IN THE MATTER OF OPPOSITIONS by S.C. Johnson & Son, Inc. and S.C. Johnson and Son, Limited to application Nos. 725,947 and 725,948 for the trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES filed by Peerless Carpet Corporation/ La Corporation des Tapis Peerless, and presently standing in the name of Future Step Technologies Inc./ Les Technologies Future Step Inc.
On April 2, 1993, the applicant, Peerless Carpet Corporation/ La Corporation des Tapis Peerless, filed applications to register the trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES based upon proposed use of the trade-marks in Canada in association with:
Floor coverings, namely: vinyl floor coverings, carpets, carpet undercushions, rags, bath rugs accessories, namely: toilet seat covers, toilet tank covers, toilet contour floor mats, bathmats, scatter rugs; carpet attachment and installation systems, namely: carpet attachment backing, carpet installation tape and tape coverings, tools for the installation of carpets, namely: rollers, cutters, seaming tools and knives, baseboards and carpet trim; window and wall coverings, namely: curtains, drapes, blinds, shades, wallpaper, carpet wall covering, fabric wall covering; paint
and in association with the following services:
Operation of a business dealing in the manufacture, marketing, distribution and sale of floor coverings, carpets, adhesives and carpet installation systems; operation of an interior decorating business; interior decorating consultant services.
The applicant disclaimed the right to the exclusive use of the word TECHNOLOGIES apart from
its trade-mark in relation to the services covered in application No. 725,948.
Both applications were subsequently assigned to Future Step Technologies Inc./ Les Technologies Future Step Inc., the current applicant of record, and both applications were advertised for opposition purposes in the Trade-marks Journal of December 15, 1993. The opponents, S.C. Johnson & Son, Inc. and S.C. Johnson and Son, Limited, filed essentially identical statements of opposition to each of the applications on May 13, 1994, a copy of each of which was forwarded to the applicant on June 21, 1994. The applicant served and filed a counter statement in each proceeding in which it generally denied the opponents’ grounds of opposition. The opponents filed as their evidence the affidavit of Murray Thompson while the applicant submitted as its evidence two affidavits of Louise N. Gendron, both dated December 14, 1995. Both parties filed written arguments and the opponents alone were represented at an oral hearing.
Initially, I would note
that the applicant has relied to a significant extent on the fact that it is
the registered owner of the trade-mark FUTURE STEP, registration No. 220,945,
covering “Urethane carpet backing”. However, as pointed out by
the hearing officer in Coronet-Werke Heinrich Schlerf GmbH v. Produits
Menagers Coronet Inc., 4 C.P.R. (3d) 108, at p. 115, Section 19
of the Trade-marks Act does not give the owner of a registration
the automatic right to obtain any further registrations no matter how closely
they may be related to the original registration [see also Groupe Lavo
Inc. v. Proctor & Gamble Inc., 32 C.P.R. (3d) 533, at p. 538].
While the decision of the hearing officer was reversed on appeal [see Produits
Menagers Coronet Inc. v. Coronet-Werke Heinrich Schlerf GmbH,
10 C.P.R. (3d) 482], it was on the basis of new evidence filed on appeal that
the applicant had used its previously registered trade-mark in Canada. As a
result, I do not consider that the existence of the applicant’s registration is of any relevance to the issues in this opposition.
As their first two grounds of opposition, the opponents alleged that the applicant’s applications do not comply with Section 30 of the Trade-marks Act in that: (I) the amended applications dated September 1, 1993 do not include a statement that the present successor intends to use the mark in Canada; and (ii) the words “floor coverings” in each of the statements of services are insufficiently specific. The applicant submitted an amended application dated November 4, 1994 in each case which was accepted by the Opposition Board by way of an Office letter dated December 16, 1994. The amended applications included a statement that Future Step Technologies Inc./ Les Technologies Future Step Inc. intended to use the respective trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES in Canada in association with the wares and services covered in the applications. These amendments overcome the opponents’ objections to the applicant’s amended applications of September 1, 1993 and I have therefore rejected the first Section 30 ground.
The second Section 30 ground is based on the allegation that the applicant’s statements of services are contrary to Subsection 30(a) of the Trade-marks Act in that the words “floor coverings” in each of the statements of services are insufficiently specific. The relevant portions of the statements of services read as follows:
“Operation of a business dealing in the manufacture, marketing, distribution and sale of floor coverings, carpets, adhesives and carpet installation systems”.
The onus or legal burden is on the applicant to show its compliance with the provisions of Subsection 30(a) of the Trade-marks Act [see Joseph E. Seagram & Sons Ltd. 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 (F.C.T.D.)]. However, to the extent that the opponents rely on allegations of fact in support of the second ground, there is an evidential burden on them to prove those allegations. To meet the evidential burden upon them in relation to a particular issue, the opponents must adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support that issue exist. At page 298 of the John Labatt decision, Mr. Justice McNair characterised the evidential burden on an opponent as follows:
The evidential burden is the burden of adducing sufficient evidence to persuade the trier of fact that the alleged facts are true: see Sopinka and Lederman, The Law of Evidence in Civil Cases [Butterworths], 6th ed., pp. 107-08; Phipson On Evidence, 13th ed., para. 44-03; McCormick On Evidence [Hornbook Series, West Publishing Co.], 3rd. ed., pp. 946-48; and Thayer, Preliminary Treatise On Evidence at the Common Law (1898), ch. 9.
