LE REGISTRAIRE DES MARQUES DE COMMERCE
THE REGISTRAR OF TRADE-MARKS
Citation: 2012 TMOB 130
Date of Decision: 2012-07-13
IN THE MATTER OF AN OPPOSITION by Equinox Entertainment Limited to application No. 1,231,463 for the trade-mark ROXY presently in the name of 54th Street Holdings Sarl
File Record
[1] On September 24, 2004, Quiksilver International Pty Ltd (Quicksilver) filed an application to register the trade-mark ROXY (the Mark) for the following wares and services on the following bases:
(1) Books related to the subject of surfing; used in CANADA since at least as early as June 2003;
(2) Calendars, stickers, decalcomanias, bumper stickers, agendas, diaries; used in CANADA since at least as early as June 1998;
(3) Posters; used in CANADA since at least as early as May 1999;
(4) Stationery, namely note pads, binders, memo pads; used in CANADA since at least as early as July 1998;
(5) Cases for pens and pencils; used in CANADA since at least as early as August 1998;
(6) hoods and headcoverings with canopy of sunshield; non-textile labels, photographs; stockings, pantyhose, suspenders for pants and skirts; books related to the subject of snowboarding, book covers, paper, cardboard; printed matter, namely, posters, post cards, greeting cards; proposed use in CANADA;
(7) Wetsuits; used in CANADA since at least as early as February 2000;
(8) Swimwear; hats, caps; used in CANADA since at least as early as June 1996;
(9) Sandals; used in CANADA since at least as early as February 1997;
(10) Clothing accessory belts; used in CANADA since at least as early as May 1997;
(11) Pyjamas, night clothes; used in CANADA since at least as early as November 1997;
(12) Underwear; used in CANADA since at least as early as March 1997;
(13) Lingerie, scarves, bandanas; used in CANADA since at least as early as April 1997;
(14) Beanies; used in CANADA since at least as early as February 1997;
(15) Skateboarding shoes, boots, snow boots, snowboard boots; used in CANADA since at least as early as November 2001;
(16) Sarongs; used in CANADA since at least as early as 2001;
(17) Socks; used in CANADA since at least as early as February 1999;
(18) Visors; used in CANADA since at least as early as July 2000;
(19) Gloves; used in CANADA since at least as early as October 2002;
(20) Mittens; used in CANADA since at least as early as October 2002;
(21) Headbands; used in CANADA since at least as early as September 1998;
(22) Head scarves; used in CANADA since at least as early as August 2000;
(23) Athletic shoes, shoes; used in CANADA since at least as early as March 1999;
(24) Slippers; used in CANADA since at least as early as October 1997;
(25) Bucket hats; used in CANADA since at least as early as February 1999;
(26) Twill hats, fashion hats; used in CANADA since at least as early as June 1998;
(27) Thongs; used in CANADA since at least as early as April 1998;
(28) Day planners; used in CANADA since at least as early as June 1999; and
(29) School supplies namely binders, books and folders; used in CANADA since at least as early as July 1998.
Collectively referred to as the Wares.
