, 1992 and the opponent, Hope International Development Agency, filed a statement of opposition on July 10, 1992. The opponent requested and was granted leave to amend its statement of opposition on March 11, 1994.
The applicant served and filed a counterstatement in which it denied the opponent's grounds of opposition. The opponent filed as its evidence the affidavits of Crystal J. Thunell, Coleen Archer and Douglas E. Eacrett while the applicant submitted the affidavit of Nazeer Aziz Ladhani. Both parties filed written arguments and an oral hearing was not conducted in respect of this proceeding.
The first ground of opposition is based on Section 30(b) of the Trade-marks Act, the opponent alleging that the applicant has not used the trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design as a trade-mark as alleged, or at all. While the legal burden is upon the applicant to establish that his application is in compliance with Section 30(b) of the Trade-marks Act, there is an initial evidential burden on the opponent in respect of the 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]. To meet the evidential burden upon it in relation of 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 [see John Labatt Limited v. The Molson Companies Limited, 30 C.P.R. (3d) 293, at p. 298]. Further, that burden is lighter respecting the issue of non-compliance with Section 30(b) of the Act [see Tune Masters v. Mr. P's Mastertune, 10 C.P.R.(3d) 84, at p. 89]. Also, in the recent decision of the Federal Court, Trial Division, in Labatt Brewing Company Limited v. Molson Breweries, a Partnership,[F.Ct.No. T-646-95, dated May 28, 1996, yet unreported], at pages 17-18, Heald, D.J. commented as follows concerning the evidential burden upon an opponent in respect of a Section 30(b) ground of opposition being met by reference to the applicant’s own evidence:
Labatt's Counsel submitted that the Registrar "can only look at the totality of the evidence in respect of the ground in respect of which it was filed." Counsel further submitted that the Registrar must look at the evidence on an "issue-by-issue basis, a ground-by-ground basis." I reject this position taken by Labatt. In my view, the Registrar is entitled to look at the evidence in its entirety, in order that he/she be satisfied that the mark is registrable and that there are no valid grounds of opposition. If this were not the case, the purity of the Trade-marks Register would be jeopardized.
On the basis of the aforesaid reasons, I reject Labatt's submission that the Registrar erred in basing his decision on a ground of opposition, in respect of which the opponent, Molson, did not adduce any evidence.
In the present case, no evidence has been furnished by the opponent in support of its Section 30(b) ground. Rather, the opponent has relied upon the affidavit of Nazeer Aziz Ladhani in support of its position that it has met the evidential burden upon it in respect of the Section 30(b) ground. A consideration of that affidavit will therefore determine whether the opponent has met its initial burden in respect of its first ground. Further, in its amended statement of opposition, the opponent specifically pleaded that the applicant “had not used the subject design as a trade-mark as alleged, or at all”. In its written argument, the opponent has argued that the applicant has not used its trade-mark since the claimed date of first use and that the applicant’s services failed to result in the public actually obtaining a benefit of some kind. In my view, the Section 30(b) ground as pleaded arguably does not contemplate a consideration of these issues. Moreover, there is nothing in the Ladhani affidavit to indicate that the affiant was specifically addressing either of these issues in his affidavit and, in any event, the affidavit is not inconsistent with the applicant having used the trade-mark in Canada since September 28, 1990 or with the public having actually obtained a benefit of some kind from the applicant’s services. As a result, I am not prepared to find in the opponent’s favour in respect of either of these issues.
I agree with the opponent’s submission that, in a number of the exhibits annexed to the Ladhani affidavit, the marks ESPOIR & Design and VOIR LE MONDE SOUS UN JOUR NOUVEAU appear to be functioning as separate trade-marks rather than as one trade-mark. Nevertheless, I consider that some of the documents comprising Exhibit C to the Ladhani affidavit evidence use of ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design as a trade-mark. Furthermore, such evidence is not inconsistent with the applicant having used the trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design in association with the services covered in the present application. In view of the above, I reject the Section 30(b) ground of opposition.
