IN THE MATTER OF AN OPPOSITION
by Simmons I.P. Inc. and Simmons
Canada Inc. to application No.
619,712 for the trade-mark COIL
ON COIL SLEEP PRODUCTS filed by
Park Avenue Furniture Corporation
On November 22, 1988, the applicant, Park Avenue Furniture Corporation, filed an application to register the trade-mark COIL ON COIL SLEEP PRODUCTS for "mattresses and bed springs" based on proposed use in Canada. The applicant amended its application to include a disclaimer to the words COIL and PRODUCTS. The application was subsequently advertised for opposition purposes on May 8, 1991.
The opponents, Simmons I.P. Inc. and Simmons Canada Inc., filed a statement of opposition on May 8, 1991, a copy of which was forwarded to the applicant on June 6, 1991. The grounds of opposition include, among others, that the applied for trade-mark is not registrable pursuant to Section 12(1)(b) of the Trade-marks Act because it is clearly descriptive of the character and quality of the wares in association with which it is proposed to be used.
As their evidence, the opponents filed the affidavit of R. Edward Jackson, the Vice-President of Marketing of Simmons Canada Inc. The applicant did not file evidence. Only the opponents filed a written argument and an oral hearing was conducted at which both parties were represented.
The material time for considering the circumstances respecting the issue arising pursuant to Section 12(1)(b) of the Act is the date of my decision: see the decision in Lubrication Engineers, Inc. v. The Canadian Council of Professional Engineers (1992), 41 C.P.R.(3d) 243 (F.C.A.). The issue is to be determined from the point of view of an everyday user of the wares. Furthermore, the trade-mark in question must not be carefully analyzed and dissected into its component parts but rather must be considered in its entirety and as a matter of first impression: see Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R.(2d) 25 at 27-28 and Atlantic Promotions Inc. v. Registrar of Trade Marks (1984), 2 C.P.R.(3d) 183 at 186.
In his affidavit, Mr. Jackson states that he has been employed in the bedding industry by Simmons Canada Inc. or its predecessors since 1961. Based on his experience, Mr. Jackson states as follows in paragraph five of his affidavit:
5. As an individual familiar with the bedding
industry, it is clear to me that the words "coil
on coil" describe mattresses or bed springs
constructed so as to have the coil on one match
exactly with the coil on the other. Furthermore,
the words "coil on coil sleep systems" clearly
indicate to me a matching mattress and bed spring
having the coils matching exactly one to another.
Similarly, the words "coil on coil sleep products"
clearly indicate mattresses and bed springs having
this particular construction. Given the common
adoption in the industry for many years of the
descriptive terms "coil on coil", "sleep systems",
and "sleep products", I do not believe that any
company could use these terms, either alone, or
combined one with another, to distinguish its
goods from those of others in the bedding industry.
In support of that statement, Mr. Jackson provided photocopies of advertising materials, product labels and a magazine article which show the use of the terms "coil on coil", "sleep systems" and "sleep products" by other traders in the bedding industry. In the exhibits to his affidavit, Mr. Jackson included copies of letters from individuals with other companies in the industry attesting to use of the words "coil on coil." Those statements are hearsay and therefore can be given little weight. However, the advertising materials and labels used by other companies in the industry can be considered and they show that other companies do use the words "coil on coil" to describe a particular type of construction of mattresses and box springs in the bedding industry (see Exhibits A and D to the Jackson affidavit). Those materials and labels also show use by third parties of the expressions "sleep products" (see Exhibits A and D to the Jackson affidavit) and "sleep systems" (see Exhibits C and D to the Jackson affidavit). Exhibit B is an article from a trade journal describing the applicant's sleep sets which are described as having a "coil-on-coil design" which indicates that this is the type of construction the applicant intends to use for mattresses and box springs to be sold with its proposed trade-mark.