And in association with the following services:
(1) retailing and wholesaling services and retailing and wholesaling services being provided by means of a global computer network or by any other on-line means namely in the fields of clothing, footwear, headgear, all types of wetsuits; perfumes, fragrances, cosmetics, sun screen preparations, sun tanning preparations, soaps, hair and body lotions, moisturisers, bath and shower gels, bath oils, bath powders, deodorants, shampoos; optical goods, eyewear, sunglasses, spectacles and goggles for sports, parts, fittings and accessories for sunglasses, spectacles and goggles for sports, protective helmets for use in sports, recorded materials, pre-recorded and blank audio and video tapes, compacts discs, digital video discs and CD-ROMs, computer bags, bags for compact discs, mobile phone accessories; watches and parts, fittings and accessories, clocks, jewellery, jewels, precious stones, goods in precious metals or coated therewith, badges, purses, belts, buckles and key rings; paper, cardboard and goods made from these materials, printed matter, stationery, writing instruments, cases for pens and pencils, non-textile labels, photographs; travel bags, carry bags, handbags, beach bags, tote bags, bath bags, sports bags, pouches (bags), backpacks, purses, wallets, satchels, brief cases, attache cases, suitcases, key cases, umbrellas; goods of textile, fabric or plastic material [substitute for fabrics], household linen, bed linen, table linen, towels, handtowels, bed and table covers, serviettes, banners, bunting; textiles and fabrics (woven and knitted); sporting apparatus, sporting accessories, covers and protective bags for sporting apparatus; customer sales and services through employed and independent sales representatives; business consultancy services namely establishing and operating retail outlets and retail outlet group purchasing and advertising; promotional services by way of incentive schemes and loyalty programs; proposed use in CANADA;
(2) Organization and conducting of competitions namely those relating to bodyboarding, snowboarding, skiing, kiteboarding and skateboarding; rental of sports and recreation equipment namely those relating to the sports surfing, bodyboarding, snowboarding, skiing, kiteboarding and skateboarding; organization of exhibitions for cultural, entertainment or educational purposes and exhibitions namely skiing, bodyboarding, kiteboarding and skateboarding; provision and management of sports and recreation facilities; sports and physical training services namely athlete and team coaching, namely in the fields of skiing, surfing, bodyboarding, kiteboarding and skateboarding; club services namely in the field of sports and outdoor activities namely in the fields of surfing, kiteboarding, wakeboarding, snowboarding, skiing, body boarding and skateboarding; health club services; development, writing, direction, recording, editing and production of films and other audio visual programs for cinema, video or DVD; recording studio services; production and distribution of cinema, video, DVD, television and online content; rental of films, video tapes, DVDs, CD-ROMs, sound recordings and other audio visual recordings; radio and television entertainment services, namely radio programs and television programs; film festivals; presentation of live performances, namely, in the nature of surfing, skiing, and snowboarding; variety events, namely award presentations and ceremonies and athletic and artistic expression services based on sports namely, surfing, snowboarding and skateboarding; gaming services provided on-line, namely, the provision of interactive games over the Internet; news reporter services; photographic reporting; photography; publishing services; providing information and advice in relation to all of the foregoing; proposed use in CANADA;
(3) Education services, namely conducting courses of instruction in the fields of surfing snowboarding, wake boarding and skateboarding; training in the field of boardriding sports namely, surfing, snowboarding, wakeboarding, skateboarding; entertainment services, namely, providing surfing, skiing, and snowboarding exhibitions and competitions; organization of exhibitions for cultural, entertainment or educational purposes and exhibitions namely relating to snowboarding; timing of sports events, namely, surfing, skiing, and snowboarding; sports and physical training services namely athlete and team coaching, namely in the field of snowboarding; holiday and sport camp services; organization of social events, namely promotional functions and parties, movies/DVD/launch parties and tours, athlete and celebrity public appearances, autograph signings; arranging and conducting of conferences, seminars and workshops in association with surfing, skiing, and snowboarding; providing information and advice in relation to all of the foregoing; used in CANADA since at least as early as 1999;
(4) Organization and conducting of competitions namely those relating to sports such as surfing; organization of exhibitions for cultural, entertainment or educational purposes and exhibitions relating to sports namely surfing; providing information and advice in relation to all of the foregoing; used in CANADA since at least as early 2000;
(5) Organization of exhibitions for cultural, entertainment or educational purposes and exhibitions relating to sports namely wakeboarding; sports and physical training services namely athlete and team coaching, namely in the field of wakeboarding; providing information and advice in relation to all of the foregoing; used in CANADA since at least as early as November 2001; and
(6) Providing online electronic publications (not downloadable); providing information and advice in relation to all of the foregoing; used in CANADA since at least as early as 2002.
Collectively referred to as the Services.
[2] Quicksilver alleges use in AUSTRALIA on wares (1), (2), (3), (4), (5), (6), (7), (8), (9), (10), (11), (12), (13), (14), (15), (16), (17), (18), (19), (21), (22), (23), (24) and on services (1), (2), (3), (4), (6). It also alleges that the Mark has been registered in or for AUSTRALIA on November 20, 2003 under No. 947947 on wares (1), (2), (3), (4), (5), (6), (7), (8), (9), (10), (11), (12), (13), (14), (15), (16), (17), (18), (19), (21), (22), (23), (24). The Mark was also registered in or for AUSTRALIA on March 25, 2004 under No. 963168 on wares (7) and registered in or for AUSTRALIA on January 29, 2004 under No. 955894 on wares (7) and on services (1). The Mark was finally registered in or for AUSTRALIA on June 30, 2004 under No. 1008767 on services (2), (3), (4), (6).
