IN THE MATTER OF AN OPPOSITION
by Glentel Inc. to application no. 1253240
for the trade-mark MOBILE THEATER & Design
filed by Samsung Electronics Co. Ltd.
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[1] On April 7, 2005, Samsung Electronics Co. Ltd. filed an application to register the trade-mark MOBILE THEATER & Design, shown below:
The application is based on proposed use in Canada in association with the following wares:
mobile phones; rechargeable batteries; battery chargers;
handsfree earphones; USB cables.
Colour is claimed as a feature of the mark. The word MOBILE and the design feature are grey while the word THEATER is orange. The applicant disclaims the exclusive use of the word MOBILE apart from the mark as a whole.
[2] The Examination Branch of the Office raised an objection that the applied for mark was confusing with the mark MOBILE THEATRE, registration no. 545403, for the services of installing entertainment equipment. However, the objection was withdrawn on the basis of the applicant’s submissions that the wares and services covered by the marks are different and would be sold through different channels of distribution.
[3] The subject mark was advertised for opposition purposes in the Trade-marks Journal issue dated February 22, 2006, and was opposed by Glentel Inc., the owner of the above cited registration no. 545403, on July 20, 2006. The Registrar forwarded a copy of the statement of opposition to the applicant on August 31, 2006, as required by Section 38(5) of the Trade-marks Act. The applicant responded by filing and serving a counter statement. The only evidence filed in this proceeding, by the opponent, was a certified copy of registration no. 545403. However, both parties filed written arguments. Neither party requested an oral hearing.
Statement of Opposition
[4] The statement of opposition alleges three grounds of opposition. First, that the applied for mark MOBILE THEATER & Design is confusing with the opponent’s mark MOBILE THEATRE, pursuant to Section 12(1)(d) of the Trade-marks Act. In this regard, the opponent’s mark covers the services shown below:
installation of entertainment equipment, namely, CD/TV
receivers, TV monitors, CD/MD changer controllers, wireless
remote controls, DVD players, built‑in monitor screens,
stereo hi‑fi, VCRs, LCD screens, LCD monitors, headphone jacks,
audio‑visual inputs for video entertainment games, stereo speakers,
amplifiers and equalizers, in vehicles and homes.
The opponent’s registration indicates that the opponent’s mark was first used in March 1999.
[5] The two remaining grounds of opposition allege that the applicant is not entitled to register the applied for mark (pursuant to Section 16(3) of the Act) and that the applied for mark is not adapted to distinguish the applicant’s wares (pursuant to Sections 2 and 38(2)(d)). To substantiate the ground of opposition alleging non-entitlement, the opponent is required to show that its mark was not abandoned as of February 22, 2006, that is, as of the date of advertisement of the opposed mark. As the opponent has not submitted any evidence to show any continuing use of its mark since March 1999, the second ground is rejected. To substantiate the third ground alleging non-distinctiveness, the opponent is required to show that its mark had acquired some reputation in Canada as of July 20, 2006, that is, as of the date of opposition. Again, as the opponent has not submitted any evidence to show that its mark was used or promoted, the opponent has failed to show that its mark had required any reputation in Canada as of the material date July 20, 2006. The third ground of opposition is therefore also rejected.
main Issue
[6] The sole issue for decision is whether the applied for mark MOBILE THEATER & Design, for use in association with mobile telephones (and related wares) is confusing with the opponent’s mark MOBILE THEATRE registered for use in association with the services of installing television monitors (and the like) and related equipment. The material date to assess the issue of confusion is the date of my decision with respect to the ground of opposition pursuant to Section 12(1)(d) of the Trade‑marks Act alleging non-registrability: for a review of case law concerning material dates in opposition proceedings see American Retired Persons v. Canadian Retired Persons (1998), 84 C.P.R.(3d) 198 at 206 ‑ 209 (F.C.T.D.).
[7] The legal onus is on the applicant to show that there would be no reasonable likelihood of confusion, within the meaning of Section 6(2) of the Trade‑marks Act, between the applied for mark MOBILE THEATER & Design and the opponent's mark MOBILE THEATRE. The presence of an onus on the applicant means that if a determinate conclusion cannot be reached once all the evidence is in, then the issue must be decided against the applicant: see John Labatt Ltd. v. Molson Companies Ltd. (1990), 30 C.P.R.(3d) 293 at 297-298 (F.C.T.D.). The test for confusion is one of first impression and imperfect recollection.
Section 6(5) Factors
[8] Factors to be considered, in making an assessment as to whether two marks are confusing, are set out in Section 6(5) of the Trade‑marks Act: the inherent distinctiveness of the marks and the extent to which they have become known; the length of time each has been in use; the nature of the wares, services or business; the nature of the trade; the degree of resemblance in appearance or the sound of the marks or in the ideas suggested by them. This list is not exhaustive; all relevant factors are to be considered. All factors do not necessarily have equal weight. The weight to be given to each depends on the circumstances: see Gainers Inc. v. Tammy L. Marchildon and The Registrar of Trade-marks (1996), 66 C.P.R.(3d) 308 (F.C.T.D.).