The second ground is based on Section 30(e) of the Act, the opponent alleging that, at the filing date of the application, the applicant never intended, itself, to use the subject design as a trade-mark in Canada. Again, no evidence has been furnished by the opponent in support of this ground. Rather, the opponent has argued that, as the applicant’s evidence does not support its claim to use of its trade-mark, it must logically be concluded that it equally does not intend to use the trade-mark in Canada in association with the proposed use services identified in its application. However, the applicant’s evidence is not inconsistent with its claim that it intends to use the trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design in Canada in association with the proposed use services identified in the present application. I have therefore dismissed this ground of opposition.
The third ground is based on Section 30(i) of the Trade-marks Act, the opponent alleging that the applicant could not be satisfied that it was entitled to use the trade-mark in Canada in association with the services covered in the present application. No specific allegations of fact have been set forth in the amended statement with respect to the Section 30(i) ground. Accordingly, this ground is contrary to Section 38(3)(a) of the Trade-marks Act. In any event, and assuming that the opponent is relying upon its official marks and the applicant’s possible awareness of those marks prior to filing the present application, such a fact would not be inconsistent with the statement in the present application that the applicant was satisfied that it was entitled to use the trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design in Canada on the basis inter alia that the mark does not consist of any of the opponent’s official marks, nor does it so nearly resemble any of those marks as to be likely to be mistaken for any of them. Thus, the success of this ground is contingent upon a finding that the applicant’s trade-mark offends the provisions of Section 9(1)(n)(iii) of the Trade-marks Act in view of the opponent’s official marks.
As its fourth ground, the opponent has alleged that the trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU & Design is not registrable in view of Sections 38(2)(b) and 12(1)(e) of the Trade-marks Act because it is a mark the adoption of which is prohibited by Section 9(1)(n)(iii) of the Trade-marks Act having regard to the following official marks of the opponent. Public notice of the adoption and use of the opponent’s official marks was given in the Trade-marks Journals of March 12, 1986 and November 6, 1985 :
HOPE INTERNATIONAL DEVELOPMENT AGENCY
The material time for considering the circumstances respecting the fourth ground of opposition would appear to be the date of my decision [see Allied Corporation v. Canadian Olympic Association, 28 C.P.R.(3d) 161 (F.C.A.); affg. 16 C.P.R.(3d) 80 (F.C.T.D.); revg. 6 C.P.R.(3d) 500 (T.M.O.B.); and Olympus Optical Company Limited v. Canadian Olympic Association, 38 C.P.R.(3d) 1 (F.C.A.); affg. 31 C.P.R.(3d) 479; revg. 16 C.P.R.(3d) 455 (T.M.O.B.)]. While the legal burden is on the applicant to show that its mark is not a prohibited mark, to the extent that the facts alleged by the opponent are not self-evident or admitted, there is in accordance with the usual rules of evidence an evidential burden on the opponent to support the facts alleged [see Joseph E. Seagram & Sons Ltd. et al v. Seagram Real Estate Ltd., 3 C.P.R. (3d) 325, at pp. 329-330]. The opponent is not required to evidence use and adoption of each official mark relied on [see page 166 of the Federal Court of Appeal's reasons in the Allied case, referred to above]. Finally, the test to be applied is one of straight comparison of the marks in question apart from any marketplace considerations such as the wares, services or trades involved [see page 166 of the Allied decision; and page 65 of the Trial Division's decision in Canadian Olympic Association v. Konica Canada Inc., 39 C.P.R.(3d) 400 (F.C.A.); revg. on other grounds 30 C.P.R.(3d) 60 (F.C.T.D.)]. As stated in Section 9(1)(n)(iii) of the Act, that test is whether or not the applicant's mark consists of, or so nearly resembles as to be likely to be mistaken for, the official mark. In other words, is the applicant's mark identical to, or almost the same as, the official mark? [see Ontario Federation of Anglers and Hunters v. Murphy, 34 C.P.R.(3d) 496 (T.M.O.B.)].