[3] Quicksilver also claims a priority filing date of March 24, 2004 based on application No. 826336256 filed in BRAZIL, in association with the same kind of services (2), (3), (4), (6) listed above.
[4] The application was advertised for opposition purposes in the Trade-marks Journal of August 5, 2009.
[5] The application underwent a series of assignments which were recorded with the Canadian Intellectual Property Office such that the application now stands in the name of 54th Street Holdings Sarl. I shall refer hereinafter to Quicksilver and/or 54th Street Holdings Sarl as the Applicant.
[6] On September 29, 2009 Equinox Entertainment Limited (the Opponent) filed a statement of opposition which was forwarded by the Registrar to the Applicant on October 20, 2009. The grounds of opposition can be summarized as follows:
- The Application does not satisfy the requirements of section 30(a) of the Trade-marks Act R.S.C. 1985, c. T-13, (the Act) in that the application did not contain a statement in ordinary commercial terms of the specific wares and services in association with which the Mark has been or is proposed to be used;
- The Application does not satisfy the requirements of section 30(b) of the Act in that the application does not contain the correct date from which the Applicant or its named predecessors in title, if any, has used the Mark in Canada in association with each of the general classes of wares and services described in the application;
- The Application does not satisfy the requirements of section 30(c) of the Act in that the application does not contain the name of a country of the Union in which the Mark has been used by the Applicant or its named predecessors in title, if any, in association with each of the general classes of the Wares and Services. Furthermore, the Opponent contests the allegation contained in the application to the effect that the Applicant or its named predecessors in title, if any, has used the Mark in Australia or anywhere else alleged in the application, and more particularly that the Mark has been so used in association with each of the general classes of wares and services;
- The Application does not satisfy the requirements of section 30(e) of the Act in that the application does not contain a statement that the Applicant intends to use the Mark in Canada;
- The Application does not satisfy the requirements of section 30(i) of the Act in that the application does not contain a statement that the Applicant is satisfied as to its entitlement to use the Mark in Canada as required and the Applicant could not and can not still be satisfied that it is entitled to use the Mark in Canada since, at the filing date of the application, the Applicant was well aware of the Opponent’s trade-marks described herein and each owner’s continued use thereof;
- The Application is not registrable in view of section 12(1)(d) of the Act since the Mark is confusing with the following Opponent’s registered trade-marks:
I. ROXY, registration TMA304,795;
II. ROXY & Design, registration TMA472,665;
III. ROXY & Design, registration TMA483,627;
IV. ROXY, registration TMA492,451;
V. MOXIE, registration TMDA12,131;
VI. MOXIE’S, registration TMS325,118;
VII. MOXIE, registration TMA671,993;
VIII. FOXY, registration TMA711,066;
IX. FOXY, registration TMA609,208.
collectively referred to as the Registered Marks;
- The Applicant is not entitled to the registration of the Mark pursuant to section 16(1)(2) and (3) of the Act in that at the date of filing of the application, and at all other material times, the Mark was confusing within the meaning of sections 2 and 6 with at least one trade-mark in respect of which an application for registration had been previously filed in Canada by any other person, and more particularly with the application for registration of the trade-mark ROXY POKER filed by the Opponent on October 22, 2003 under application No. 1,194,451 in association with “providing online casinos, and casino gaming entertainment services”;
- Pursuant to section 38(2)(d), the Applicant’s Mark is not distinctive in that it does not distinguish and is neither adapted to distinguish nor capable of distinguishing the Wares and Services from the wares and services of others and including from the wares and services of the third party registrants noted above in association with which the latter have used and are still using each trade-mark listed in Canada.
[7] In its counter statement filed on February 22, 2010 the Applicant denied all grounds of opposition.
[8] The Opponent filed as its evidence certified copies of the registrations listed under its registrability ground of opposition but did not file a copy of its application 1,194,451 while the Applicant filed the affidavit of Randall Hild. I note that the certificates of registration for the Registered Marks are not in the record even though they appeared to have been filed. However under that ground of opposition the Registrar can exercise its discretion and consult the register and I intend to exercise such discretion [see Quaker Oats of Canada Ltd/La Compagnie Quaker Oats du Canada Ltée v Menu Foods Ltd (1986), 11 CPR (3d) 410 (TMOB)].