Consideration of Section 6(5) Factors
inherent and acquired distinctiveness
[9] The opponent’s mark MOBILE THEATRE is a relatively weak mark since the term MOBILE suggests “portable” or “moveable” and THEATRE is suggestive of entertainment. Thus, the opponent’s mark is somewhat suggestive of the opponent’s services of installing entertainment equipment at locations specified by the customer. Similarly, the applied for mark MOBILE THEATER & Design is a relatively weak mark since the mark in its entirety suggests that the applicant’s telephones can function as a viewing screen to provide various types of entertainments such as movies. Further, neither party has established any reputation for its mark at any material date. That the parties’ marks are weak marks favours the applicant, in view of the principle enunciated by the Court in General Motors Corp. v. Bellows (1949), 10 C.P.R. 101 at 115-6 (S.C.C.):
. . . where a party has reached inside the common trade vocabulary for a word mark and seeks to prevent competitors from doing the same thing, the range of protection to be given him should be more limited than in the case of an invented or unique or non-descriptive word . . .
. . . It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolize the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.
(emphasis added)
In other words, small differences may be sufficient to distinguish between marks of low distinctiveness.
length of time in use
[10] There is no evidence that the applied for proposed use mark has been actually used since the date that the application was filed. Similarly, there is no evidence that the opponent’s mark was used since it was last used in March 1999. In these circumstances, the length of time that the marks in issue have been in use favours neither party.
nature of the wares, services and trades
[11] With respect to the nature of the parties’ wares, services and trades, the opponent submits that the applicant’s wares are made available at retail stores specializing in the sale of entertainment equipment since “modern day mobile phones now very often incorporate entertainment equipment, including entertainment equipment of the type installed by the opponent . . .” The opponent further submits that the opponent’s “services obviously could be offered to the public through entertainment equipment retail stores.” The opponent therefore concludes that there is an overlap in the parties’ wares, services and trades. The applicant, on the other hand, submits that its wares are not related to the opponent’s installation services; that the applicant’s wares will be available through specialty telephone and electronics outlets; and that the opponent’s services “are most likely offered independently from the purchase of the entertainment equipment itself . . .” The applicant concludes that in such circumstances, “there is little or no likelihood that purchasers will mistakenly believe that mobile phones marked with the applicant’s trade-mark originate with the provider of the opponent’s installation services.” As the evidential burden is on the opponent to prove all the aspects of its case, and as the opponent has not filed any evidence to substantiate its submissions, I am unable to accept the opponent’s argument that there is significant overlap in the parties’ wares, services and trades. These factors therefore favour the applicant.
degree of resemblance
[12] I consider that there is a high degree of resemblance between the parties’ marks visually notwithstanding the different spellings of the second components THEATER and THEATRE and notwithstanding the design feature which comprises part of the applicant’s mark. I also consider that there is an identical resemblance between the parties’ marks aurally and in the ideas that they suggest namely, the idea of “entertainment anywhere.” The resemblance between the marks in issue strongly favours the opponent particularly in view of the principle set out by the Court in Beverley Bedding & Upholstery v. Regal Bedding & Upholstering, 47 C.P.R. (2d) 145 at 149 (F.C.T.D.), aff’d 60 C.P.R. (2d) 70:
It is axiomatic that all these [Section 6(5)] factors are not of necessity to be accorded equal weight and in some instances one or more of the factors mentioned might not even be present. Realistically appraised it is the degree of resemblance between trade marks in appearance, sound or in ideas suggested by them that is the most crucial factor, in most instances, and is the dominant factor and other factors play a subservient role in the over-all surrounding circumstances.
(emphasis added)
Disposition
[13] Having regard to the above, and keeping in mind in particular (i) the high degree of resemblance between the marks in issue, (ii) that the parties’ wares, services and channels of trade do not overlap to a significant extent, and (iii) that even small differences may suffice to distinguish between weak marks, I find that the probability of a reasonable likelihood of confusion between the marks in issue is evenly balanced with the probability of no reasonable likelihood of confusion. Accordingly, the issue must be decided against the applicant as the legal onus is on the applicant to establish that, on a balance of probabilities, there is no reasonable likelihood of confusion.
[14] In view of the foregoing, the subject application is refused. This decision has been made pursuant to a delegation of authority under Section 63(3) of the Trade-marks Act.
DATED AT VILLE DE GATINEAU, QUEBEC, THIS 18th DAY OF JUNE, 2009.
Myer Herzig,
Member,
Trade-marks Opposition Board