The material time for considering the circumstances in respect of the Subsection 30(a) grounds is as of the applicant's filing date [see Style-Kraft Sportswear Ltd. v. One Step Beyond Ltd., 51 C.P.R.(3d) 271, at p. 274]. As for the test to be applied under Subsection 30(a) of the Act, the former Registrar of Trade-marks stated in Dubiner and National Yo-Yo and Bo-Lo Ltd. v. Heede Int'l Ltd., 23 C.P.R. (2d) 128 that an applicant in its application “must clearly set forth wares or services as they are customarily referred to in the trade.” Also, in Sentinal Aluminium Products Co. Ltd. v. Sentinel Pacific Equities Ltd., 80 C.P.R. (2d) 201, the Opposition Board noted that a statement of services may be more difficult to define in terms of the specific services as contrasted to a statement of wares, but that Subsection 30(a) of the Trade-marks Act does require a measure of specificity in respect of the services covered in a trade-mark application where it is reasonable to expect that a more specific statement of services in ordinary commercial terms can be provided by an applicant.
In Pro Image Sportswear, Inc. v. Pro Image, Inc., 42 C.P.R.(3d) 566, I considered whether “retail sporting goods store services” could constitute a statement in ordinary commercial terms of the “specific” services in association with which the trade-mark THE PRO IMAGE & Design was proposed to be used. In that case, I concluded that the applicant is not required to identify in its application the nature of the “sporting goods” associated with its services in order to meet the requirements of Subsection 30(a) of the Trade-marks Act. Likewise, in Stanhome Inc. v. Les Encheres Stanley Inc., 82 C.P.R. (2d) 20, I found that the applicant's statement of services of “operating a business specializing in the retail sale of classes of household and commercial wares” by itself sufficiently defined the nature of the services being rendered without the necessity of the applicant delimiting the products being sold either in specific terms or by way of general categories.
In view of the above, I have concluded that the “Operation of a business dealing in the manufacture, marketing, distribution and sale of floor coverings, carpets, adhesives and carpet installation systems” by itself sufficiently defines the nature of the services being rendered without the necessity of the applicant delimiting the “floor covering” in specific terms. I have therefore rejected the opponents’ grounds of opposition based on Subsection 30(a) of the Trade-marks Act.
The remaining grounds of opposition all turn on the issue of confusion between the applicant’s trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES as applied to the wares and services covered in the present applications and the opponents’ trade-marks FUTURE and FUTURE REFLECTIONS, registration Nos. 163,936 and 384,302, both covering “Polishes, and polishes with cleaning properties, both for use on inanimate surfaces”. In assessing whether there would be a reasonable likelihood of confusion between the trade-marks at issue, the Registrar must have regard to all the surrounding circumstances including, but not limited to, those specifically enumerated in Subsection 6(5) of the Trade-marks Act. Further, the Registrar must bear in mind that the legal burden is on the applicant to establish that there would be no reasonable likelihood of confusion between the trade-marks at issue as of the material dates. The material date in respect of the Paragraph 12(1)(d) grounds is the date of decision [see Park Avenue Furniture Corp. v. Wickes/Simmons Bedding Ltd. et al, 37 C.P.R. (3d) 413 (F.C.A.)] while the material dates in relation to the non-entitlement and non-distinctiveness grounds are, respectively, the filing date of the applicant’s applications [April 2, 1993] and the date of opposition in each case [May 13, 1994].
With respect to Paragraph 6(5)(a) of the Act, the opponents’ trade-marks FUTURE and FUTURE REFLECTIONS and the applicant’s trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES are inherently distinctive as applied to the respective wares and services of the parties. As no evidence has been furnished by the applicant with respect to its use of its trade-marks, I must assume that neither of the trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES has become known to any extent in Canada. On the other hand, the opponents’ evidence establishes that their trade-mark FUTURE has become fairly well known, being the largest selling floor care preparation in Canada with gross sales exceeding $4,000,000 annually since 1987 while advertising and promotional expenditures from 1986 to 1993 exceeded $5,470,000. The Thompson affidavits also establish that the opponents’ trade-mark FUTURE REFLECTIONS has become known in Canada with sales of FUTURE REFLECTIONS products from 1990 to 1993 exceeding $620,000. Thus, the extent to which the trade-marks at issue have become known [Para. 6(5)(a)] weighs in the opponents’ favour. Likewise, the length of time the trade-marks at issue have been in use [Para. 6(5)(b)] favours the opponents in that they have used their trade-mark FUTURE in Canada since May of 1969 whereas the applicant has yet to commence use of its trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES.