[9] Only the Applicant filed a written argument and was present at the hearing held by way of a conference call.
Legal Onus and Burden of Proof
[10] The legal onus is upon the Applicant to show that the Application complies with the provisions of the Act, there is however an initial evidential burden on the Opponent to adduce sufficient admissible evidence from which it could reasonably be concluded that the facts alleged to support each ground of opposition exist. Once this initial burden is met, the Applicant has to prove, on a balance of probabilities, that the particular grounds of opposition should not prevent the registration of the Mark [see Joseph E. Seagram & Sons Ltd et al v Seagram Real Estate Ltd (1984), 3 CPR (3d) 325 (TMOB); John Labatt Ltd v Molson Companies Ltd (1990), 30 CPR (3d) 293 (FCTD) and Wrangler Apparel Corp v The Timberland Company [2005] FC 722].
Grounds of Opposition Summarily Dismissed
[11] The Opponent has provided no evidence or argument in support of its grounds of opposition based on sections 38(2)(a) and 30; sections 38(2)(c) and 16(1)(a) and (c), (2)(a) and (c) and (3) (a) and (c); and sections 38(2)(d) and 2 of the Act. Thus I am dismissing all these grounds of opposition on the basis that the Opponent has failed to meet its evidential burden. For sake of clarity the only remaining grounds of opposition are entitlement based on sections 16(1)(b), 16(2)(b) and 16(3)(b) as well as registrability under section 12(1)(d) of the Act.
Non-registrability Ground of Opposition – Section 12(1)(d) of the Act
[12] At the hearing the Opponent submitted that the non-registrability ground was improperly pleaded as none of the registrations cited in the statement of opposition are owned by the Opponent as alleged in the statement of opposition. Consequently the ground of opposition should be dismissed. It was the first time that the Applicant raised the issue. It did not make reference to this situation in its counter statement or in its written argument.
[13] A similar argument was raised by the Applicant in relation to application No. 1,231,464 filed by the Applicant for the registration of the same trade-mark and also opposed by the Opponent. I adopt the comments of my colleague Andrea Flewelling in her decision dated November 16, 2011 in Equinox Entertainment Limited v 54th Street Holdings Sarl 2011 TMOB 233:
I do not agree with the Applicant. When the statement of opposition is read as a whole the non-distinctiveness ground of opposition provides support for a finding that the reference to the Opponent was merely a clerical error. Specifically, the non-distinctiveness ground, which is also based on the Cited Marks, alleges that the Mark is not capable of distinguishing the Wares from “the wares of others and more particularly from the wares of the third party registrants noted above in 3(b)(i) in association with which the latter have used and are still using each trade-mark listed in Canada” (emphasis is mine).
[14] As mentioned by my colleague in her aforesaid decision, the Opponent did provide the registration number of each of the Registered Marks. The Applicant had thus been provided with sufficient information to uncover the discrepancy immediately upon receipt of the statement of opposition. The Applicant did not request an interlocutory ruling to obtain some clarification on this issue.
[15] An opponent’s initial onus is met with respect to a section 12(1)(d) ground of opposition if the registrations relied upon are in good standing as of the date of the Registrar’s decision. I have exercised my discretion and confirmed that the Registered Marks are extant. Consequently the Opponent has met its initial burden of proof. I must therefore determine if the use of the Mark in association with the Wares and Services is likely to cause confusion with any one of the Registered Marks.
[16] The test to determine if there is a likelihood of confusion between two trade-marks is set out in section 6(2) of the Act wherein it is stipulated that the use of a trade-mark causes confusion with another trade-mark if the use of both trade-marks in the same area would likely lead to the inference that the wares and services associated with those trade-marks are manufactured, sold or leased by the same person, whether or not the wares and services are of the same general class. In making such assessment I must take into consideration all the relevant surrounding circumstances, including those listed in section 6(5) of the Act: the inherent distinctiveness of the trade-marks and the extent to which they have become known; the length of time the trade-marks have been in use; the nature of the wares and services or business; the nature of the trade; and the degree of resemblance between the trade-marks in appearance, or sound or in the ideas suggested by them.