It should also be noted that the applicant has disclaimed the words COIL and PRODUCTS apart from its trade-mark. It is also noteworthy that the ordinary meaning of the phrase COIL ON COIL SLEEP PRODUCTS used in association with mattresses and box springs would suggest some type of alignment of coils between the bedding components. Given those facts and given the evidence of third party use of the phrases "coil on coil" and "sleep products" and Mr. Jackson's observation that those phrases have known meanings in the bedding industry, I find that the opponents have more than met their evidential burden to show that the applicant's trade-mark is clearly descriptive of the character and quality of the applied for wares. Since the applicant has failed to file evidence, I must find that it has failed to meet the legal onus on it to show that its proposed mark is registrable. The ground of opposition based on Section 12(1)(b) of the Act is therefore successful and the remaining grounds need not be considered.
At the oral hearing, the applicant's agent submitted that the applied for trade-mark is registrable in view of the fact that the applicant recently obtained a registration for the trade-mark COIL ON COIL EXPERTS. However, the applicant did not evidence its registration and I will not exercise my discretion to check the register since it would be unfair and prejudicial to the opponent who would have no opportunity to test such evidence or to reply to it: see the opposition decision in Coca-Cola Co. v. Cliffstar Corp. (1993), 49 C.P.R.(3d) 358 at 360. Even if appropriate evidence had been filed, I fail to see how it would have lead to the conclusion urged by the applicant. Section 19 of the Act does not give the owner of a registered trade-mark the automatic right to obtain any further registrations for similar marks: see the opposition decision in Groupe Lavo Inc. v. Procter & Gamble Inc. (1990), 32 C.P.R.(3d) 533 at 538.
It appears that the applicant was also attempting to rely on the doctrine of `res judicata.' However, that doctrine does not apply to opposition proceedings: see the opposition decision in Sunny Crunch Foods Ltd. v. Robin Hood Multifoods Inc. (1982), 70 C.P.R.(2d) 244. Even if it did, it would not have had application in the present case where the applicant's registered mark is different from its applied for mark and the material time for considering the circumstances respecting the issue arising pursuant to Section 12(1)(b) of the Act is also different. Even if it could be concluded that the trade-mark COIL ON COIL EXPERTS was not clearly descriptive of mattresses and bed springs (which, on its face, seems like a reasonable conclusion), it does not necessarily follow that the applied for trade-mark is also not clearly descriptive.
The applicant's agent also submitted that the applicant's recent registration for the trade-mark COIL ON COIL EXPERTS was relevant in view of the decision in Reed Stenhouse Company Limited v. The Registrar of Trade-marks (1992), 45 C.P.R.(3d) 79 (F.C.T.D.). In the Reed Stenhouse decision, Jerome, A.C.J. pointed out that it was incumbent on the Registrar in refusing an application at the examination stage to reconcile his refusal "to some extent" in view of the existence on the trade-marks register of somewhat similar marks. However, I do not consider that the Associate Chief Justice's comments apply to opposition proceedings: see the opposition decisions in Thomas J. Lipton Inc. v. Boyd Coffee Co. (1991), 40 C.P.R.(3d) 272 at 277 and Procter & Gamble Inc. v. Morlee Corp. (1993), 48 C.P.R.(3d) 377 at 386. The Opposition Board is not in a position to explain why a particular mark was permitted to proceed to registration by the examination section of the Trade-marks Office. Such a decision may have resulted because the Examiner did not have the benefit of the type of evidence filed in an opposition proceeding or because the onus or legal burden is different at the examination stage. In any event, as noted above, any conclusion that might be made about the earlier registrability of the trade-mark COIL ON COIL EXPERTS does not preclude a finding that the applied for trade-mark offends the provisions of Section 12(1)(b) of the Act as of today's date.
In view of the above, I refuse the applicant's application.
DATED AT HULL, QUEBEC, THIS 31st DAY OF May , 1994.
David J. Martin,
Member,
Trade Marks Opposition Board.