In support of its Section 9(1)(n)(iii) ground, the opponent adduced the affidavits of Crystal Thunell and Coleen Archer. In paragraph 2 of her affidavit, Ms. Thunell states the following:
2. In September 1991 I attended at an exhibition in Vancouver, B.C. put on by the Aga Khan Foundation. It displayed the logo which is attached to my affidavit as Exhibit A. Because the activities were very similar to those of HOPE I assumed the exhibition was put on in association with HOPE.
I would note that Exhibit A discloses the use of the trade-mark HOPE SEEING OUR WORLD THROUGH NEW EYES & Design and not the trade-mark sought to be registered in this proceeding. Also, in paragraph 2 of her affidavit, Ms. Archer states:
2. In September 1990 I attended at an exhibition in Vancouver, B.C. put on by the Aga Khan Foundation called HOPE SEEING OUR WORLD THROUGH NEW EYES. I and the group of people I was with mistakenly assumed the exhibition was put on by HOPE due to its use of the name HOPE.
The above paragraphs of the Archer and Thunell affidavits appear to be directed to the issue of confusion between the applicant’s trade-mark HOPE SEEING OUR WORLD THROUGH NEW EYES & Design and the opponent’s marks and name. In addition to there being no reference to the applicant’s trade-mark ESPOIR VOIR LE MONDE SOUS UN JOUR NOUVEAU& Design or to
any of the opponent’s official marks in either of the affidavits, Ms. Thunell in her affidavit states that she assumed that the exhibition which she attended was put on by the opponent because the ‘activities’ of the applicant were very similar to those of the opponent. As pointed out above, the test under Section 9(1)(n)(iii) is one of straight comparison of the marks in question apart from any marketplace considerations such as the wares, services or trades involved. As a result, the Archer and Thunell affidavits are of little assistance in assessing the Section 9 ground.
The applicant’s trade-mark certainly is not identical to any of the opponent’s official marks. Furthermore, from a visual comparison of the applicant’s trade-mark and the opponent’s Section 9(1)(n)(iii) marks, I do not consider the applicant’s trade-mark to be almost the same as any of the opponent’s official marks. However, the test for resemblance under Section 9(1) is not restricted to a visual comparison of the marks but rather includes all three aspects of resemblance referred to in Section 6(5)(e) of the Trade-marks Act [see WWF-World Wide Fund for Nature v. 676166 Ontario Ltd., 44 C.P.R.(3d) 563, at p. 567]. Furthermore, there is the argument that the existence of the opponent’s small family or series of official marks and other related marks incorporating the word "HOPE" broadens the test for resemblance somewhat in the present case [see Canadian Olympic Association v. Bio-Lab Canada Inc., 48 C.P.R.(3d) 388].
As there is no similarity in sounding between the applicant’s trade-mark and any of the opponent’s official marks, the only remaining issue to be determined is whether there is any similarity in the ideas suggested between the applicant’s trade-mark and the opponent’s official marks and, if so, whether the similarity in ideas is such that one is likely to be mistaken between them. In this regard, and assuming that the Section 9(1) test must be assessed from the perspective of the average bilingual Canadian, both the applicant’s mark which is dominated by the element ESPOIR & Design and the most relevant of the opponent’s official marks, HOPE & Design, convey the idea of hope for mankind. As a result, the ideas suggested by the two marks are essentially identical, such that one would be likely to mistake the applicant’s trade-mark for the opponent’s official mark.
In view of the above, I have concluded that the applicant has not met the legal burden upon it in respect of the Sections 12(1)(e) and 9(1)(n)(iii) ground of opposition.
Having been delegated by the Registrar of Trade-marks pursuant to Section 63(3) of the Trade-marks Act, I refuse the applicant’s application pursuant to Section 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC THIS 22nd DAY OF AUGUST,1996.
G.W. Partington,
Chairman,
Trade Marks Opposition Board.