[17] Those criteria are not exhaustive and it is not necessary to give each one of them equal weight [see Clorox Co v Sears Canada Inc (1992), 41 CPR (3d) 483 (FCTD) and Gainers Inc v. Marchildon (1996), 66 CPR (3d) 308 (FCTD)]. I also refer to the decision of the Supreme Court of Canada in Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée et al (2006), 49 CPR (4th) 401 where Mr. Justice Binnie commented on the assessment of the criteria enumerated under section 6(5) to determine if there is a likelihood of confusion between two trade-marks.
[18] As the Opponent decided not to file any written argument nor be present at the hearing to make submissions, nor there is evidence of use of any of the Registered Marks, I do not intend to make a lengthy and detailed analysis of those relevant criteria. To dispose of this ground of opposition the following observations will be sufficient.
[19] I have to take into consideration the Applicant’s evidence through the affidavit of Mr. Hild, the Executive Vice-President of Roxy Global Marketing within the Applicant. Without going into details as to the content of his affidavit, suffice to say that the ROXY brand is a global lifestyle brand for young women who embrace the values and virtues connoted by the ROXY brand. He states that the brand was developed in 1989/1990 in the United States and was introduced in Canada at least as early as 1995. Products and accessories offered under the ROXY brand include: sportswear, swimwear, technical outerwear, footwear, cosmetics, jewellery, sunglasses, bags, beauty products and home furnishings. Mr. Hild asserts that the ROXY trade-marks are now being used in Canada in association with a range of products and accessories that includes: clothing, footwear, headgear, bags and wallets, sunglasses and sports glasses, watches, towels and textile articles, jewellery, scents and perfumes, cosmetic and beauty products, household furnishing and linen and sporting articles including snowboards and skis.
[20] Mr. Hild states that the promotion of the ROXY brand has taken the form of magazine advertising, website presence, internet advertising, trade shows, videos, athlete and event sponsorships and co-promotions. He states that the total sales in Canada of ROXY branded product exceed $ 198 million CDN (wholesale). In Canada alone Quicksilver has dedicated no less than $560,000 to the promotion of its brands, including the ROXY brand since 1998.
[21] Mr Hild provides a table of the yearly sales figures in Canada and in the United States from 1996 to 2007. He filed copies of few examples of ROXY promotional brochures and booklets distributed in Canada. He filed samples of advertisements placed in various publications that circulate in Canada.
[22] The Registered Marks can be grouped under three headings: the ROXY trade-marks, the MOXIE trade-marks and the FOXY trade-marks.
[23] The ROXY trade-mark registrations are:
|
Trade-mark |
Registration |
Wares |
|
ROXY |
TMA304,795 |
Tobacco and tobacco products, namely, cigarettes. |
|
|
TMA472,665 |
Fresh fruits. |
|
|
TMA483,627 |
Dried and preserved seafood, dried, preserved and canned fruits, fruit pastes, vegetable pastes, meat pastes, dried and canned mushrooms, pickled and canned vegetables, canned meats, dried and edible seaweed, canned fish, processed nuts and seeds, processed beans, dairy-based food beverages, dairy-based chocolate food beverages, candies, biscuits, crackers, wafers, spices, sauces, noodles, food starch, flour, grain-based food beverages and herbal food beverages. |
|
ROXY |
TMA492,451 |
[TRANSLATION] Hair-styling services for men, comprising haircuts and the sale of hair care products. |
[24] There is no doubt from the evidence of record that the Mark has developed a more substantial reputation than any of the ROXY registered trade-marks for which we have no evidence of use.
[25] As appears from the list of wares and services covered by the registrations for the ROXY trade-marks, there exists quite a difference between them and the Wares and Services. Also two of the registered ROXY trade-marks have a design feature which further distinguishes those marks from the Mark.
[26] I conclude that, on a balance of probabilities, there is no likelihood of confusion between the Mark and any of the ROXY trade-marks listed above.
[27] The MOXIE trade-mark registrations are:
MOXIE, TMDA12,131 for carbonated beverages and syrup;
MOXIE’S, TMA325,118 for restaurant services;
MOXIE, TMA671,993 for artificial nail preparations.