Under Paragraphs 6(5)(c) and (d) of the Trade-marks Act, the Registrar must have regard to the nature of the wares and services and the nature of the trades of the parties. In assessing the likelihood of confusion in relation to a Paragraph 12(1)(d) ground, the Registrar must consider the wares and services set forth in the applicant's applications and in the opponents’ registrations since it is these wares and services which determine the respective monopolies being claimed by the parties in relation to their trade-marks. The opponents’ polishes and polishes with cleaning properties, both for use on inanimate surfaces, differ from the wares and the services covered in the present applications. Further, I do not consider that there would be any potential overlap in the channels of trade associated with the opponents’ wares and the applicant’s wares. In this regard, the Thompson affidavit establishes that the opponents’ wares are “retailed throughout Canada in home-improvement stores, hardware stores, supermarkets, warehouse “clubs”, mass-merchandising stores, and drug stores”. On the other hand, I would expect the applicant’s wares to be distributed through stores specializing in the retail sale of carpeting or window and wall coverings or in the carpeting department or the window and wall coverings department of large general merchandising or department stores. Further, the nature of the trade associated with polishes bears no similarity to the nature of the trade associated with either the operation of a business dealing in the manufacture, marketing, distribution and sale of floor coverings, carpets, adhesives and carpet installation systems or with the operation of an interior decorating business. Likewise, the nature of the trade associated with polishes differs from the nature of the trade associated with interior decorating consultant services.
The applicant’s trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES are similar in appearance and in sounding to the opponents’ trade-mark FUTURE, the applicant’s marks including the entirety of the opponents’ registered trade-mark. Further, to the extent that the ideas suggested by all three marks relate to the future, there is a fair degree of similarity in the ideas suggested by them. However, the applicant’s marks only bear some similarity in appearance and in sounding to the opponents’ FUTURE REFLECTIONS trade-mark when considered in their entireties and these marks appear to convey somewhat different ideas.
As a further surrounding circumstance in respect of the issue of confusion, the applicant adduced state of the register evidence by way of the affidavit of Louise N. Gendron. State of the register evidence is only relevant insofar as one can make inferences from it about the state of the marketplace [see Ports International Ltd. v. Dunlop Ltd., 41 C.P.R.(3d) 432; and Del Monte Corporation v. Welch Foods Inc., 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., 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. In the present oppositions, Ms. Gendron was only able to identify three trade-mark registrations and four pending applications which she considered to be of relevance to the issues of confusion in these cases. In my view, none of the marks when considered in their entireties, and having regard to the wares associated with them, are of relevance to the issues in these proceedings. Moreover, and even assuming the all seven marks were of relevance, no meaningful inferences concerning the state of the marketplace could have been drawn from such a limited number of trade-marks.
Having regard to the above and, in particular, to the fact that the wares and services of the parties differ, as would their respective channels of trade, I have concluded that there would be no reasonable likelihood of confusion between the applicant’s trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES as applied to the wares and services covered in the present applications and the opponents’ registered trade-marks FUTURE and FUTURE REFLECTIONS. I have therefore rejected the grounds of opposition based on Paragraph 12(1)(d) of the Trade-marks Act.
The third ground of opposition in each case is based on Subsection 16(3) of the Trade-marks Act, the opponents alleging that the applicant is not the person entitled to registration of the trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES in that the applicant’s marks are confusing with its trade-marks FUTURE and FUTURE REFLECTIONS which had previously been used and made known in Canada. As the opponents have established their prior use and non-abandonment of the trade-marks FUTURE and FUTURE REFLECTIONS in Canada, these grounds of opposition turn on the issue of confusion between the trade-marks at issue. Further, the material date in respect of this ground is the filing date of the present applications. Having regard to my previous conclusions concerning the nature of the wares and services and the nature of the trades of the parties, I have concluded that there would be no reasonable likelihood of confusion between the trade-marks of the parties as of the filing date of the present applications. I have therefore dismissed these grounds of opposition.
The final grounds relate to the alleged non-distinctiveness of the applicant’s trade-marks FUTURE STEP and FUTURE STEP TECHNOLOGIES. The material date for considering these grounds is the date of opposition [May 13, 1994]. As no specific allegations have been made in support of these grounds, the opponents are limited to the allegations set forth in their other grounds of opposition which relate to the alleged non-distinctiveness of the applicant’s trade-marks. However, as the other grounds are based on allegations of confusion between the trade-marks at issue and since I have concluded that the trade-marks at issue are not confusing, I have likewise rejected the non-distinctiveness grounds.
In view of the above, and having been delegated by the Registrar of Trade-marks by virtue of Subsection 63(3) of the Trade-marks Act, I reject the opponents’ oppositions pursuant to Subsection 38(8) of the Trade-marks Act.
DATED AT HULL, QUEBEC, THIS 25th DAY OF SEPTEMBER, 1997.
G.W. Partington,
Chairman,
Trade-marks Opposition Board.