IN THE MATTER OF AN OPPOSITION
by Nike, Inc. and Nike Canada Ltd. to
application No. 624,000 for the trade-mark
JUST DO IT! filed by Senseicorp Ltd.
On January 27, 1989, Senseicorp Ltd. filed an application to register the word and design trade-mark, illustrated below,
for use in association with following wares,
a board game, namely a self-improvement game,
and with the following services,
counselling and consulting services, in the
area of self-improvement.
The application is based on the applicant's use of the mark JUST DO IT! in Canada since at least as early as October 8, 1988 for both wares and services. The subject application was advertised for opposition purposes on February 21, 1990.
The joint opponents Nike, Inc. and Nike Canada Ltd. filed a statement of opposition on July 26, 1990, pursuant to a retroactive extension of time: see the Office letter of August 22, 1990. The grounds of opposition are summarized below:
(a) the applied for mark is not distinctive of the applicant's wares or services in view of the opponents' use of the mark JUST DO IT! in advertisements "which have stressed self improvement, the benefits of athletic activity and individuality" as well as athletic clothing,
(b) the applicant is not entitled to register the applied for mark because, at the date of first use alleged by the applicant, the applied for mark was confusing with the mark JUST DO IT! which had been previously made known in Canada by the opponent Nike, Inc.,
(c) the statement of wares and services is not specified in ordinary commercial terms, and the applicant has not used the applied for mark for the wares or services specified in the application since the date of first use alleged namely, October 8, 1988.
The applicant filed and served a counter statement generally denying the opponents' allegations, and pleading, among other things, that the opponents' alleged trade-mark JUST DO IT! is not a trade-mark but "a mere advertising theme or slogan . . ."
The opponents' evidence in chief consists of the affidavits of A. Thomas Niebergall, Assistant Secretary of Nike. Inc, Suneel Katyal, student at law, and Eric C. Devenny, student. The applicant's evidence consists of the affidavits of Michael Haynes, President of the applicant company, and Neil Irwin, businessman. The opponents filed the affidavit of Herbert McPhail, trade-mark searcher, as evidence in reply. Mr. Haynes and Mr. Irwin were cross-examined on their affidavits; the transcripts of their cross-examinations, and exhibits thereto, form part of the evidence in this proceeding.
Mr. Haynes testifies that the principal product of the applicant is a board game called "Fflow", first sold in the 1988 Christmas season. According to Mr. Haynes, the game Fflow is designed to stimulate creative and innovative thinking, and is suitable as an educational, training, or "retail entertainment product." The board game JUST DO IT! is, apparently, a modification of the game Fflow.
The applicant also alleges use of the mark JUST DO IT! in association with a training program that incorporates the board game JUST DO IT!. The training program was specifically designed for the sales staff of a particular life insurance company (identified in the evidence as the A.L. Williams Company) and involves role-playing. The board game that is referred to in the subject application is the game that is played in conjunction with the aforementioned training program. It appears that the services described in the subject application include the applicant's participation in the board game JUST DO IT! in the role of "Coach": see lines 4-16, page 26 of Mr. Irwin's transcript of cross-examination. It also appears that the rules governing the interactions among the participants in the game (that is, sales trainees) matter most, rather than the movement of any pieces on a board: see line 26, page 25 to line 3, page 26 of Mr. Irwin's transcript of cross-examination; see also pages 11-12 of Mr. Haynes transcript of cross-examination, reproduced, in part, below.
It would appear at first glance that a component part of the game JUST DO IT! is a 55-page instruction booklet entitled The Book of Wonder, however, that is not the case: see pages 13-14 of Mr. Haynes transcript of cross-examination reproduced, in part, below.
In other words, the booklet entitled The Book of Wonder is not the board game specified in the subject application, nor is the booklet necessarily a component part of the game JUST DO IT! I mention in passing that Mr. Haynes' estimate for the number of booklets actually sold is "between 3 and 500": see line 10, page 28 of his transcript of cross-examination.
Some of Mr. Haynes' testimony, on other matters, is at variance with Mr. Irwin's testimony and with Suneel Katyal's evidence. For example, Mr. Haynes claims that the idea to use the mark JUST DO IT! for the applicant's wares and services originates with him, while Mr. Irwin claims that the mark was adopted by Mr. Haynes at his (Mr. Irwin's) suggestion: see lines 5-17, page 17 of Mr. Haynes transcript of cross-examination and lines 10-14, page 8 of Mr. Irwin's transcript. In another instance, Mr. Katyal testifies (see paragraph 7 of Mr. Katyal's affidavit) that "Mr. Haynes advised me that this game [JUST DO IT!] was no longer manufactured or sold and that it had been replaced by a game entitled Fflow, which was used as part of a corporate motivational program." Mr. Haynes' evidence on this point is that he advised Mr. Katyal that "his [Mr. Katyal's] need could best be meet[sic] by combining Fflow and JUST DO IT!" (see paragraph 10 of Mr. Haynes' affidavit). I prefer Mr. Irwin's and Mr. Katyal's evidence on the above-matters because Mr. Irwin's evidence is more informative than Mr. Haynes' evidence and Mr. Katyal's evidence is more specific than Mr. Haynes' evidence.