[28] As with the ROXY trade-marks, there exists a difference between the Wares and Services and the wares and services covered by the MOXIE trade-mark registrations. There is no evidence of use of any of the MOXIE trade-marks and therefore we do not know the extent to which these marks are known in Canada, if at all.
[29] I conclude that, on a balance of probabilities, there is no likelihood of confusion between the Mark and any of the MOXIE trade-marks listed above.
[30] The FOXY trade-mark registrations are:
FOXY, TMA711,066 for wearing apparel;
FOXY, TMA609,208 for fashion accessories.
[31] FOXY is an English word defined in the Canadian Oxford Dictionary as “of or like a fox”. However, when used in association with the wares covered by those registrations, it is distinctive as there is no correlation between the wares and the meaning of the word “fox”.
[32] In his affidavit Mr. Hild states that the Applicant is also the owner of the following applications and registrations for other ROXY trade-marks:
• ROXY (TMA703,880);
• ROXY (TMA716,527);
• ROXY (application No. 1,377,916);
• ROXY (application No. 1,231,464);
• ROXY (application No. 1,436,901);
• ROXY (application No. 1,417,904);
• ROXY TEENIE WAHINE (TMA737,510).
[33] The following comments made by my colleague Andrea Flewelling in Equinox Entertainment Limited, supra are equally applicable in this case:
At the oral hearing the Applicant submitted that the fact that the Applicant’s other ROXY marks co-exist on the register with the Cited Marks serves to limit the ambit of protection available to each of the Cited Marks. The Applicant submits, and I agree, that this is particularly relevant in light of the fact that many of the Applicant’s other ROXY trade-marks are for “lifestyle wares” that are similar to the Wares. The Applicant submits, and I agree, that the existence of the Applicant’s other ROXY trade-marks serves to decrease the likelihood of confusion between the Mark and any one of the Cited Marks.
[34] There is some visual resemblance between the Mark and the FOXY trade-marks. However, the Mark is more known than the FOXY trade-marks and there is a difference in the meaning of the trade-marks involved. Those facts are sufficient in this case to enable me to conclude that, on a balance of probabilities, there is no likelihood of confusion between the Mark and any of the FOXY trade-marks listed above.
[35] The ground of opposition based on section 12(1)(d) of the Act is therefore dismissed.
Entitlement based on Sections 16(1)(b), (2)(b) and (3)(b) of the Act
[36] The Opponent is the owner of application No. 1,194,451 for the trade-mark ROXY POKER filed on October 22, 2003 in association with “providing online casinos, and casino gaming entertainment services”.
[37] The Opponent has not filed a copy of the said application. However the Registrar has discretion the check the register to determine if in fact the Opponent is the owner of the cited application in support of the ground of opposition of entitlement and if it was still pending at the advertisement date of the present application [see Groupe Desjardins assurances générales v Investors Syndicate Ltd (1993), 49 CPR (3d) 412(TMOB)]. Considering the fact that the Opponent has not filed any written argument nor was present at the hearing I was reluctant to exercise such discretion. However I did, and as it will appear from my decision it does not have any bearing on the outcome of this opposition. I confirm that the Opponent was the owner of such application and it was still pending at the advertisement date of this application [section 16(4) of the Act]. It covers on line casinos, and casino gaming entertainment services.
[38] At the oral hearing, the Applicant submitted that it had opposed application 1,194,451 on the basis that it was confusing with its ROXY trade-marks. In a decision rendered by my colleague Myer Herzig in Quiksilver International Pty Ltd et al v Equinox Entertainment Limited 2010 TMOB 59 he concluded that those marks were not confusing in view of the very different nature of the parties’ wares and services. Consequently the Opponent would be hard put to argue in this case that the Mark is confusing with its ROXY POKER trade-mark.
[39] I concur with Mr. Herzig finding that the marks in issue are not confusing because of the difference in the nature of the wares and services. Consequently I also dismiss this ground of opposition.
Disposition
[40] Pursuant to the authority delegated to me under section 63(3) of the Act, I reject the opposition pursuant to section 38(8) of the Act.
______________________________
Jean Carrière
Member
Trade-marks Opposition Board
Canadian Intellectual Property Office