At the oral hearing, the opponents' agent advised that he had not been provided with undertakings (three in all) given at Mr. Haynes' and Mr. Irwin's cross-examinations. The applicant's position was that undertakings were sent (by facsimile) to the opponents' agent about two hours prior to the oral hearing. The applicant also advised, at the oral hearing, that two of the undertakings, concerning the applicant's date of first use of the mark JUST DO IT!, could not be fulfilled. The undertakings were not completed or provided to the opponents in a timely manner and are not part of the record herein. I have drawn a negative inference concerning the accuracy of the date of first use alleged in the subject application from the applicant's failure to fulfil undertakings.
The grounds of opposition denoted by (c) above are that the applicant's application does not comply with Sections 30(a) and 30(b) of the Trade-marks Act which require the application to contain a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been used, and to contain the date from which the applicant has used its mark in association with the wares or services specified in the application. With respect to these grounds of opposition, the legal burden or onus is on the applicant to show that its application complies with Sections 30(a) and 30(b). That is, the applicant must show that the specification of wares and services, and the date of first use alleged, are factually correct. There is also, in accordance with the usual rules of evidence, an evidential burden on the opponents to prove the facts inherent in their allegations that the wares or services described in the application are not in ordinary commercial terms or are not specific and that the applicant's date of first use is incorrect. The presence of an evidential burden on a party with respect to a particular issue means that in order for the issue to be considered at all, there must be sufficient evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. The evidential burden on the opponents with respect to Sections 30(a) and 30(b) is lighter than in the ordinary case: see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 at pp. 298-300 (F.C.T.D.) The presence of the legal burden on a party means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against that party: see Joseph E Seagram & Sons Ltd. v. Seagram Real Estate Ltd. (1984), 3 C.P.R.(3d) 325 at pp. 329-330 (TMOB). The material time for considering the circumstances respecting the issue of non-compliance with Sections 30(a) and 30(b) is the filing date of the application: see Thomas J. Lipton Inc. v. Primo Foods Ltd. (1992), 44 C.P.R.(3d) 556 at p. 560 (TMOB); Georgia-Pacific Corp. v. Scott Paper Ltd. (1984), 3 C.P.R. (3d) 468 at p. 475 (TMOB).
In the instant case, the evidence elicited by the opponents on cross-examining Mr. Haynes and Mr. Irwin is sufficient to put into issue whether the applicant has described its services in accordance with Section 30(a). In this regard, it appears that the applicant's services may aptly be specified as a life insurance sales training programme. The evidence elicited on cross-examination is also sufficient to put into issue whether the applicant has ever actually used the mark JUST DO IT! in association with a board game: see, for example, page 15 of Mr. Haynes transcript of cross-examination reproduced, in part, below.
I find that, on the balance of probabilities, the evidence does not support the applicant's position that it has specified its services as required by Section 30(a), or that the applicant has actually used the mark JUST DO IT! on wares as required by Section 30(b). It appears to me that the applicant has not offered anything other than a life insurance sales training program under the mark JUST DO IT! It follows that the applicant has not met the legal onus on it to show that its application specifies the applicant's services in ordinary commercial terms. Neither has the applicant demonstrated, on a balance of probabilities, that it has ever actually used its mark, within the meaning of Section 4(1), in association with a board game. Thus, the opponents succeed on the grounds of opposition denoted by (c) above, and it is not necessary for me to consider the remaining grounds of opposition. I would add, however, that the opponents might also have succeeded on the ground of opposition denoted by (a) above, having regard to the reputation acquired by the opponents' phrase JUST DO IT (at the material date July 26, 1990) as a result of spill-over advertising from the United States of America into Canada. In this regard, nothing turns on whether the opponents employed the phrase JUST DO IT as a trade-mark (within the meaning of Sections 2 and 4 of the Trade-marks Act) or merely as an advertising slogan. In either case, the phrase would have been identified with the opponents. I would also add that the opponents might equally have succeeded on the ground of opposition alleging that the applicant did not use its mark in association with services since the date of first use alleged in the application, given the applicant's vagueness on the date of first use and the applicant's failure to comply with undertakings directed to that issue.
In view of the above, the applicant's application is refused.
DATED AT HULL, QUEBEC, THIS 31st DAY OF OCTOBER ,1994.
Myer Herzig,
Member,
Trade-marks Opposition Board